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Blue Nile, Inc. v. Mrs. Jello, LLC [2005] GENDND 1606 (26 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blue Nile, Inc. v. Mrs. Jello, LLC

Case No. D2005-0639

1. The Parties

The Complainant is Blue Nile, Inc., Seattle, Washington, United States of America, represented by Cooley Godward, LLP, Palo Alto, California, United States of America.

The Respondent is Mrs Jello, LLC, Livingston, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bluenilediamonds.com> is registered with R. Lee Chambers Company LLC d/b/a DomainsToBeSeen.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2005. On June 21, 2005, the Center transmitted by email to R. Lee Chambers Company LLC d/b/a DomainsToBeSeen.com a request for registrar verification in connection with the domain name at issue. On June 21, 2005, R. Lee Chambers Company LLC d/b/a DomainsToBeSeen.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center attempted formal notification of the Complaint to the Respondent on June 24, 2005. It does not appear that this notice was successfully delivered to Respondent by courier even though properly directed to the address provided by the registrant. Out of concern for whether Respondent had been given effective notice by e-mail under the Rules, the Complaint and commencement of proceedings were re-notified to Respondent on August 29, 2005. Respondent was given until September 19, 2005, to submit a response to the Center and was informed that, after that date, the Panel would proceed to render its decision. This notice appears to have been effective. The Respondent did not submit a response, nor did it request an extension of time to respond.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on August 15, 2005. 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 Blue Nile, Inc. (“Blue Nile” or “Complainant”) was founded in 1999 and now is the world’s largest online retailer of certified diamonds and fine jewelry.

Blue Nile’s primary website showcases 55,000 independently certified diamonds and more than 1,000 styles of fine jewelry, including rings, wedding bands, earrings, necklaces, pendants, bracelets and watches. Blue Nile’s net sales for the fiscal year ending January 2, 2005 were US$169.2 million. Blue Nile’s brand is recognized both in the United States and internationally. The company currently operates websites in the United States, Canada and the United Kingdom. Blue Nile has been widely acknowledged in the press for its successes.

Blue Nile conducts its retail diamond and fine jewelry business solely through its Internet website at <www.bluenile.com>. Blue Nile’s website contains a home page, education information about diamonds, gems and fine jewelry, and a search engine. The site offers customers the ability to design their own rings, necklaces and earrings. In addition, a significant portion of Blue Nile’s website provides information on each of the certified diamonds that are available for purchase.

Blue Nile owns numerous registrations for the BLUE NILE trademark in connection with diamonds, watches and jewelry and computerized online ordering services in the field of diamonds and fine jewelry, including the following:

Complainant has used and continues to use the mark BLUE NILE extensively.

On April 22, 2005, Respondent registered the <bluenilediamonds.com> domain name at issue. Sometime afterward, Respondent introduced its <bluenilediamonds.com> website which states, “looking for a gift to express your feelings? Find the best diamonds and jewellery [sic] available in the marketplace backed up with honest information.” Besides the use of the <bluenilediamonds.com> domain name, Respondent uses the phrase BLUE NILE DIAMONDS prominently on the home page of Respondent’s website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the <bluenilediamonds.com> domain name is confusingly similar to Complainant’s BLUE NILE trademark, in which Complainant has established rights. Respondent’s addition of the generic term “diamonds” to Complainant’s BLUE NILE trademark does not avoid or remedy the likelihood of confusion caused by the use of Complainant’s trademark. The adaptation of a recognized trademark in a Domain Name by addition or insertion of words does not avoid a finding of confusing similarity. 

Complainant contends that Respondent has no rights or legitimate interests in the <bluenilediamonds.com> domain name. Respondent is not a distributor or licensee of Blue Nile and has no relationship with Blue Nile whatsoever. Blue Nile has never given its permission or consent to Respondent to use Blue Nile’s trademark BLUE NILE or any other of Complainant's intellectual property. To the best of Blue Nile’s knowledge, Respondent does not own any trademark registration for or application to register the mark BLUE NILE or BLUE NILE DIAMONDS.

Respondent appears to be known by a trade name other than “Blue Nile.” Respondent identifies itself by the name “Mrs. Jello.” Alternatively, the copyright notice on the homepage of the “www.bluenilediamonds.com” website lists the copyright owner as DomainSpa, LLC. Further, the “www.bluenilediamonds.com” site suggests that it is using the trademarks of third parties in conducting its operations, noting on the home page that “some service marks, trademarks & images are the property of their respective owners.”

