WIPO Arbitration and Mediation Center


BJ’s Wholesale Club, Inc. v. Emanuela Rocco

Case No. D2017-0937

1. The Parties

Complainant is BJ’s Wholesale Club, Inc. of Westborough, Massachusetts, United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.

Respondent is Emanuela Rocco of Pescare, Italy, self-represented.

2. The Domain Name and Registrar

The disputed domain name <bjswholesaleclub.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2017. On May 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 May 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2017. A communication from Respondent was received by the Center on May 27, 2017.

Upon Complainant’s request dated May 31, 2017, the proceedings were suspended for the parties to seek to resolve the dispute on June 1, 2017. Upon Complainant’s request dated June 23, 2017, the proceedings were reinstituted on the same day, with a new Response due date as July 5, 2017. Two email communications from Respondent were received by the Center on June 26, 2017 and July 6, 2017.

The Center appointed Clive L. Elliott as the sole panelist in this matter on July 14, 2017. 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.

On July 18, 2017 Complainant requested leave be granted to file an amended Complaint due to further discovery of another similar domain name registered by Respondent. The Panel has considered Complainant’s request. The Panel directed that the amendment should be permitted, subject to re-notifying the case for 20 days to permit Respondent to respond to the amended complaint should it wish to do so.

On August 4, 2017 the Panel was informed by the Center that the additional domain name had been registered by Complainant. Given the above the request for amendment is moot.

4. Factual Background

Complainant is a membership-based warehouse club that sells high-quality brand-name and private label food and general merchandise at affordable prices. Complainant owns and uses the domain name <bjswholesaleclub.com>, which redirects to Complainant’s homepage at “www.bjs.com”.

Complainant is the owner of three United States registered trademarks, for BJ’S WHOLESALE CLUB; registered on May 7, 1991 (Registration Number 1,643,993); August 11, 1992 (Registration Number 1,707,159); and December 14, 2004 (Registration Number 2,910,211) (the “Complainant’s Mark”).

According to the WhoIs, the Domain Name was registered on January 5, 2017. According to the evidence submitted with the Complaint, the Domain Name redirected to a website where coupons for liquidation sales were offered.

5. Parties’ Contentions

A. Complainant

Complainant states that it began its operation in the mid-1980s by introducing the warehouse club concept to the northeastern United States, and since then it has expanded north to Maine, south to Florida, and as far west as Ohio, today operating more than 200 Clubs in 15 states.

Complainant further states that in addition to food and general merchandise sold in its retail locations, it offers for sale, through its website, to members a large variety of consumer electronics, computers, office supplies, home furnishings and equipment, sporting goods, toys, health and beauty products, and jewelry. Complainant also offers services through co-branded service providers, such as automobile purchasing, credit cards, cruise ship reservations, extended warranties, insurance sales, travel and accommodation reservations, vacation packages, pre-paid telephone cards, and cellular telephone plans.

Complainant contends that it has established significant fame and goodwill in the Complainant’s Mark, which has been used for decades on its signage and other advertising.

Complainant contends that in order to protect the Complainant’s Mark, it has a trademark policing program and through this program it discovered that Respondent had recently begun using the Domain Name to redirect to another domain that hosts a webpage containing text and images. It is further contended that this creates a factually incorrect false impression that Complainant had filed for bankruptcy and is in the midst of conducting Chapter 7 liquidation sales at hundreds of Complainant’s stores. Complainant denies these allegations and says further that the content of the Domain Name website creates a likelihood of confusion as to the source of the content, as well as harming the goodwill associated with Complainant’s Mark and that the registration and use of the Domain Name constitutes bad faith.

Complainant states that it sent a cease and desist letter to Respondent on January 16, 2016. Respondent replied by email on March 20, 2017 with an offer to sell the Domain Name to Complainant for USD 2,000; a consideration far in excess of documented reasonable out-of-pocket costs directly related to the Domain Name. Complainant submits that such acquisition of the Domain Name with the intention to sell the Domain Name to Complainant for more than Respondent’s reasonable out of pocket expenses constitutes bad faith registration and use of the Domain Name.

Complainant states that Respondent has no prior rights or legitimate interest in the Domain Name, and has not authorized Respondent to use the Complainant’s Mark. Respondent is not a licensee of the Complainant’s Mark, and nor is Respondent known by the name “BJ’s Wholesale Club”, or “BJ’s”.

Complainant asserts that the Domain Name is confusingly similar to Complainant’s Mark in that it is comprised wholly of and is identical to Complainant’s Mark. Complainant contents that Respondent has selected the Domain Name intentionally to “cybersquat” and trade on the goodwill associated with the Complainant’s Mark and its domain name <www.bjswholesaleclub.com>. It further contends that it was done intentionally to divert Complainant’s actual and potential customers to a website that propagates false information about Complainant with the ultimate goal of selling the Domain Name to Complainant in order to prevent further harm and confusion, which Complainant asserts is evidence of bad faith registration and use of a domain name.

B. Respondent

No formal response was received from Respondent.

Respondent did however send an email to the Center on May 27, 2017 advising she agreed to the transfer or cancellation of Domain Name provided no further proceedings were taken. Respondent sent a further email on June 26, 2017 forwarding a signed Center Standard Settlement Form agreeing to the transfer of the Domain Name to Complainant. Respondent sent a final email to the Center on July 6, 2017, stating that she was the registrant of “bjwholesale.net only and no other domain […]”.

6. Discussion and Findings

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) records in its section 4.10 that where respondent has given its consent on the record to the transfer (or cancellation) remedy sought by complainant, ,many panels find is that it is appropriate to order the requested remedy solely on the basis of such consent. That is, on the basis that in doing so the Panel is giving effect to an understood party agreement as to the disposition of their case.

The Panel accepts that Respondent has advised the Center on two occasions that she agrees to the transfer or cancellation of Domain Name. The Panel considers it appropriate in this case to give effect to the above agreement/consent.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bjswholesaleclub.net> be transferred to Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: August, 11 2017