Complainant is BJ’s Wholesale Club, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
Respondent is Brandon Bomberg, Twin Cities Holdings, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 22, 2020, 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 received an email communication from Respondent on January 24, 2020. 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 January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Center received an additional email communication from Respondent on February 3, 2020. On February 17, 2020, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with panel appointment. The Center appointed Anne Gundelfinger as the sole panelist in this matter on February 20, 2020. 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, consumer electronics, computers and related goods, office supplies, homewares and furnishings, sporting goods, toys, health and beauty products, and jewelry. Complainant has been in operation since the mid-1980s and now operates more than 200 clubs in 17 states in the eastern and southern United States. It has over USD 12 billion in revenues and over 25,000 employees. Among its primary competitors are Costco Wholesale and Walmart’s Sam’s Club. Complainant owns three United States federal trademark registrations for its BJ’S WHOLESALE CLUB marks (in various formats) dating from 1991 to 2004, namely Reg. Nos. 2,910,211, 1,707,159, and 1,643,993 (hereafter the “Marks”). All three registrations have achieved “incontestable” status. Complainant further owns the domain name The disputed domain names were all registered on December 11, 2019, by the same registrant, Respondent Brandon Bomberg, Twin Cities Holdings, and all are currently parked with GoDaddy displaying pay-per-click (“PPC”) links to Costco Warehouse and Sam’s Club websites, among others. 5. Parties’ Contentions A. Complainant Complainant states that it commenced use of the BJ’S WHOLESALE CLUB mark in the mid-1980s for its membership-based warehouse club that sells a wide range of consumer goods and services through retail locations and online, and further contends that it has established significant fame and goodwill in its Marks. Complainant states that it discovered the disputed domain names through its trademark policing efforts and that, at the time of discovery, all the disputed domain names redirected to Respondent’s Website. Respondent’s Website then displayed, and currently displays, a variety of content relating to urban renewal/revival and housing in Minneapolis along with a mix of religious and philosophical content. Upon discovery of the disputed domain names, Complainant sent a letter on December 24, 2020, to Respondent asking Respondent to cease all use of the disputed domain names and to transfer them to Complainant. Respondent immediately responded to Complainant’s demand with an email making a number of different points including the following: - that there are other Fortune 500 companies “associated” with Respondent’s Website and that Respondent had sold domain names to at least one other Fortune 500 company; Complainant argues that the disputed domain names are confusingly similar to its Marks, that it has not authorized Respondent to use the Marks or to register the disputed domain names, and that Respondent therefore has no rights or legitimate interests in the disputed domain names. Complainant makes several arguments in support of its contention that Respondent registered and is using the disputed domain names in bad faith, including the following: (a) that Complainant’s Marks are famous and well-known, (b) that Respondent was attempting “…to use trademark infringement to unlawfully coerce Complainant into a business meeting to pitch Respondent’s real estate development plan”, and (c) that Respondent offered to sell the disputed domain names to Complainant, although without naming a price. B. Respondent Respondent did not file a formal response in this proceeding. He did however send two short emails to the Center, one on January 24, 2020, asking for a phone call, and one on February 3, 2020, stating as follows: “My domains in question were not acquired in bad faith or with any malicious intent. The current use of these domains is intended for educational use. I request use of the domains in the name of Yahweh, Elohim, Adonai, and Yeshua. Paragraph 4(a) of the Policy requires that Complainant prove the following three elements in order to be successful in this action: (i) the disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar Complainant has long and well-established common law and federally registered trademark rights in the United States in the BJ’S WHOLESALE CLUB Marks, which have been widely used in the eastern and southern United States for over three decades. The disputed domain names all wholly incorporate the BJ’S WHOLESALE CLUB trademark in its entirety and differ only in the use of different generic Top-Level Domains (“gTLDs”), as well as the use of a hyphen in several of the domain names. As in other cases of minor misspellings of a complainant’s mark (“typosquatting”), the addition of the hyphen in several of the disputed domain names is immaterial. See, section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. Similarly, the addition of various different gTLDs is irrelevant as it is a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. Accordingly, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s BJ’S WHOLESALE CLUB marks, and that the first element of the test is satisfied. B. Rights or Legitimate Interests It is well-established that a complainant needs only to present a prima facie case in relation to the second element of the test, and that once such a showing is made, the burden shifts to the respondent to prove that it possesses rights or legitimate interests in the disputed domain name. See Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith,WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205. Here, Complainant has demonstrated long and well-established rights in the BJ’S WHOLESALE CLUB Marks and has credibly asserted that it has granted no license or other