Macy’s Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. v. jiangchunyuan
Claim Number: FA1607001685126
Complainant is Macy’s Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is jiangchunyuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bloomingdlaes.com>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies that s/he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2016; the Forum received payment on July 25, 2016. The Complaint was received in both Chinese and English.
On July 26, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <bloomingdlaes.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 1, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 22, 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@bloomingdlaes.com. Also on August 1, 2016, the Chinese language 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 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq., 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
i) Complainant, Macy’s Retail Holdings, Inc., is a retailer with more than 800 Macy’s and Bloomingdale’s department stores and furniture galleries in more than 45 states, the District of Columbia, and US territories. Complainant uses the BLOOMINGDALE’S mark in association with its business providing retail services and has rights in the mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 945,425, registered Oct. 17, 1972). Respondent’s domain, <bloomingdlaes.com>, is confusingly similar and nearly identical to the BLOOMINGDALE’S mark as the domain only differs through the transposing two characters in Complainant’s mark and adding the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain, authorized to use Complainant’s mark, or been affiliated with Complainant in any way. Respondent’s use of the domain, to redirect Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant’s business, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent has registered and is using the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith registrations. Respondent’s click through advertisements lead to links to websites promoting products in competition with Complainant and disrupt Complainant’s business. Respondent has used the domain to generate revenue through use of Complainant’s mark in connection with click through advertisements. Respondent’s typosquatting behavior demonstrates bad faith.
B. Respondent
Respondent has not submitted a Response in this Proceeding. The Panel notes that the disputed domain name was created on March 29, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
Complainant claims to use the BLOOMINGDALE’S mark in connection with its business as a retailer operating over 800 Macy’s and Bloomingdale’s department stores and furniture galleries. Complainant claims that its rights in the BLOOMINGDALE’S mark stem from registration of the mark with the USPTO (e.g., Reg. No. 945,425, registered Oct. 17, 1972). Panels routinely find, and this Panel finds, that registration of a mark with the USPTO is sufficient to establish a complainant's rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s domain, <bloomingdlaes.com>, is confusingly similar and nearly identical to the BLOOMINGDALE’S mark in which Complainant asserts rights. Respondent’s domain differs from the BLOOMINGDALE’S mark through transposition of the letters “l” and “a,” the addition of the gTLD “.com,” and the removal of an apostrophe. Panels have repeatedly found that transposing the letters of a mark in a domain name does not alleviate confusing similarity under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Additionally, panels have held that removal of an apostrophe and addition of the gTLD “.com,” are not relevant to a confusing similarity analysis. See Saba's Stores Inc. v. Web Dev. Group Ltd., FA 997451 (Forum Aug. 2, 2007) (Panelist David E. Sorkin dissenting) (“Since the stylization of Complainant’s mark cannot be duplicated in a domain name, the Panel concludes that the only deviation from that mark and the disputed domain name is the deletion of the apostrophe and the addition of the gTLD, “.com.” These differences do not prevent the disputed domain name from being confusingly similar to Complainant’s valid trademark.”). Taken together, this Panel concludes that Respondent’s domain is confusingly similar to the BLOOMINGDALE’S mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 (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. Gerberg, FA 780200 (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.”).
Complainant argues that Respondent has not been commonly known by the disputed domain, authorized to use the BLOOMINGDALE’S mark, established rights in the BLOOMINGDALE’S mark, or been affiliated with Complainant in any way. WHOIS information associated with the disputed domain identifies Respondent as “jianchunyuan” which does not appear to resemble the disputed domain. Panels have held a respondent not to be commonly known by a disputed domain based on WHOIS information, a lack of authorization or connection to a complainant, and a lack of evidence in the record to the contrary. 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). This Panel concludes that Respondent is not commonly known by the disputed domain pursuant to Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is not using the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website which includes various click through links with titles such as “Bloomingdales Clothing,” “Bloomingdales Furniture Outlet,” and “Online Shopping Malls.” Clicking on the “Bloomingdales Clothing” link redirects to a page with links to online retailers including <bloomingdales.com>, <jcpenney.com/clothing>, and <rosewholesale.com>. Panels have held that using a confusingly similar domain to host links and advertisements for competing products and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). The Panel finds that Respondent’s use of the disputed domain is not within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant asserts that Respondent has engaged in a pattern of bad faith registrations. WHOIS information identifies Respondent as “jianchunyuan” who appears to have been the respondent in at least four previous UDRP proceedings leading to a domain transfer. Panels have held that a pattern of bad faith registrations can lead to an inference of bad faith in a present proceeding. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). As Respondent appears to have previously received adverse UDRP findings, this Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s click through advertisements lead to websites promoting products in competition with Complainant and thus disrupt Complainant’s business. As stated above, Respondent’s domain, <bloomingdlaes.com>, resolves to a website hosting various click through links which lead to pages hosting links to Complainant and Complainant’s competitors. Panels have found bad faith disruption and competition where a respondent used a domain that is confusingly similar to a complainant’s mark for the purposes of hosting links to a complainant’s competitors. See Independent Insurance Agents & Brokers of America, Inc. v. Liqian, FA1409001582252 (Forum Nov. 10, 2014) (concluding that because the complainant operated in the insurance business and the respondent was using the disputed domain name to display hyperlinks that ultimately promoted insurance companies and quote rates, the respondent was disrupting the complainants business and demonstrating bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)). As the Panel finds that Respondent is using the disputed domain to host links to Complainant’s competitors it finds that Respondent has done so in bad faith under Policy ¶ 4(b)(iii).
Complainant next asserts that Respondent has used the domain to generate revenue through use of Complainant’s mark in connection with click through advertisements from which Respondent presumably profits. Again, Respondent uses the domain to resolve to a website hosting correct spellings of Complainant’s mark and displays click through links with Complainant’s name in the title and links related to Complainant’s business. Panels have found bad faith where a respondent used a confusingly similar domain to attract and profit from Internet user’s confusion through the use of advertisements or click through links. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). The Panel determines that Respondent’s behavior was in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent’s typosquatting behavior demonstrates bad faith. Respondent’s domain differs from Complainant’s <bloomingdales.com> domain merely through transposing two letters. Panels have held that a deliberate attempt by a respondent to take advantage of common typing mistakes can be evidence of bad faith. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel finds that Respondent’s typosquatting demonstrates bad faith under 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 <bloomingdlaes.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 6, 2016
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