Complainant contends that Respondent registered and is using the <bluenilediamonds.com> domain name in bad faith. Complainant alleges that Respondent registered the domain name at issue to improperly suggest sponsorship by Complainant of Respondent’s website. Further, Respondent deliberately uses the <bluenilediamonds.com> domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the BLUE NILE mark as to the source, sponsorship, affiliation, or endorsement of its website.

In particular, the type of content which Respondent displays on the “www.bluenilediamonds.com” website demonstrates that Respondent is aware of the uses connected with the BLUE NILE trademark. The home page for the “www.bluediamonds.com” website contains links titled “Blue Nile  Diamonds,” “Diamonds For Sale,” “Diamonds,” “Watch,” “Engagement Ring,” “Wedding Band,” and “Italian Charm,” each of which relates to Complainant’s diamond and fine jewelry business. Further, Respondent is deemed to have constructive notice of Blue Nile’s trademark rights by virtue of Blue Nile’s federal trademark registrations for the BLUE NILE mark.

The <bluenilediamonds.com> domain name at issue contains Complainant’s well-known trademark, BLUE NILE, combined with the generic term “diamonds.” By its plain meaning, this domain name implies that someone who accesses this URL will find diamonds sold in connection with the Blue Nile brand. This implication is false and misleading. It has been found that when a generic term, such as the word “diamonds” here, compelling an association with the Complainant’s business, is added to the Complainant’s mark to form the subject domain name, the only possible conclusion is that the domain name was registered in bad faith.

It is clear that Respondent uses Complainant’s well-known trademark to attract Internet users to Respondent’s website and, by so doing, creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, Respondent registered and uses the domain name in bad faith.

Furthermore, Respondent’s bad faith is evident by his pattern of conduct in repeatedly using other’s misspelled trademarks to attract traffic to his websites, citing L.L. Bean, Inc. v. Mrs Jello, LLC, c/o Domain Admin, National Arbitration Forum (NAF) Case No. FA449421 (May 5, 2005).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Respondent has not responded to the Complaint, therefore the Panel first addresses the question of whether Respondent has been given adequate notice of the proceeding. The evidence of record supports that the Center sent the Complaint by courier service to the address shown in the registration data, as required, and that, at least as of August 29, 2005, the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules. The Panel thus concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding and that Respondent failed to submit a response by the appointed date of September 19, 2005.

Where the respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate.”

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) Respondent’s domain names have been registered and are being used in bad faith.

The Panel considers each element in order.

A. Identical or Confusingly Similar

Complainant has used its BLUE NILE mark since 1999 and owns numerous registrations of the BLUE NILE trade and service marks in the United States and internationally. Complainant clearly uses the BLUE NILE marks in connection with an on-line business selling diamonds and other fine jewelry.

Respondent’s domain name <bluenilediamonds.com> is confusingly similar to Complainant’s BLUE NILE mark. The two words “Blue Nile” are identical in both. Respondent’s addition of the generic term “diamonds” to Complainant’s trademark does not obviate the likelihood of confusion caused by the use of Complainant’s trademark, especially where, as here, the added generic term describes goods or services customarily associated with Complainant’s marks.  “Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’ 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition, § 23:50 (4^th ed. 1998).” Yahoo! Inc  v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195.

Numerous decisions under the Policy recognize this rule. “Precedent clearly supports the principle that the adaptation of a recognized trademark in a Domain Name by the . . . addition or insertion of . . . words or acronyms does not escape a finding of confusing similarity.” America Online, Inc., v. Yeteck Communication, Inc., WIPO Case No. D2001-0055, p. 5 (finding the domain name “aolcasino” to be confusingly similar to the AOL mark). See also Viacom International, Inc. v. Erwin Tan, WIPO Case No. D2001-1440 (The domain names <mtv-girl.com>, <mtv-girl.net> and <mtv-girl.org> are confusingly similar to the trademark MTV); Siebel Systems, Inc. v. Shoji Mathew, WIPO Case No. D2002-0607 (siebelusergroup.com confusingly similar to SIEBEL trademark); Carrefour S.A. v. Multigestiones Puertonorte S.L., WIPO Case No. D2000-0837 (<carrefour-group.com>, <carrefourgroup.com> and <newcarrefourgroup.com> confusingly similar to CARREFOUR trademark); Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (domain names such as <sonyacademy.com>, <sonycampus.com>, <sonycollege.com>, <worldsony.com>, and <dreamsony.com> are confusingly similar to SONY trademark); and Dell Computer Corporation v. Alex and Birgitta Ewaldsson, Case No. D2000-1087 (domain names such as <deldrivers.com> and <dellit.com> found confusingly similar to DELL trademark).

