BED BATH & BEYOND PROCUREMENT CO. INC. (N/K/A LIBERTY PROCUREMENT CO. INC.) v. Net Manager / Xwings Domains
Claim Number: FA1807001796211
Complainant is BED BATH & BEYOND PROCUREMENT CO. INC. (N/K/A LIBERTY PROCUREMENT CO. INC.) (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Net Manager / Xwings Domains (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bedbathbeyondcoupons.com>, registered with Rebel Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2018; the Forum received payment on July 11, 2018.
On July 19, 2018, Rebel Ltd confirmed by e-mail to the Forum that the <bedbathbeyondcoupons.com> domain name is registered with Rebel Ltd and that Respondent is the current registrant of the name. Rebel Ltd has verified that Respondent is bound by the Rebel Ltd 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 July 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2018 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@bedbathbeyondcoupons.com. Also on July 25, 2018, 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 August 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s BED BATH & BEYOND Marks:
[i.] BED BATH & BEYOND for online, retail store services in the field of linen products, housewares and home furnishings. (U.S. Reg. No. 1,830,725);
[ii.] BED BATH & BEYOND for online, retail store services in the field of linen products, housewares and home furnishings (U.S. Reg. No. 1,831,709);
[iii.] BED BATH & BEYOND for online, retail store, mail order and computer on-line retail services featuring linen products, home furnishings, toys, books, furniture, housewares, house plants, kitchen appliances, office supplies, knapsacks, luggage, lamps, soaps, lotions, toothbrushes, kitchen accessories, bathroom accessories, novelty items, picture frames, candles, aromatherapy products, potpourri, desktop electronics, umbrellas, and apparel. (U.S. Reg. No. 2,510,262); and
[iv.] BED BATH & BEYOND for online, retail store services and computerized on-line retail store services featuring a wide variety of consumer goods of others (U.S. Reg. No. 3,854,909).
Complainant and its subsidiary is the owner of numerous federal trademark and/or service mark registrations in the United States that consist of or include the words BED BATH & BEYOND. These registrations are collectively referred to hereafter as the “Complainant’s Marks.”
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.), is a wholly owned subsidiary of Bed Bath & Beyond Inc., which, was formed in 1971 and today operates a chain of domestic merchandise retail stores across United States, Puerto Rico and Canada. They feature mostly medium-ranged, but also a limited selection of high quality, domestic merchandise:
items for the bedroom, bathroom, kitchen, and dining room.
The company is included in the S&P 500 and Global 1200 Indices and the NASDAQ-100 Index.
Since 1992, Bed Bath & Beyond Inc. is traded on the NASDAQ National Market under the symbol "BBBY". The Company is counted among the Fortune 500 and the Forbes 2000. At fiscal year-end (2010), Bed Bath & Beyond operated 982 stores in all 50 states, the District Columbia, Puerto Rico and Canada. The Company's stores principally range in size from 20,000 to 50,000 square feet, with some stores exceeding 80,000 square feet. As of June 30, 2011, Bed Bath & Beyond employs approximately 46,000 associates, mainly in stores, with the balance working in offices and distribution centers. The Company operated 1,000 BBB stores, 73 CTS stores, 47 Harmon stores and 71 buybuy BABY stores at the end of the fiscal second quarter of 2012.
Bed Bath & Beyond Inc. and its subsidiaries (the “Company”) is a chain of retail stores, operating under the names Bed Bath & Beyond (“BBB”), Christmas Tree Shops (“CTS”), Harmon and Harmon Face Values (“Harmon”) and buy buy BABY. In March 2007, the Company acquired buy buy BABY, a retailer of infant and toddler merchandise, which operated 8 stores at the time located in Maryland, New Jersey, New York and Virginia.
Bed Bath & Beyond Inc. is committed to being a good neighbor by giving back to the communities it serves; local managers are empowered to support local events and do so on a frequent basis. In addition, the Company has a number of relationships through which they may serve their customers and others in the areas in which they do business. Good360, a non-profit organization based in Alexandria, Virginia, which utilizes merchandise that is donated weekly from stores to hundreds of local charities across the United States, as well as Canada and Puerto Rico, recognized Bed Bath & Beyond as a “Light of Hope” Award winner. This award recognizes corporations for outstanding corporate citizenship and effective product philanthropy. To date, the Complainant estimates to have provided over $622 million in product donations to our local communities.
