WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BJ's Wholesale Club v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty
Case No. D2015-1601
1. The Parties
Complainant is BJ's Wholesale Club, Westborough, Massachusetts, United States of America, represented by Nelson Mullins Riley & Scarborough, L.L.P., United States of America.
Respondent is Lisa Katz, Dallas, Texas, United States of America; Domain Protection LLC / Domain Hostmaster, Customer ID: 64382986619850 Whois Privacy Services Pty, Fortitude Valley, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <wwwbjswholesaleclub.com> is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2015. On September 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 14, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 15, 2015.
The Center verified that the amended 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 September 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2015. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2015.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on October 21, 2015. 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.
4. Factual Background
Complainant is a membership-based warehouse club that sells brand-name and private label food, general merchandise, electronics and services. Complainant has been in operation since the mid-1980s and now operates more than 205 Clubs in 15 states.
Complainant owns three United States federal trademark registrations— Reg. Nos. 2,910,211, 1,707,159 and 1,643,993—for its BJ'S WHOLESALE CLUB Mark. Complainant owns the domain name <bjswholesaleclub.com>, which redirects to Complainant's website, located at "www.bjs.com".
The disputed domain name was registered on June 3, 2005, and expires on June 3, 2016.
5. Parties' Contentions
Complainant states that it has established significant fame and goodwill in its BJ'S WHOLESALE CLUB mark, which has been upheld in a UDRP decision. See Strathmore Partners LP v. PPA Media Services / Ryan G Foo, NAF Claim No. 1438428. Complainant alleges that the disputed domain name is confusingly similar to its BJ'S WHOLESALE CLUB trademark because it incorporates the entirety of Complainant's mark with only the addition of "www". Complainant asserts that the addition of "www" does not remove any confusion in the mind of the consumer, but rather constitutes intentional "typosquatting".
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not authorized Respondent to use its BJ'S WHOLESALE CLUB mark and because Respondent is not commonly known by the name BJ'S WHOLESALE CLUB.
Complainant further alleges that the disputed domain name was intentionally registered to divert Complainant's actual and potential customers with a goal of subjecting them to a malware scam.
Regarding bad faith registration, Complainant alleges that knowledge on the part of Respondent can be inferred due to Complainant's well-known mark, and that Respondent registered the disputed domain name intentionally as a typo of Complainant's BJ'S WHOLESALE CLUB mark to divert Internet traffic to a malware scam. Complainant likewise alleges bad faith use based on the distribution of malware through the deception caused by the disputed domain name.
Respondent did not respond to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the BJ'S WHOLESALE CLUB trademark in view of its trademark registrations. The Panel further finds that the disputed domain name is confusingly similar to the BJ'S WHOLESALE CLUB mark because it incorporates the entirety of the trademark. The addition of "www" does not differentiate the disputed domain name from Complainant's mark since it is a non-distinctive element which stands for "world wide web," and precedes many domain names in URL addresses. Prior UDRP panels have held that the letters "www" do not have distinguishing capacity and are insufficient to avoid confusion with a complainant's trademark. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. The failure of Respondent to include the required period between "www" and "bjswholesaleclub.com" constitutes typosquatting, "the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors". National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The evidence of record supports Complainant's unrebutted allegations that Respondent is not authorized to use the BJ'S WHOLESALE CLUB mark and is not commonly known by that name. The use of the disputed domain name to divert Internet traffic to a malware scam is not a bona fide offering of goods or services. See Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303. Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name; Respondent, by virtue of its default, has failed to rebut that showing.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Regarding bad faith registration, the Panel finds that Complainant's BJ'S WHOLESALE CLUB mark has been registered since May 7, 1991, more than fourteen years prior to the date that the disputed domain name was first registered. Additionally, the mark appears to only refer to Complainant and its services, and the disputed domain name constitutes typosquatting. It is therefore unlikely that Respondent was unaware of the BJ'S WHOLESALE CLUB mark and Complainant's rights when it registered the dispute domain name.
Regarding bad faith use, because the disputed domain name intentionally takes advantage of consumer typing errors and redirects Internet traffic to a malware scam as claimed by Complainant and not rebutted by Respondent, the Panel finds that Complainant has made a prima facie showing of bad faith use. See National Association of Professional Baseball Leagues, Inc., supra.
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, <wwwbjswholesaleclub.com>, be transferred to Complainant.
Lawrence K. Nodine
Date: November 4, 2015