Bed Bath & Beyond Procurement Co. Inc. v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1206001447967
Complainant is Bed Bath & Beyond Procurement Co. Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <beadbathandbeyond.com>, <bedbathandbeynd.com>, <bedbathandbeyoud.com>, <bedbathbeyonds.com>, and <wwwbedbathandbeyond.com>, registered with Moniker Online Services, LLC.
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.
The Honourable Neil Anthony Brown QC Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 8, 2012.
On June 12, 2012, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwbedbathandbeyond.com>
domain name are registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC 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 June 19, 2012, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <beadbathandbeyond.com>, <bedbathandbeynd.com>, <bedbathandbeyoud.com>, and <bedbathbeyonds.com> domain names are registered with Moniker Online Services, LLC and that Respondent is the current registrant of the names. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC 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 June 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2012 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@beadbathandbeyond.com, postmaster@bedbathandbeynd.com, postmaster@bedbathandbeyoud.com, postmaster@bedbathbeyonds.com, and postmaster@wwwbedbathandbeyond.com. Also on June 19, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
Complainant made the following contentions.
1. Complainant registered the BED BATH & BEYOND mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,712,392 registered September 1, 1992);
2. Respondent’s <beadbathandbeyond.com>, <bedbathandbeynd.com>, <bedbathandbeyoud.com>, <bedbathbeyonds.com>, and <wwwbedbathandbeyond.com> domain names are nearly identical and confusingly similar to Complainant’s BED BATH & BEYOND mark;
3. Respondent has no rights or legitimate interests in the disputed domain names.
4. The disputed domain names have been registered and used in bad faith
5. Respondent’s disputed domain names exemplify classic typosquatting characteristics;
6. Respondent’s disputed domain names resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
7. Respondent receives pay-per-click fees from the linked websites;
8. The earliest date of which Respondent registered the disputed domain names was November 9, 2005, which is significantly after Complainant’s registration of the BED BATH & BEYOND mark;
9. Respondent has been subject to previous adverse UDRP proceedings;
10. Respondent registered and uses the disputed domain names in connection with generating revenue via a click-through website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that has been and is the successful operator of a large retail business that also provides online retail services;
2. Complainant registered the BED BATH & BEYOND mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,712,392 registered September 1, 1992);
3. The disputed domain names were registered by Respondent on dates the earliest of which was November 9, 2005, significantly after Complainant’s registration of the BED BATH & BEYOND mark.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it established rights in the BED BATH & BEYOND mark when Complainant registered the mark with the USPTO (e.g., Reg. No. 1,712,392 registered September 1, 1992). Complainant submits printouts from the USPTO website to support its claims regarding registration. See Complainant’s Exhibit E. Based upon the registrations provided, the Panel finds that Complainant has established its rights in the BED BATH & BEYOND mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BED BATH & BEYOND mark Complainant argues that Respondent’s <beadbathandbeyond.com>, <bedbathandbeynd.com>, <bedbathandbeyoud.com>, <bedbathbeyonds.com>, and <wwwbedbathandbeyond.com> domain names are nearly identical and confusingly similar to Complainant’s BED BATH & BEYOND mark. The Panel notes that all of the disputed domain names include the generic top-level domain (“gTLD”) “.com.” The Panel also notes that all but one of the disputed domain names change the “&” in the trademark to the word “and” in the domain names. The Panel further notes that the <beadbathandbeyond.com>, <bedbathandbeynd.com>, and <bedbathandbeyoud.com> domain names all add, subtract or change a single letter in the BED BATH & BEYOND mark. Complainant submits that the <wwwbedbathandbeyond.com> domain name includes the entire mark, while merely removing the period and appending the “www” that traditionally accompanies a domain name. As the Panel concludes that Respondent failed to differentiate the disputed domain names from the BED BATH & BEYOND mark, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a) (I). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arab. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerber, FA 780200 (Nat. Arab. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BED BATH & BEYOND trademark and to use it in its domain names, making various minor changes to the trademark before embodying it in the domain names;
(b) Respondent has then decided to use the domain names to resolve to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) The Panel notes that the WHOIS information identifies the registrant of the disputed domain names as “Domain Admin / Taranga Services Pty Ltd.” The Panel also notes that Respondent has failed to offer any evidence to establish that Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c) (ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
(e) Complainant submits that Respondent’s disputed domain names resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business like Sephora and Lancôme. Complainant argues that Respondent receives pay-per-click fees from the linked websites. Based upon that use, the Panel concludes that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c) (iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
(f) Complainant also asserts that Respondent engaged in typosquatting when it composed the disputed domain names in their current formats. The Panel notes that Respondent’s <beadbathandbeyond.com>, <bedbathandbeynd.com>, <bedbathandbeyoud.com>, <bedbathbeyonds.com>, and <wwwbedbathandbeyond.com> domain names all change the “&” to an “and” or delete the “&,”. This may not strictly be typosquatting because changing the characteristics of the “&” is not a simple typographic error, but requires more of a conscious act by the internet user. Nevertheless, the changes made by Respondent to the spelling and the wording of the trademark before incorporating it into the domain names negates any possibility that Respondent might have a right or legitimate interest in the disputed domain names.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent has been a party to prior adverse UDRP proceedings indicating a pattern of cybersquatting behavior. Complainant submits the case information from the prior proceedings to support its allegation. See Enterprise Holdings, Inc. v. Taranga Services Pty Ltd/ Domain Admin, FA 1385861 (Nat. Arb. Forum June 8, 2011); see also AARP v. Domain Admin/ Taranga Services Pty Ltd, FA 1393384 (Nat. Arb. Forum July 19, 2011); see also Metropolitan Life Ins. Co. v. Domain Admin/ Taranga Services Pty Ltd, FA 1403559 (Nat. Arb. Forum Sept. 19, 2011). Based upon the cases submitted, the Panel finds that Respondent has developed a pattern of bad faith registrations, which indicates bad faith registration and use in this matter under Policy ¶ 4(b) (ii). 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).”).
Secondly, Complainant also alleges that Respondent registered and uses the disputed domain names in connection with generating revenue via a click-through website. Complainant states that Respondent’s disputed domain names resolve to a website offering links to its competitors, like Lancôme and Sephora. The Panel infers from the use that Respondent generates revenue by collecting a small click-through fee for each Internet user diverted to one of the linked websites. The Panel finds that Respondent is attempting to confuse Internet users into clicking on the links based upon some purported affiliation with Complainant and then gaining commercially from the confusion. Consequently, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b) (iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thirdly, Complainant asserts that Respondent has engaged in typosquatting demonstrating bad faith registration and use. The Panel notes that Respondent’s <beadbathandbeyond.com>, <bedbathandbeynd.com>, <bedbathandbeyoud.com>, <bedbathbeyonds.com>, and <wwwbedbathandbeyond.com> domain names all change the “&” to an “and” or delete the “&,”. Whilst that may not strictly be typosquatting for the reason given above, the changes made by Respondent to the spelling and the wording of the trademark before incorporating it into the domain names tends to support the view that Respondent registered and used the disputed domain names in bad faith.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BED BATH & BEYOND mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <beadbathandbeyond.com>, <bedbathandbeynd.com>, <bedbathandbeyoud.com>, <bedbathbeyonds.com>, and <wwwbedbathandbeyond.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC Panelist
Dated: July 19, 2012
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