Bed Bath & Beyond Inc. and its subsidiaries have spent thousands of dollars in advertisement and promotion of the BED BATH & BEYOND mark on the Internet through its website located at BEDBATHANDBEYOND.COM. Based on its federal trademark registrations and extensive use, Bed Bath & Beyond and its subsidiaries own the exclusive right to use the BED BATH & BEYOND Marks in connection with online, retail store services in the field of linen products, housewares, home furnishings, baby furniture, clothes, accessories, supplies and a wide variety of consumer goods of others.
In short, Bed Bath & Beyond Inc., and its subsidiaries (including Liberty Procurement Co. Inc.) enjoys wide consumer recognition and acceptance of its brands.
Furthermore, Bed Bath & Beyond Inc. through its subsidiary Liberty Procurement Co Inc., owns the Marks cited above for which it has obtained a federal trademark registrations. The federal mark registration has not been abandoned, cancelled or revoked. Bed Bath & Beyond, has spent thousands of dollars in advertisement and promotion of the Marks on television, print media and the Internet.
Furthermore, Bed Bath & Beyond Inc. owns the Marks cited above for which it has obtained a federal trademark registrations. The federal mark registration has not been abandoned, cancelled or revoked. Bed Bath & Beyond, has spent thousands of dollars in advertisement and promotion of the Marks on television, print media and the Internet.
[a.] The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.
By virtue of its federal trademark and/or service mark registration(s), Complainant is the owner of the Complainant's Mark(s). See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)"). As in other cases, it is also important to note that it is irrelevant for the purposes of Policy ¶4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
When comparing the Disputed Domain Name(s) to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name(s) and the Complainant's Mark(s). See Rollerblade, Inc. v. McCrady, WIPO Case No.D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.")
Respondent may contend that the Disputed Domain Name(s) is/ are comprised of common, descriptive or generic terms and as such cannot be identical to Complainant’s mark. However, such a determination is not necessary under Policy ¶4(a)(i). This portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”). See past UDRP decisions where the panel has decided in favor of the Complainant’s mark, The Knot, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, NAF: FA1010001350443.
Complainant asserts that the <bedbathbeyondcoupons.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark because it incorporates the mark in its entirety and then deletes spaces between the terms, removes the ampersand (which cannot be included in a domain name) adds the term “COUPONS” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the deletion of an ampersand in a mark is irrelevant because the symbol cannot be used in a domain name. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). UDRP precedent has also concluded that combining a mark with a generic term is insufficient to prevent a finding of confusing similarity. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel therefore should find that Respondent’s <bedbathbeyondcoupons.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark according to Policy ¶4(a)(i).
[b.] Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:
Respondent has not been commonly known by the Disputed Domain Name(s). Upon information and belief, at the time Respondent registered the Domain Name(s), it had no trademark or intellectual property rights in the Domain Name(s). See Policy, ¶4(c)(ii). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202. See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy
,-r 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); See also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).
Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant's Mark in a domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark).
A "Cease and Desist" letter was sent to the Respondent. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. Rave Club Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
Respondent is not using the Disputed Domain Name(s) for a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii), because the Disputed Domain Name(s) redirects Internet users to Complainant's own website in violation of Complainant's affiliate program, a violation of the affiliate agreement between Complainant and Respondent. It has previously been held that this use of a disputed domain name is not protected under Policy 4(c)(i) or 4(c)(iii). See, e.g., Sports Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat. Arb. Forum Jan. 9, 2003) (finding that registering a domain name which differs by one letter from the complainant's commercial website, and using that domain name to redirect Internet consumers to the complainant's website as a part of the complainant's affiliates program is not a bona fide offering of goods or services nor a noncommercial use of the domain name); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy 4(a)(ii) where it used the domain name <deluxeform.com>; to redirect users to the complainant's <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program). Therefore, the Panel should hold that Respondent's use of the BEDBATHBEYONDCOUPONS.COM domain name(s) to redirect Internet users to Complainant's own website is not a use protected under Policy 4(c)(i) or 4(c)(iii), and that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii).