In the present case, the addition of the word “diamonds” to Complainant’s BLUE NILE mark does not detract or distinguish from, and indeed tends to enhance, the overall impression created by the dominant part of the domain name that that domain is associated with Complainant’s goods and services.

There can be little doubt that Respondent has intentionally created the potential for confusion. Respondent’s domain name attempts to divert a user trying to find or access Complainant’s website to Respondent’s website by using Complainant’s mark and adding to it a word descriptive of the principal product offered and sold by Complainant. The plain intent behind Respondent’s domain name is evidence of the confusing similarity between the domain name and Complainant’s mark.

The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s trade and service marks, and Complainant has therefore established the first element of its case.

B. Rights or Legitimate Interests

There is nothing in the existing record to suggest that Respondent in fact possesses any rights or legitimate interests in the domain name. The record, moreover, does contain positive evidence to the contrary in that Respondent is using the domain name to divert Internet users from Complainant’s website to its own website. While Respondent offers goods for sale on its website, the Panel cannot characterize this as a bona fide offering of goods or services, because it appears clear that Respondent has appropriated Complainant’s registered trademark relating to the sale of diamonds and other jewelry to divert potential customers of Complainant to Respondent’s website, which offers diamonds, including BLUE NILE diamonds, and other jewelry for sale. Such intentional diversion of traffic from Complainant’s website does not constitute a bona fide offering of goods or service by Respondent that would establish a legitimate interest in the domain names. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440; AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091.

Respondent has not responded to the Complaint and thus offers nothing to establish that it possesses any legitimate rights or interests in the domain name at issue. Considering that Complainant has made out a prima facie case, Respondent’s failure to answer permits the Panel to draw the inference that Respondent in fact has no legitimate rights or interests in its domain name. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.

Complainant has established the second element of its case.

C. Registered and Used in Bad Faith

In the Panel’s view, there is clear evidence that Respondent registered its domain name in bad faith. Respondent registered the domain name at issue more than five years after Complainant began using its service mark and registered its own domain name and almost four years after Complainant obtained its first BLUE NILE trademark registration in the United States. See Sporty’s Farm, 202 F.3d at 498. Respondent is deemed to have constructive notice of Blue Nile’s trademark rights by reason of Blue Nile’s federal registrations for the BLUE NILE trademark. Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 (Respondent had constructive knowledge of trademark rights in Complainant’s Mark based upon Microsoft’s federal trademark registrations).

It has been found that when generic terms compelling an association with the Complainant’s business are added to the Complainant’s mark to form the subject domain name, the only possible conclusion is the bad faith registration of that domain name. Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (“because the [subject] Domain Names comprise generic terms that compel an association with Complainants’ business, this Panel can only conclude they were registered in bad faith. These domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith.’”) Here, Respondent has added the generic term “diamonds” , commonly and directly associated with Complainant’s business, to the words of Complainant’s registered trade and service marks.

The only reasonable inference to be drawn from the facts is that Respondent registered its domain name with full knowledge of Complainant’s mark and with the intent to create its own confusingly similar domain name to divert traffic to Respondent’s own unrelated website for commercial gain. Sporty’s Farm, 202 F.3d at 498; Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440. The Panel thus concludes that Respondent registered the domain name in bad faith.

Under paragraph 4(b)(iv) of the Policy, there is evidence of bad faith use of a domain name where the respondent is using the domain name intentionally to “attract for commercial gain, Internet users to [its] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [respondent’s] website . . ..” Respondent is doing that here.

Respondent is using a domain name that is confusingly similar to Complainant’s BLUE NILE trademark to attract and divert Internet users to Respondent’s unrelated website where it offers goods similar to those sold by Complainant and even suggests that it sells BLUE NILE diamonds. This intentional creation and use of confusion as to the source and affiliation of goods and services constitutes bad faith use of the domain name on the part of Respondent. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440; AT&T Corp. v. John Zuccarini d/b/a Rave Club Berlin, WIPO Case No. D2001-1503; AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091. It is a plainly reasonable inference from the facts here that Respondent is doing what it is doing for its own commercial gain. Respondent, in any event, has not come forward to rebut the inference.

This Panel further notes that Respondent has been cited elsewhere for bad faith use of others’ trademarks to attract traffic to its websites. L.L. Bean, Inc.. v. Mrs Jello, LLC, NAF Case No. FA449421.

The Panel thus concludes that Complainant has established that the challenged domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bluenilediamonds.com> be transferred to the Complainant.

John R. Keys, Jr.
Sole Panelist

Date: September 26, 2005