VistaPrint USA, Inc. v. Na a/k/a Jim Smith
Claim Number: FA0801001140112
Complainant is VistaPrint USA, Inc. (“Complainant”), represented by Joel
D. Leviton, of Fish & Richardson P.C., P.A., of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vistaprints.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@vistaprints.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vistaprints.com> domain name is confusingly similar to Complainant’s VISTAPRINT and VISTAPRINT.COM marks.
2. Respondent does not have any rights or legitimate interests in the <vistaprints.com> domain name.
3. Respondent registered and used the <vistaprints.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VistaPrint USA, Inc.,
is a leading supplier of graphic services and customized printing
products. Complainant began using the
VISTAPRINT mark in 1999 and has continuously used that mark in connection with
its printing and customized printing services since that time. Complainant owns a registration for the
VISTAPRINT mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,433,418 issued Mar. 6, 2001).
Complainant also owns a registration for the VISTAPRINT.COM mark with
the USPTO (Reg. No. 2,557,993 issued
Respondent, Na a/k/a Jim
Smith, registered the <vistaprints.com>
domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds Complainant’s registrations with the USPTO
for the VISTAPRINT and VISTAPRINT.COM marks sufficient to establish the
necessary rights required by Policy ¶ 4(a)(i). See Miller Brewing
The disputed domain name comprises the entirety of
Complainant’s VISTAPRINT mark, adding a letter “s” and the generic top-level
domain, “.com.” The Panel finds the
disputed domain name to be confusingly similar to Complainant’s mark pursuant
to Policy ¶ 4(a)(i).
See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3,
2006) (finding that the additions of the letter “s” and generic top-level
domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz>
domain names failed to avoid the confusing similarity between the domain names
and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also T.R. World Gym-IP, LLC v. D’Addio,
FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the
letter “s” to a registered trademark in a contested domain name is not enough
to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that the requirements under Policy ¶ 4(a)(i) were met by Complainant.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Because Complainant has alleged facts, which if proven true would support a finding of Respondent’s lack of rights or legitimate interests in the disputed domain name, Complainant has established a prima facie case. The burden now shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Despite this burden, Respondent has failed to respond to the
Complaint. Therefore, the Panel is well
within its authority to find that Respondent lacks all rights and legitimate
interests in the <vistaprints.com> domain name. See Vanguard
Group, Inc. v. Collazo, FA 349074
(Nat. Arb. Forum
Respondent is not now nor was ever commonly known by the disputed
domain name and Complainant states that it has never authorized Respondent to
incorporate the VISTAPRINT mark into any domain name. The information listed in the WHOIS database for
the <vistaprints.com> domain
name does not suggest Respondent was known by the disputed domain name. The Panel finds Respondent has no rights or
legitimate interests pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v.
Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding
that the respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also
Complainant contends, and Respondent does not deny, that
Respondent is a participant in Complainant’s affiliate program and has
registered the disputed domain names in an attempt to direct Internet users to
Complainant’s website in order to earn a commission through said program. The Panel finds such use to be neither a use
in connection with a bona fide
offering of goods and services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Sports
Moreover, Complainant contends that Respondent has engaged
in the practice of typosquatting by attempting to attract Internet users to
Respondent’s website by capitalizing on typing or spelling mistakes. The Panel finds that such use does not
qualify as a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or as a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum
The Panel finds that the requirements under Policy ¶ 4(a)(ii) were met by Complainant.
Complainant contends Respondent is using the <vistaprints.com> domain name,
which is confusingly similar to Complainant’s VISTAPRINTS mark, to take
advantage of Complainant’s affiliate program.
The Panel agrees that such use for commercial gain constitutes bad faith
on behalf of Respondent pursuant to Policy ¶ 4(b)(iv). See Deluxe Corp. v.
Complainant contends that Respondent has engaged in the
practice of typosquatting. According to Complainant,
the disputed domain name is a common mistyping of the VISTAPRINT and
VISTAPRINT.COM marks. The Panel finds
Respondent’s registration of a common misspelling of Complainant’s mark and
website address as evidence of an intent to profit on the goodwill of
Complainant’s mark and thus further demonstrates bad faith pursuant to Policy ¶
4(a)(iii). See Canadian
Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s web site or location’. . .
through Respondent’s persistent practice of ‘typosquatting’”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb.
Forum
The Panel finds that the requirements under Policy ¶ 4(a)(iii) were met by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vistaprints.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 10, 2008
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