VistaPrint USA, Inc. v. Electric Attic
Claim Number: FA0904001258624
Complainant is VistaPrint USA, Inc. (“Complainant”), represented by Jessica Costa, of VistaPrint USA, Inc., Massachusetts, USA. Respondent is Electric Attic (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>, <vistaprunt.com>, <vistapront.com>, <viistaprint.com>, <istaprint.com>, <visa-print.com>, and <vista-pint.com>, registered with Wild West Domains, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 21, 2009.
On April 24, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>, <vistaprunt.com>, <vistapront.com>, <viistaprint.com>, <istaprint.com>, <visa-print.com>, and <vista-pint.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 20, 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@vidtaprint.com, postmaster@vustaprint.com, postmaster@vostaprint.com, postmaster@vistaprunt.com, postmaster@vistapront.com, postmaster@viistaprint.com, postmaster@istaprint.com, postmaster@visa-print.com, and postmaster@vista-pint.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>, <vistaprunt.com>, <vistapront.com>, <viistaprint.com>, <istaprint.com>, <visa-print.com>, and <vista-pint.com> domain names are confusingly similar to Complainant’s VISTAPRINT mark.
2. Respondent does not have any rights or legitimate interests in the <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>, <vistaprunt.com>, <vistapront.com>, <viistaprint.com>, <istaprint.com>, <visa-print.com>, and <vista-pint.com> domain names.
3. Respondent registered and used the <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>, <vistaprunt.com>, <vistapront.com>, <viistaprint.com>, <istaprint.com>, <visa-print.com>, and <vista-pint.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VistaPrint USA,
Inc., is a leading online supplier of graphic design services and customized
printing products. Complainant has been
continuously using its VISTAPRINT mark since 1999 in connection with its
printing and customized printing services.
Complainant holds a registration of its VISTAPRINT mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,433,418 issued March
6, 2001).
Respondent registered the <vistaprunt.com> and <vistapront.com> domain names on October 12, 2003, the <vustaprint.com>, <vostaprint.com>, and <istaprint.com> domain names on November 6, 2003, the <visa-print.com> and <vista-pint.com> domain names on January 25, 2004, the <viistaprint.com> domain name on November 25, 2004, and the <vidtaprint.com> domain name on February 25, 2005. All of the disputed domain names immediately resolve to an intermediate website, which then automatically redirects to Complainant’s website with an attached referrer identification.
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 that Complainant has sufficiently established rights in the VISTAPRINT mark pursuant to Policy ¶ 4(a)(i) because it holds a registration of the mark with the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
All of Respondent’s <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>, <vistaprunt.com>, <vistapront.com>, <viistaprint.com>, <istaprint.com>, <visa-print.com>, and <vista-pint.com> domain names contain common misspellings of Complainant’s VISTAPRINT mark, differing from Complainant’s mark by only one letter. In addition, the <visa-print.com> and <vista-pint.com> domain names add a hyphen to the misspelled mark. All of the disputed domain names also add the generic top-level (“gTLD”) “.com.” The Panel finds that none of these alterations to Complainant’s VISTAPRINT mark sufficiently distinguish any of the disputed domain names from Complainant’s mark. Thus, the Panel finds that all of the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must initially make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
All of Respondent’s disputed domain names immediately resolve to an intermediate website, which then automatically redirects Internet users to Complainant’s website with an attached referrer identification. The Panel infers that Respondent receives a referral fee for this redirection. Thus, the Panel finds that Respondent’s redirection for a fee does not represent 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 Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)); see also Sports Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat. Arb. Forum Jan. 9, 2003) (finding that registering a domain name which differs by one letter from the complainant’s commercial website, and using that domain name to redirect Internet consumers to the complainant’s website as a part of the complainant’s affiliate program is not a bona fide offering of goods or services nor a noncommercial use of the domain name).
Furthermore, Respondent is listed in the WHOIS information
as “Electric Attic,” which does not
indicate that Respondent is commonly known by the <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>,
<vistaprunt.com>, <vistapront.com>, <viistaprint.com>,
<istaprint.com>, <visa-print.com>, and <vista-pint.com>
domain names. Respondent has not offered any evidence to
indicate otherwise. The Panel finds that
Respondent is not commonly known by the disputed domain names under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
Finally, Respondent’s <vidtaprint.com>, <vustaprint.com>,
<vostaprint.com>, <vistaprunt.com>, <vistapront.com>,
<viistaprint.com>, <istaprint.com>, <visa-print.com>,
and <vista-pint.com> domain names take advantage of common misspellings of Complainant’s VISTAPRINT
mark. Accordingly, the Panel finds that
Respondent’s actions constitute typosquatting, which is evidence that
Respondent does not have rights or legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration Philippines, FA
877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the
<microssoft.com> domain name, the respondent had “engaged in
typosquatting, which provides additional evidence that [the] respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii).”); see also 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”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
All of Respondent’s <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>, <vistaprunt.com>, <vistapront.com>, <viistaprint.com>, <istaprint.com>, <visa-print.com>, and <vista-pint.com> domain names immediately resolve to an intermediate website, which then automatically redirects Internet users to Complainant’s website with an attached referrer identification, for which Respondent presumably receives a fee. The Panel finds that Respondent’s redirection for commecial gain using the disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
Finally, Respondent, via the disputed domain names, is taking advantage of common misspellings of Complainant’s mark by commercially gaining from the aforementioned redirection. Accordingly, the Panel finds that Respondent’s typosquatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see alsoBank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
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 <vidtaprint.com>, <vustaprint.com>, <vostaprint.com>, <vistaprunt.com>, <vistapront.com>, <viistaprint.com>, <istaprint.com>, <visa-print.com>, and <vista-pint.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 9, 2009
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