Complainant is BJ’s Wholesale Club, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
Respondent is Privacy.co.com, Savvy Investments, LLC Privacy ID# 1118230, United States.
The disputed domain name <wwwbjwholesaleclub.com> is registered with Sea Wasp, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 14, 2019. In accordance with the Rules, paragraph 5, the due date for a Response was July 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 8, 2019.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on July 25, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a membership-based warehouse club that sells food and general merchandise (including tires), and offers services through co-branded service providers. Complainant owns and operates the domain name <bjswholesaleclub.com>, which redirects to Complainant’s homepage at “www.bjs.com”. Complainant has registered three United States trademark registrations for BJ’S WHOLESALE CLUB (Registration Numbers: 1,643,993, registered on May 7, 1991; 1,707,159 registered on August 11, 1992; and 2,910,211 registered on December 14, 2004), with dates of first use dating back as early as 1984. These marks are incontestable under 15 U.S.C. Section 1065. Respondent registered the disputed domain name on October 22, 2005. Annex 9 to the Complaint contains screenshots of the website for the disputed domain name as of May, 2019, and shows advertisements for tires and various coupons.
Complainant asserts that it began operations in the northeastern United States in the mid-1980s, and today operates more than 200 clubs in 16 states. Complainant alleges that it has established significant fame and goodwill in its BJ’S WHOLESALE CLUB marks. Complainant sent Respondent a demand letter on March 11, 2019, requesting that Respondent cease using the disputed domain name, transfer the disputed domain name to Complainant, and provide written assurance that Respondent would not register any confusingly similar domain name in the future. Complainant alleges that Respondent did not respond to the cease and desist letter.
Complainant notes that its trademark registrations are incontestable, and thus under 15 U.S.C. Section 1115(b) the certificates of registration constitute “conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce.” Complainant asserts that the disputed domain name is confusing similar to Complainant’s BJ’S WHOLESALE CLUB marks, in that the disputed domain name consists of the marks with “www” appended to the front, the “‘s” removed, and “.com” at the end. Thus, Complainant asserts that Respondent is “typosquatting”.
Complainant asserts that Respondent has no prior rights or legitimate interests in the disputed domain name, in that Complainant has not authorized Respondent to use the disputed domain name or Complainant’s marks, Respondent is not a licensee of Complainant’s marks, Respondent registered the disputed domain name to create initial interest confusion to drive traffic to Respondent’s website and generate pay-per-click revenue, Respondent is not commonly known by <wwwbjwholesaleclub.com>, and Respondent is not making a bona fide offering of goods or services (or demonstrable preparations to do so) and does not satisfy the Oki Data factors.
Complainant asserts that the disputed domain name was registered and is being used in bad faith because Respondent is engaged in typosquatting, the use of Complainant’s marks was chosen “to pr[e]y on Complainant’s customers” by diverting Internet traffic to pay-per-click advertising, Respondent is disrupting Complainant’s business, Respondent was aware of Complainant’s marks when Respondent registered the disputed domain name, and Respondent did not respond to Complainant’s cease and desist letter.
Respondent did not reply to Complainant’s contentions.
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.
Complainant’s trademark registrations attached to the Complaint demonstrate that Complainant has rights in the BJ’S WHOLESALE CLUB marks.
The disputed domain name consists of the BJ’S WHOLESALE CLUB mark, with the “s” removed, the generic Top-Level Domain (“gTLD”) “.com” added at the end, and the prefix “www” added at the beginning. The addition of the “.com” gTLD is disregarded in assessing identicality or confusing similarity. WIPO Overview of Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1 (“The applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”). Similarly, “[m]any prior Panel decisions have considered domain names that consist of the prefix ‘www’ affixed to a trademark and have concluded that such domain names are substantially similar to the relevant trademark.” CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0373. “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” WIPO Overview 3.0, section 1.9. This is evident from three other UDRP cases involving a respondent with the same name and location as the Respondent in this matter. See Alpargatas S.A. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 884284, WIPO Case No. D2019-0777 (finding confusing similarity when “s” was removed from a trademark); Intuit Inc. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 1088779, WIPO Case No. D2018-2660 (finding confusing similarity when “o” was removed from a trademark); Intuit Inc. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 1130202, WIPO Case No. D2018-1999 (finding confusing similarity when “t” was removed from a trademark and replaced with “y” - the letter adjacent to “t” on a QWERTY keyboard).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name[s]”, paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name <wwwbjwholesaleclub.com>. Rather, Complainant asserts that its marks are famous, that Respondent is not authorized to use Complainant’s marks and is not a licensee, that nothing in Respondent’s WhoIs information identifies Respondent as being known by the disputed domain name, and that Respondent is making a commercial use of the disputed domain name with intent for commercial gain by misleadingly diverting consumers through association with the BJ’S WHOLESALE CLUB marks.
These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. “The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.” MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009 (no rights or legitimate interests in “wwwmaaco.com”). Seealso Philip Morris USA Inc. v. Private Registration / tongliang wang, WIPO Case No. D2019-1041(“The Panel notes that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.”).
Accordingly, the current state of the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the domain name; or
(ii) [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; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.
Complainant asserts that Respondent’s typosquatting constitutes bad faith. Many UDRP decisions support this conclusion. See Intuit Inc. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 1088779, WIPO Case No. D2018-2660 (“Complainant has alleged that Respondent has been using the domain name to misdirect users seeking to utilize Complainant’s online services to third party web sites and for such acts Respondent received compensation. Accordingly, the Panel finds on the case file that Respondent has registered and is using the disputed domain name in bad faith.”); Intuit Inc. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 1130202, WIPO Case No. D2018-1999 (“Respondent’s ‘typosquatting’ and its use of the disputed domain name in connection with a website containing advertisements to a third party website offering services competitive with those of Complainant and to earn pay-per-click fees, demonstrates Respondent’s registration and use of the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.”). Similarly, “using the disputed domain name actively for a standard [pay-per-click] page that contains links to the websites of third parties some of which appear[] to offer the Complainant’s products and some of which offer products of competitors of the Complainant” also constitutes bad faith. Alpargatas S.A. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 884284, WIPO Case No. D2019-0777. Complainant further alleges – and Respondent does not dispute – that Respondent was aware of Complainant’s marks when registering the disputed domain name. As noted in the WIPO Overview 3.0, section 3.1.4, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Seealso Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942, “the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.” Finally, Respondent’s failure to respond to Complainant’s cease and desist letter can be evidence of bad faith. See SeatGeek, Inc. v. Nash Enterprises, Inc., WIPO Case No. D2019-0415 (“From Respondent’s failure to reply to Complainant’s cease and desist letter prior to commencing the proceedings, the Panel also infers bad faith on the part of Respondent.”).
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wwwbjwholesaleclub.com> be transferred to Complainant.
Bradley A. Slutsky
Sole Panelist
Date: August 8, 2019