authorization to Respondent to use the Marks or the disputed domain names. Respondent has filed no formal response in this proceeding and has not otherwise provided any evidence in support of any legitimate interest. In its February 3, 2020 email to the Center, Respondent claimed that the “current use” of the disputed domain names “is intended for educational use”. However, there is no evidence in support of this claim, and indeed the disputed domain names are currently parked with GoDaddy displaying PPC links to Complainant’s competitors. This is not educational use, and is neither a legitimate noncommercial or fair use. Accordingly, the Panel finds that Complainant has made a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain names and Respondent has not successfully rebutted that prima facie showing. The Panel therefore concludes that Complainant has met its burden under the second element of the test. C. Registered and Used in Bad Faith The third element of the test requires a showing that the disputed domain names have been registered and used in bad faith. Respondent argued in its February 3, 2020 email to the Center that the disputed domain names “were not acquired in bad faith or with any malicious intent”. While the Panel is willing to grant the Respondent the benefit of the doubt that Respondent meant no harm to anyone, the Panel nevertheless finds that the disputed domain names have been registered and are being used in bad faith within the meaning of the Policy. The disputed domain names were registered at a time when the reputation of Complainant and its Marks had been well-established for several decades. It is difficult to imagine that Respondent was unaware of Complainant’s Marks, and the fact that Respondent registered 11 domain names wholly comprised of Complainant’s Marks is compelling evidence that Respondent was well aware of Complainant’s Marks and intentionally copied them. Moreover, the only reasonable interpretation of the correspondence between the parties is that Respondent knowingly targeted Complainant’s Marks in the hopes of attracting the attention of Complainant. In this regard, it appears that Respondent hoped to secure a business meeting with Complainant’s investor relations or real estate department by means of attracting the attention of Complainant’s trademark protection function, so as to then pitch Complainant on participating in Respondent’s real estate development in some fashion, perhaps by putting a grocery store in the development. Moreover, Respondent’s response to Complainant’s demand letter strongly suggests that Respondent was targeting other brand owners in the same fashion and with the same goals, suggesting a pattern of such conduct by Respondent. Respondent’s conduct does not fall obviously and squarely into the examples of circumstances indicating bad faith found in paragraph 4(b) of the Policy. However, these examples are non-exclusive and are intended to be illustrative only – it is well settled that bad faith has occurred where a respondent takes “unfair advantage” of a complainant’s mark and that a wide range of conduct can meet this threshold. See, section 3.1 of the WIPO Overview 3.0. The Panel is not aware of other UDRP cases precisely analogous to the facts of this case, although several cases are highly instructive. In Hertz System, Inc. v. Curtis Treadwell,WIPO Case No. D2012-0933, bad faith was found where the respondent registered the domain name As in the foregoing cases, what is clear in this case is that Respondent targeted Complainant and registered the disputed domain names to secure, through the back door, a meeting and potential business advantage that he would not have been able to secure by forthrightly knocking on the front door. This is not honest business dealing and falls within conduct that takes “unfair advantage” of Complainant’s Marks. Accordingly, on the evidence as a whole, the Panel finds that the disputed domain names were registered primarily for the purpose of selling, renting or otherwise transferring them to Complainant in return for some form of “valuable consideration,” in this case the opportunity to pitch his real estate development project to Complainant. The “valuable consideration” to which paragraph 4(b)(i) of the Policy refers need not be monetary but can include the potentially valuable opportunity to pitch a business idea. See, Virgin Enterprises Limited v. Simon Thompson,WIPO Case No. D2014-0266. In addition, Respondent did offer to sell the disputed domain names to Complainant for an unspecified price and had, by his own admission, done the same with other companies. And Respondent currently has the disputed domain names parked displaying PPC links to the websites of Complainant’s competitors Sam’s Club and Costco Wholesale. All of this conduct is further evidence of bad faith registration and use. See, section 3.1 of the WIPO Overview 3.0; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Owens Corning v. NA,WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396. Accordingly, the Panel concludes that all of the disputed domain names were registered and have been used in bad faith, and that the third element of the test is satisfied. 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 disputed domain names Anne Gundelfinger
- that Respondent’s Website has gained over 10,000 views and that only “about eight of the fortune 500 companies associated with my site have asked me to take it down”;
- that Respondent has a real estate development that needs a grocery store on its first floor;
- that Respondent is confident that he will be able to get “…a word in with investor relations or the real estate department within these firms, even if my means of entrance is through the trademark protection division”; and
- that Respondent has stopped redirecting the disputed domain names to Respondent’s Website and is willing to sell the disputed domain names to Complainant, the proceeds from which Respondent would give to a local church.
brandon bomberg
[...]@aol.com” 6. Discussion and Findings
Sole Panelist
Date: March 2, 2020
Full & Egal Universal Law Academy