Liberty Procurement Co. Inc. v. UDRP COMPLIANCE / UDRP PENDING RENEWAL
Claim Number: FA1610001697054
Complainant is Liberty Procurement Co. Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is UDRP COMPLIANCE / UDRP PENDING RENEWAL (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbathandbeyondcouponinstore.com> (‘the Domain Name’) registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2016; the Forum received payment on October 6, 2016.
On November 2, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <bedbathandbeyondcouponinstore.com> Domain Name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bedbathandbeyondcouponinstore.com. Also on November 3, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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's contentions can be summarized as follows:
Complainant is the owner of registered trade marks for BED BATH & BEYOND for retail services in the USA. It was formed in 1971 and operates a chain of retail stores across the USA, Puerto Rico and Canada.
The Domain Name is nearly identical and confusingly similar to Complainant’s BED BATH & BEYOND mark. The Domain Name contains that mark in its entirety with a generic term ‘COUPON IN STORE’ which does nothing to clear up confusion, but rather suggests that the web site attached to the Domain Name will lead to information disseminated by Complainant. The comparison to be made is only between the second level portion of the Domain Name and Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Name. It has not been commonly known by the Domain Name. It does not appear to have any trade mark rights in the Domain Name. Respondent is not sponsored by or legitimately affiliated with Complainant in any way. It has no permission to use Complainant’s mark in a Domain Name. Offering unauthorised coupons is neither a bona fide offering of goods, nor a legitimate, non-commercial or fair use of the Domain Name.
The Domain Name was registered no earlier than 2014, some time after first use in commerce of the BED BATH & BEYOND mark by Complainant in 1986.
The Domain Name was registered and is being used in bad faith as it is being used for pay per click links to products competing with those of Complainant and providing coupons and links to products offered by Complainant to achieve a wrongful competitive advantage and commercial gain and to attract and mislead customers for its own profit. The use of the Domain Name shows Respondent had actual knowledge of Complainant and its business.
No reply was received from Respondent to a cease and desist letter from Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of registered trade marks for BED BATH & BEYOND for retail services in the USA with first use in commerce recorded as 1986.
The Domain Name is being used for pay per click links to products competing with those of Complainant and providing coupons and links to products offered by Complainant.
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(f), 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 (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.”).
Identical or Confusingly Similar
The Domain Name consists of a sign similar to Complainant's BED BATH & BEYOND mark (albeit that the ampersand has been replaced by the word ‘and’) (which is registered in USA for retail services with first use in commerce recorded as 1986), the generic term ‘coupon in store’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by Complainant). Switching an ampersand to ‘and’ has been considered identical under the policy as ampersands are not reproducible in URLs. See Wright & Lato, Inc. v Epstein, D2000-0621 (WIPO Sept 2, 2000)(Finding wrightandlato.com identical to the trade mark WRIGHT & LATO).The Panel agrees that the addition of the generic term ‘coupon in store’ does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. See Inter Ikea Systems BV v Daniel Woodson, D2011-1933 (WIPO Jan 18, 2012)(‘That is because Internet users are likely to surmise that the Domain Name indicates a site belonging to or authorised by Complainant where Complainant’s coupons can be obtained or exchanged.)
The gTLD .com does not serve to distinguish the Domain Name from the BED BATH & BEYOND mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant has not authorised the use of its mark or any sign similar to it. Respondent uses the sign BED BATH AND BEYOND COUPON as a flagship heading at the top of its web site and there is no explanation that the site is not connected to Complainant. Respondent does not make it clear that there is no commercial connection with Complainant and Respondent’s site appears to be an official site of Complainant., This use is confusing and deceptive. As such it cannot amount to the bona fide offering of goods and services. Panels have also held offering unauthorised coupons does not form a legitimate right or interest in such circumstances (See Sears Brands, LLC v Randy Butnaru, FA 1428032 (FORUM Mar 20, 2012) (finding neither a bona fide offering, nor a legitimate non-commercial or fair use of a domain name which was confusingly similar to a complainant’s trade mark where a respondent employed the domain name to make unauthorised offers and coupons relating to the complainant’s goods.)The Panel notes the presence of pay per click links on the web site which again do not amount to a legitimate right or interest when taking advantage of a Complainant’s trade mark.
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel the use made of the Domain Name in relation to the site is confusing and deceptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it offers services directly and via pay per click links under a Domain Name containing a sign confusingly similar to Complainant’s trade mark. The use of Respondent's web site shows that Respondent is aware of Complainant and its business. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site which is likely to compete with and disrupt the business of Complainant. (See IS. Online, Inc. v Miles, FA 105890 (Forum May 31, 2002) where 4 (b) (iv) of the Policy was found to be contravened by a site prominently displaying Complainant’s name).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bedbathandbeyondcouponinstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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