VistaPrint USA, Inc. v. Host Master
Claim Number: FA0901001245307
Complainant is VistaPrint USA, Inc. (“Complainant”), represented by Jessica
Costa, of VistaPrint USA, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwvistaprint.com>, registered with Enom, 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 January 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2009.
On January 30, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwvistaprint.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. 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 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 24, 2009 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@wwwvistaprint.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 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorble Paul A. Dorf (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwvistaprint.com> domain name is confusingly similar to Complainant’s VISTAPRINT mark.
2. Respondent does not have any rights or legitimate interests in the <wwwvistaprint.com> domain name.
3. Respondent registered and used the <wwwvistaprint.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VistaPrint USA, Inc., is an online supplier of graphic design services and customized printing products. Complainant first registered its VISTAPRINT mark with the United States Patent and Trademark Office (“USPTO”) on March 6, 2001 (Reg. No. 2,433,418).
Respondent registered the disputed domain name on August 23, 2001. Respondent’s disputed domain name redirects Internet users to a website that displays advertisements for products unrelated to Complainant’s business.
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 has registered its VISTAPRINT mark with the USPTO. The Panel finds this registration adequately establishes Complainant’s rights in the VISTAPRINT mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Inertia 3D, FA 1118154 (Nat. Arb. Forum Jan. 18, 2008) (“Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s disputed domain name contains Complainant’s
mark with the additions of prefix “www” and the generic top-level domain
(“gTLD”) “.com.” The Panel finds
Respondent’s disputed domain name is a confusingly similar to Complainant’s
mark under Policy ¶ 4(a)(i). See
Dana Corp. v. $$$ This Domain Name Is For
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove it does have rights or legitimate interests in the disputed domain name. The Panel finds Complainant has presented an adequate prima facie case to support its allegations and Respondent has failed to respond to these proceedings. Therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends Respondent is not commonly known by the
disputed domain name. Respondent is
listed in the WHOIS information as “Host Master,” and Complainant asserts it
has not authorized Respondent to use its VISTAPRINT mark. Therefore, the Panel finds Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See
Respondent’s disputed domain name redirects Internet users
to a website that displays advertisements for products that are unrelated to
Complainant. Respondent presumably
receives compensation, likely in the form of referral fees, for this use. The Panel finds Respondent’s use of the disputed
domain name is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate or noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See
Constellation Wines
Furthermore, Complainant contends Respondent’s use of the disputed domain name constitutes typosquatting, which is further evidence Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel agrees with Complainant’s assessment and finds Respondent’s engagement in the practice of typosquatting evidences Respondent’s lack of rights or legitimate interests in the disputed domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends Respondent is using the confusingly
similar disputed domain name to profit by redirecting Internet users to a
website advertising unrelated services, presumably for receipt of referral fees. The Panel find Respondent is attempting to
profit from the goodwill Complainant has developed in its VISTAPRINT mark,
which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l
Inc. v. This Domain Name My Be For
Furthermore, Respondent engaged in typosquatting, which the Panel finds is also evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds 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 <wwwvistaprint.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 16, 2008
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