Macy's Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. v. Above.com Domain Privacy
Claim Number: FA1508001635892
Complainant is Macy's Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. ("Complainant"), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy ("Respondent"), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <1bloomingdales.com>, <blooimingdales.com>, <blookmingdales.com>, <bloombingdales.com>, <bloomibgdales.com>, <bloomingdalesa.com>, <bloominggales.com>, <bloomiongdales.com>, <bloomkingdales.com>, <fmacys.com>, <hmacys.com>, <lmacys.com>, <macyse.com>, <macysy.com>, and <meacys.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2015; the Forum received payment on August 29, 2015.
On September 8, 2015, Above.com Pty Ltd. confirmed by email to the Forum that the <1bloomingdales.com>, <blooimingdales.com>, <blookmingdales.com>, <bloombingdales.com>, <bloomibgdales.com>, ,<bloomingdalesa.com>, <bloominggales.com>, <bloomiongdales.com>, <bloomkingdales.com>, <fmacys.com>, <hmacys.com>, <lmacys.com>, <macyse.com>, <macysy.com>, and <meacys.com> domain names are registered with Above.com Pty Ltd, and identified the current registrants of the domain names as Host Master / Transure Enterprise Ltd, Tortola, Virgin Islands (for <blookmingdales.com>, <macysy.com>, and <meacys.com>) and Shu Lin, Zhongshan District, Dalian, China (for <1bloomingdales.com>, <blooimingdales.com>, <bloombingdales.com>, <bloomibgdales.com>, <bloomingdalesa.com>, <bloominggales.com>, <bloomiongdales.com>, <bloomkingdales.com>, <fmacys.com>, <hmacys.com>, <lmacys.com>, and <macyse.com>). Above.com Pty Ltd. has verified that the registrants are bound by the Above.com Pty Ltd. registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration (including both the public whois data and that provided in the registrar's verification email) as technical, administrative, and billing contacts, and to postmaster@1bloomingdales.com, postmaster@blooimingdales.com, postmaster@blookmingdales.com, postmaster@bloombingdales.com, postmaster@bloomibgdales.com, postmaster@bloomingdalesa.com, postmaster@bloominggales.com, postmaster@bloomiongdales.com, postmaster@bloomkingdales.com, postmaster@fmacys.com, postmaster@hmacys.com, postmaster@lmacys.com, postmaster@macyse.com, postmaster@macysy.com, and postmaster@meacys.com. Also on September 9, 2015, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates more than 800 Macy's and Bloomingdale's department stores and furniture galleries across the United States, with over 100,000 employees. Complainant owns longstanding U.S. trademark registrations for BLOOMINGDALE'S, MACY'S, and related marks.
Complainant contends that each of the disputed domain names is confusingly similar to one or more of its marks; that Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. In support thereof, Complainant states that all of the disputed domain names are merely typographical variations of Complainant's marks, and characterizes them as instances of "typosquatting," designed to take advantage of Internet users' typographical errors.
Complainant alleges that Respondent has not been commonly known by the disputed domain names, is not sponsored or affiliated with Complainant, and has not been given permission to use Complainant's marks. Complainant states that some or all of the domain names are being used to redirect Internet users to a website featuring links to third-party websites, some of which compete directly with Complainant. Complainant notes that some of these websites display the correct spelling of its mark(s), further indicating Respondent's intent to capitalize on the marks. Finally, Complainant points to the falsified or incomplete whois data as further evidence of bad faith intent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and have been used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." The whois records for the disputed domain names in this proceeding all list Respondent as the registrant. Two other entities were identified as registrants in the registrar's verification email, but the registrar did not lift its privacy service to change the registrant in the public records.
The Panel notes that the other entities have received notification of this proceeding (despite not being named as parties), and that they appear to be aliases for a single person or entity. See F. Hoffmann-La Roche AG v. Above.com Domain Privacy / Shu Lin, Shu Lin Enterprises Ltd. / Host Master, Transure Enterprise Ltd, D2010-1986 (WIPO Jan. 19, 2011) (finding Shu Lin and Transure Enterprises to be the same entity); LEGO Juris A/S v. Shu Lin/Transure Enterprise Ltd/Above.com Domain Privacy, D2010-1648 (WIPO Nov. 19, 2010) (same); AutoZone Parts, Inc. v. Shu Lin c/o Shu Lin Co aka Host Master c/o Transure Enterprise Ltd, FA 1330042 (Nat. Arb. Forum Aug. 3, 2010) (same).
The Panel therefore finds paragraph 3(c) to be satisfied in this case.
Each of the disputed domain names is identical to one of Complainant's registered marks, but for the introduction of minor typographical errors and the addition of the ".com" top-level domain. These alterations do not diminish the similarity between the domain names and Complainant's marks. See, e.g., Macy's Inc. v. PPA Media Services / Ryan G Foo, FA 1552885 (Nat. Arb. Forum May 23, 2014) (finding <bllomingdales.com>, <bloomingales.com>, <bloomingdaales.com>, <bloomingdailes.com>, <boomingdales.com>, and <machys.com> confusingly similar to BLOOMINGDALE'S and MACY'S). The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain names incorporate typographical variations of Complainant's marks, and apparently their sole use has been in connection with websites containing advertising links, including links to competitors of Complainant. See, e.g., Macy's Inc., supra (finding lack of rights or legitimate interests in similar circumstances). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Respondent and the entities identified as registrants in the registrar's verification email have been involved in numerous prior proceedings under the Policy, including F. Hoffmann-La Roche AG, supra (finding bad faith registration of <tamyflu.com>, <xeenical.com>, and 33 other domain names); LEGO Juris A/S, supra (finding bad faith registration of <lego-star-wars-store.com> and 7 other domain names); AutoZone Parts, Inc., supra (finding bad faith registration of <autotzone.com> and 3 other domain names). For the reasons similar to those expressed by the panels in those and other cases, the Panel finds that the disputed domain names in the present case were registered and have been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1bloomingdales.com>, <blooimingdales.com>, <blookmingdales.com>, <bloombingdales.com>, <bloomibgdales.com>, ,<bloomingdalesa.com>, <bloominggales.com>, <bloomiongdales.com>, <bloomkingdales.com>, <fmacys.com>, <hmacys.com>, <lmacys.com>, <macyse.com>, <macysy.com>, and <meacys.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 7, 2015
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