The earliest date on which Respondent registered the Disputed Domain Name(s) was January 19, 2007, which is significantly after Complainant's first use in commerce, August 1, 1991, as specified in their relevant registration with the USPTO.
The earliest date on which Respondent registered the Disputed Domain Name(s) was January 19, 2007, which is significantly after Complainant's registration of their relevant Marks with the USPTO on April 12, 1994.
The earliest date on which Respondent registered the Disputed Domain Name(s) was January 19, 2007, which is significantly after Complainant's registration of BEDBATHANDBEYOND.COM on November 17, 1996.
[c.] The Disputed Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:
Respondent is using the Disputed Domain Name(s) to redirect Internet users to Complainant's own website through Complainant's affiliate program, which is in direct violation of the affiliate agreement which governs Respondent's relationship as an affiliate of Complainant. As a member of Complainant's affiliate program, Respondent was aware of Complainant's rights in Complainant's Mark(s) when registering the Disputed Domain Name(s). By registering confusingly similar domain names while a member of this affiliate program, Respondent has attempted to opportunistically benefit from its registration and use of the Disputed Domain Name(s) at Complainant's expense. Respondent's registration and use of the Disputed Domain Name(s) while a member of Complainant's affiliate program constitutes additional evidence of bad faith under Policy 4(a)(iii). See Cricket Communc'ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant's mark after enrolling in the complainant's affiliate program); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the domain name in bad faith pursuant to Policy 4(b)(iv) by redirecting its users to the complainant's domain name, thus receiving a commission from the complainant through its affiliate program).
As a member of Complainant’s affiliate program, it is obvious that Respondent must have had actual notice of Complainant’s rights in the BED BATH & BEYOND mark when it registered the Disputed Domain Name(s). It has previously been held that a respondent demonstrates bad faith under Policy ¶4(a)(iii) by registering an infringing domain name with actual notice of the complainant’s rights in the appropriated mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). See also Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Dragan Platic / Poste restante, FA1537469. It is clear that Respondent’s actual notice of Complainant’s rights in the appropriated mark is further evidence that BEDBATHBEYONDCOUPONS.COM domain name was registered and used in bad faith under Policy ¶4(a)(iii).
The Respondent has also listed the Disputed Domain Name(s) for sale. As shown in WIPO Decision D2001-1066, Trip.com, Inc. v. Daniel Deamone, "A fourth factor is that Respondent has offered the Domain Name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent's offer of the Disputed Domain Name(s) for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy." The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000). See also WIPO Case No. D2003-0689, Mr. Donning Eric v. Mr. Nyunhwa Jung,..."The posting of the announcement: "This domain is for SALE!" constitutes satisfactory evidence, when combined with the Respondent's lack of legitimate rights to or interests in the domain name, that the Respondent's primary purpose in registering the domain name was to sell it in contravention of the Policy (EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036).
Respondent is a recalcitrant, serial cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. Previous panels have agreed that multiple prior UDRP decisions are sufficient evidence indicating a respondent's bad faith use and registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) ("These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii).").
