Lillian Vernon Corporation v. Jan Hansen a/k/a Jen
Douglas a/k/a Carla White a/k/a Chris White a/k/a
Claim Number: FA0801001141165
Complainant is Lillian Vernon Corporation (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <liillianvernon.com>, <lilliaanvernon.com>, <lillianveernon.com>, <lillianvenron.com>, <lillianvernnon.com>, <lillianvernoon.com>, <lillianverrnon.com>, <lillianvvernon.com>, and <lilliianvernon.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2008.
On January 30, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <liillianvernon.com>, <lilliaanvernon.com>, <lillianveernon.com>, <lillianvenron.com>, <lillianvernnon.com>, <lillianvernoon.com>, <lillianverrnon.com>, <lillianvvernon.com>, and <lilliianvernon.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 1, 2007, Enom, Inc. informed the National Arbitration Forum by e-mail that Respondent’s registration of another disputed domain name had expired or been deleted by the registrant during the course of this dispute. Complainant has renewed or restored the domain name under the same commercial terms as Respondent. Accordingly, that disputed domain name has been placed in registrar hold and registrar lock status, the WHOIS contact information for Respondent has been removed, and the WHOIS entry indicates that the domain name is subject to dispute pursuant to EDDP ¶ 3.7.5.7. That disputed domain name is no longer a subject of this dispute; however, it did cause a delay in the initiation of the instant proceedings.
On February 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 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@liillianvernon.com, postmaster@lilliaanvernon.com, postmaster@lillianveernon.com, postmaster@lillianvenron.com, postmaster@lillianvernnon.com, postmaster@lillianvernoon.com, postmaster@lillianverrnon.com, postmaster@lillianvvernon.com, and postmaster@lilliianvernon.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <liillianvernon.com>, <lilliaanvernon.com>, <lillianveernon.com>, <lillianvenron.com>, <lillianvernnon.com>, <lillianvernoon.com>, <lillianverrnon.com>, <lillianvvernon.com>, and <lilliianvernon.com> domain names are confusingly similar to Complainant’s LILLIAN VERNON mark.
2. Respondent does not have any rights or legitimate interests in the <liillianvernon.com>, <lilliaanvernon.com>, <lillianveernon.com>, <lillianvenron.com>, <lillianvernnon.com>, <lillianvernoon.com>, <lillianverrnon.com>, <lillianvvernon.com>, and <lilliianvernon.com> domain names.
3. Respondent registered and used the <liillianvernon.com>, <lilliaanvernon.com>, <lillianveernon.com>, <lillianvenron.com>, <lillianvernnon.com>, <lillianvernoon.com>, <lillianverrnon.com>, <lillianvvernon.com>, and <lilliianvernon.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lillian Vernon
Corporation, is a leading national catalog and online retailer that has
conducted business for 56 years.
Complainant markets personalized and celebratory gifts, household items,
and children’s and fashion accessory products.
Complainant holds a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for the
LILLAN VERNON mark (Reg. No. 1,285,663 issued July 10, 1984), and primarily
conducts business on its website located at the <lillianvernon.com>
domain name.
Respondent, an affiliate of Complainant, registered the <liillianvernon.com>, <lillianveernon.com>,
<lillianvernoon.com>, <lillianvvernon.com>, and <lilliianvernon.com>
domain names on November 24, 2003; the <lilliaanvernon.com>,
<lillianvenron.com>, and <lillianverrnon.com> domain
names on December 11, 2003; and the <lillianvernnon.com> domain
name on May 9, 2004. Respondent’s
disputed domain names all resolve to Complainant’s website located at the
<lillianvernon.com> domain name.
Preliminary Issue:
Multiple Respondents
The Panel must first consider whether these proceedings have been properly instituted. UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various asserted alleged aliases. Additionally, the National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in relation to the domain names it deems to be insufficiently linked to Respondent.
The disputed domain names all redirect Internet users to Complainant’s website located at the <lillianvernon.com> domain name. Moreover, the disputed domain names forward traffic through the same affiliate network account ID, as well as through a common URL. The WHOIS information for the disputed domain names are similar, including contact e-mail addresses at <sonarc.net>. Additionally, the disputed domain names were registered within a relatively short time frame of each other. The Panel finds that the listed aliases are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is justified and proper pursuant to Supplemental Rule 4(f)(ii). See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").
Primary Issue
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.
Complainant submitted sufficient evidence of its USPTO trademark registration for the LILLIAN VERNON mark to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).”); see also Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the complainant based upon its USPTO trademark registration).
Each of the disputed domain names contains Complainant’s mark with the addition or omission of a letter, or a transposition of two letters within the mark. These slight alterations to Complainant’s mark all constitute typosquatting since Respondent is attempting to take advantage of common typographical errors made by Internet users. Such alterations fail to sufficiently differentiate the disputed domain names from Complainant’s mark. Furthermore, the addition of the generic top-level domain “.com” is without relevance to this analysis since a top-level domain is required of all domain names. Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s LILLIAN VERNON mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Domain Registration Philipines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by
the disputed domain names, and the WHOIS information supports this
allegation. While Respondent is an
affiliate of Complainant, Complainant states that this agreement does not
authorize Respondent to use the LILLAN VERNON mark in a domain name. Therefore, the Panel finds that Respondent
cannot establish rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record); see also Instron
Corp. v. Kaner, FA 768859 (Nat. Arb.
Forum Sept. 21, 2006) (finding that the respondent was not commonly known by
the <shoredurometer.com> and <shoredurometers.com> domain names
because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip’t as the registrant of the disputed domain name and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute).
Respondent is using the
disputed domain names to redirect Interent users to Complainant’s website
located at the <lillianvernon.com> domain name. Respondent presumably receives a commission
for each referral. The Panel finds that
this does not constitute either a bona
fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Sports
Respondent’s use of the disputed domain names constitutes
typosquatting since Respondent is attempting to take advantage of common
typographical errors made by Internet users.
This further evidences Respondent’s lack of rights and legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also IndyMac
Bank F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
By using the disputed domain names to receive referral fees
for redirecting Internet users to Complainant’s website, Respondent is
profiting from the goodwill associated with Complainant’s mark. Such registration and use of the disputed
domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Sports
Respondent’s disputed domain names all slightly misspell
Complainant’s LILLIAN VERNON mark in various ways. In Dermalogica, Inc. v. Domains to Develop, FA
175201 (Nat. Arb. Forum Sept. 22, 2003), the
panel held that the <dermatalogica.com> domain name was a “simple
misspelling” of the complainant’s DERMALOGICA
mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii). Similarly, in
The Vanguard Group, Inc. v. IQ Mgmt. Corp.,
FA 328127 (Nat. Arb. Forum Oct. 28, 2004), the panel concluded that “[b]y
engaging in typosquatting, [r]espondent has registered and used the
<vanguard.com> domain name in bad faith pursuant to Policy ¶
4(a)(iii).” Like the domain names in Dermalogica and Vanguard, Respondent’s disputed domain names can be characterized as
typosquatting because Respondent is trying to benefit from potential
typographical errors made by Internet users.
Therefore, the Panel finds that Respondent registered and is using the disputed domain name
in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <liillianvernon.com>, <lilliaanvernon.com>, <lillianveernon.com>, <lillianvenron.com>, <lillianvernnon.com>, <lillianvernoon.com>, <lillianverrnon.com>, <lillianvvernon.com>, and <lilliianvernon.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 1, 2008
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