BJ's Wholesale Club, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1208001458965
Complainant is BJ's Wholesale Club, Inc. (“Complainant”), represented by John C. McElwaine of Nelson Mullins Riley & Scarborough, LLP, South Carolina, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bjswholesaleclubs.com>, registered with Internet.bs Corp.
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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2012; the National Arbitration Forum received payment on August 21, 2012.
On August 23, 2012, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <bjswholesaleclubs.com> domain name is registered with Internet.bs Corp and that Respondent is the current registrant of the name. Internet.bs Corp has verified that Respondent is bound by the Internet.bs Corp 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 August 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@bjswholesaleclubs.com. Also on August 23, 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 September 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 name be transferred from Respondent to Complainant.
A. Complainant’s Allegations
1) Complainant registered the BJ’S WHOLESALE CLUB mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,643,993 on May 7, 1991).
2) Complainant’s BJ’S WHOLESALE CLUB mark is well known.
3) Respondent, Fundacion Private Whois / Domain Administrator, registered the <bjswholesaleclubs.com> domain name on May 23, 2012.
4) Respondent is using the disputed domain name to post advertisements or links to products and services of the same type offered by Complainant.
5) Respondent’s <bjswholesaleclubs.com> domain name is confusingly similar to the BJ’S WHOLESALE CLUB mark.
6) Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent is not commonly known by the disputed domain name or Complainant’s BJ’S WHOLESALE CLUB mark.
ii. Respondent is diverting Internet users to a website featuring advertisements and links to products and services in competition with Complainant.
7) Respondent registered and is using the disputed domain name in bad faith.
i. Respondent’s use of the disputed domain name as a links portal to Complainant’s competitors is disruptive of Complainant’s business and is evidence of bad faith.
ii. Respondent’s use of the domain name to attract Internet users to the resolving website, presumably for commercial gain, is also evidence of bad faith registration and use.
iii. Respondent had knowledge of Complainant’s rights in the BJ’S WHOLESALE CLUB mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Complainant contends that it has protectable rights in the BJ’S WHOLESALE CLUB mark through its registration of the mark with the USPTO (Reg. No. 1,643,993 on May 7, 1991). The Panel notes that Complainant provided a copy of this U.S. trademark registration. The Panel finds that Complainant has rights in BJ’S WHOLESALE CLUB United States registration under Policy ¶ 4(a)(i), even though Respondent resides in Panama. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant further contends that the <bjswholesaleclubs.com> domain name is confusingly similar to the BJ’S WHOLESALE CLUB mark. The Panel notes that the disputed domain name merely removes the apostrophe and spaces from Complainant’s mark, while adding the letter “s”. This is not sufficient to avoid confusing similarity with Complainant’s BJ’S WHOLESALE CLUB mark under Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)).
Thus, Complainant has satisfied Policy ¶ 4(a)(i)).
Complainant asserts that Respondent is not commonly known by the <bjswholesaleclubs.com> domain name or Complainant’s BJ’S WHOLESALE mark. The Panel notes that the WHOIS information on record identifies “Fundacion Private Whois / Domain Administrator” as the registrant of the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), as there is no evidence on record indicating that Respondent is in fact known by the disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Further, Complainant asserts that Respondent is diverting Internet users to a website featuring advertisements and links to products and services in competition with Complainant. The Panel notes that Complainant’s screen captures show link headings such as “Costco TrueEarnings® Card” and “Sam’s Club® Official Site”. Complainant contends, and this Panel accepts, that the links contained on the resolving website compete with Complainant’s offerings, and Respondent is paid for hosting such links. The Panel thus finds that Respondent has not made 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). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts, and this Panel finds, that Respondent had knowledge of Complainant’s well-known mark in light of its use of the mark in connection with the disputed domain name and resolving websites. Thus, this Panel finds that Respondent registered the disputed domain name in bad faith.
Further, Complainant contends that Respondent’s use of the domain name to attract Internet users to the resolving website, presumably for commercial gain, is also evidence of bad faith registration and use. The Panel finds that confusion regarding sponsorship of the website is apparent from Respondent’s use of the BJ’S WHOLESALE CLUB mark in the domain and from Respondent’s apparent profiting from such confusion. This constitutes evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bjswholesaleclubs.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 1, 2012
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