Respondent holds registrations on other domain names that appear to be straight forward examples of typosquatting. Although those names are not directly involved in this complaint, they serve as further evidence of bad faith intent on the part of Respondent. See Policy, 4(b)(ii) and Time Warner Inc. v. Zone MP3, NAF Claim No. FA0706001008035 (typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith). See also Citigroup Inc. v. Digi Real Estate Foundation, NAF Claim No. FA0704000964679.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 and/or Confusingly Similar
Complainant claims rights to the BED BATH & BEYOND mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,830,725 registered Apr. 12, 1994). Registration of a mark with a governmental authority, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant has rights in the BED BATH & BEYOND mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <bedbathbeyondcoupons.com> domain name is confusingly similar to Complainant’s BED BATH & BEYOND mark because it incorporates Complainant’s entire mark, deletes the spaces and the ampersand, and adds a modifier and a gTLD to the mark. Adding a generic and/or descriptive term to a complainant’s mark does not prevent the finding of confusing similarity between a disputed domain name and a mark under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Removing a space and an ampersand is also disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits both spaces and ampersands. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis), Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); see also Deutsche Lufthansa AG v. Milen Radumilo, FA 1764056 (Forum Jan. 19, 2018) (“No domain name may contain ampersands because ampersands are also prohibited characters in domain names. Therefore, the omission of ampersands is disregarded under a Policy ¶4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Respondent merely removes the spaces and the ampersand within the mark, and adds the term “coupons”, and a “.com” gTLD to Complainant’s mark. The <bedbathbeyondcoupons.com> domain name does not contain sufficient changes to distinguish it from the BED BATH & BEYOND mark under Policy ¶4(a)(i). The two are confusingly similar.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in the <bedbathbeyondcoupons.com> domain name because Respondent is not authorized to use Complainant’s BED BATH & BEYOND mark and is not commonly known by the disputed domain name. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). There is no evidence in the record to indicate Respondent was ever authorized to register a domain name or use Complainant’s mark in any fashion whatsoever, which indicates Respondent lacks rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record currently identifies Respondent as “Net Manager / Xwings Domains.” Before this Proceeding was brought, the WHOIS information was “redacted for privacy.” There is no obvious relationship between Respondent’s name and the disputed domain name. There is no evidence in the record to suggest Respondent was authorized to use the BED BATH & BEYOND mark. Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use. Respondent uses the <bedbathbeyondcoupons.com> domain name to divert Internet users to Complainant’s own website in violation of Complainant’s affiliate program. Using a disputed domain name to divert Internet users attempting to reach a complainant’s website in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii). See The Endurance International Group, Inc. and its companies, Bluehost Inc. and Hostgator.com, LLC v. Administrator Dom / Muscari Holding Limited, FA 1684069 (Forum Aug. 25, 2016) (finding that respondent’s registering of domain names which “redirect Internet users to Complainant’s own website” directly violated the affiliate agreement between the parties). Complainant provided a copy of the affiliate agreement between Complainant and Respondent, but did not direct the Panel’s attention to the provision Respondent violated. However, no provision of the affiliate agreement explicitly allows Respondent to use Complainant’s mark in a domain name. This is what Respondent did. Respondent’s use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <bedbathbeyondcoupons.com> domain name in bad faith. Respondent is attempting to sell the disputed domain name to the general public. Offers for sale to the general public (presumably in excess of Respondent’s out of picket cost because otherwise Respondent could not stay in business) constitute evidence of bad faith registration and use under the Policy ¶4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The offer shows up whenever a user accesses the WHOIS information. Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent has engaged in a pattern of bad faith registration and use, which demonstrates bad faith registration and use. Policy ¶4(b)(ii) provides “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” Complainant has not been prevented from reflecting its mark in a domain name. Therefore, the Panel declines to find bad faith on this basis.
Complainant claims Respondent is using the disputed domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program. Redirecting Internet users attempting to reach a complainant’s website to gain a profit off of a complainant is evidence of bad faith use and registration under Policy ¶4(a)(iii). See LifeLock v. Sparta Trading S.A., FA1408001577367 (Forum Oct. 14, 2014) (“Respondent is using the disputed domain name to redirect Internet users to Complainant’s website, which is a violation of its affiliate agreement with Complainant. Therefore, Respondent is using the disputed domain name in bad faith under Policy ¶4(a)(iii).”). Respondent is violating the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant. Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Respondent must have been aware of Complainant and its BED BATH & BEYOND mark prior to registering the disputed domain name because Respondent signed up for Complainant’s affiliate program. Respondent ultimately refers customers to Complainant’s website. In light of these facts, Respondent must have known about Complainant’s marks. Respondent had actual knowledge of Complainant’s rights in the BED BATH & BEYOND mark prior to registering the <bedbathbeyondcoupons.com> domain name, which constitutes bad faith under Policy ¶4(a)(iii).
Respondent registered the disputed domain name with a registrar who redacts all registration information “for privacy.” This is tantamount to using a WHOIS privacy service (even though it may not be sold on a separate basis). Respondent choses its registrar and presumably did so taking great care (or at least the terms of service and what the WHOIS information looked like). In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bedbathbeyondcoupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, August 21, 2018
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