VistaPrint USA, Inc. v. Admin Billing
Claim Number: FA0905001264653
Complainant is VistaPrint
USA, Inc. (“Complainant”), represented by Jessica Costa of VistaPrint USA, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 22, 2009; the National Arbitration Forum received a hard copy of the Complaint May 22, 2009.
On May 26, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 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@vistaprintt.com, postmaster@vvistaprint.com, postmaster@vistaprinty.com, postmaster@bistaprint.com, postmaster@vistaprinnt.com, postmaster@vistaprinmt.com, postmaster@vistapprint.com, postmaster@visdtaprint.com, postmaster@viostaprint.com, postmaster@vistaaprint.com, postmaster@vistaprrint.com, postmaster@vbistaprint.com, postmaster@vistapriont.com, and postmaster@cvistaprint.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. A subsequent email about the matter did not qualify as a Response and offered nothing on the merits but it did relate an agreement to transfer. Given the lack of a Response pursuant to the Rules, the Panel finds it appropriate to reach the merits of the Complaint.
On June 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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. The disputed domain names that Respondent registered, <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com> are confusingly similar to Complainant’s VISTAPRINT mark.
2. Respondent has no rights to or legitimate interests in the <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com> domain names.
3. Respondent registered and used the <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an online supplier of graphic design services and customized printing products. Complainant began using the VISTAPRINT mark in 1999 and holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the VISTAPRINT mark (Reg. No. 2,433,418 issued in March 6, 2001).
Respondent registered the <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com> domain names May 25, 2004. The disputed domain names resolve to Respondent’s website and then automatically redirect Internet users to Complainant’s website.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights under Policy ¶ 4(a)(i) in the VISTAPRINT mark through its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of 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 names are confusingly similar to Complainant’s VISTAPRINT mark
except for simple misspellings such as the omission, addition or substitution
of letters and the addition of the generic top-level domain “.com.” The Panel finds that such misspellings do not
differentiate the disputed domain names from Complainant’s mark and the
addition of a top-level domain is irrelevant under Policy ¶ 4(a)(i). Thus, the Panel
finds the disputed domain names are confusingly similar to Complainant’s
VISTAPRINT mark pursuant to Policy ¶ 4(a)(i). See Internet Movie
Database, Inc. v. Temme,
FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the
respondent’s disputed domain names were confusingly similar to the
complainant’s mark because the disputed domain names were common misspellings
of the mark involving keys that were adjacent to the current keys comprising
the complainant’s mark); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that
the respondent's <marrriott.com> domain name was confusingly
similar to the complainant's MARRIOTT mark); see also Hallelujah Acres, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain names. When Complainant makes a prima facie case, Respondent must prove that it does have rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant established a prima facie case. Responded failed to submit a response, therefore, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); 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.”).
The <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>,
<vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>,
<visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>,
<vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>,
and <cvistaprint.com> domain names each resolve to Respondent’s
website before automatically redirecting to Complainant’s website. Complainant alleged that Respondent profits
from this use through the receipt of affiliation or click-through fees. Respondent’s use of domain names that are
confusingly similar to Complainant’s VISTAPRINT mark for this purpose is not a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain names under Policy ¶
4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO
Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name
to generate revenue via advertisement and affiliate fees is not a bona fide
offering of good or services); see also
Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees).
Complainant asserts that Respondent is not authorized to use the VISTAPRINT mark. Respondent has offered no evidence suggesting that Respondent is commonly known by the <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com> domain names. The WHOIS information identifies Respondent as “Admin Billing.” The Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
In addition, Respondent’s use of the disputed domain names amounts to typosquatting. The Panel finds that Respondent’s use of
domain names that are common misspellings of the VISTAPRINT mark to redirect
Internet users seeking Complainant’s website is evidence Respondent lacks
rights and legitimate interests in the disputed domain names under 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 Microsoft Corp. v. Domain Registration
Therefore, the Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent is using the <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>,
<bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>,
<vistapprint.com>, <visdtaprint.com>, <viostaprint.com>,
<vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>,
<vistapriont.com>, and <cvistaprint.com> domain names
to redirect Internet users interested in Complainant’s products and services
through Respondent’s website for the commercial advantage of Respondent. The Panel finds such use of the disputed
domain names supports findings of bad faith registration and use under Policy ¶
4(b)(iv). See Sports
Furthermore, Respondent has engaged in typosquatting through its use of the <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com> domain names, which are common misspellings of Complainant’s VISTAPRINT mark. Therefore, the Panel finds Respondent’s practice of typosquatting supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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).”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
The Panel finds that Complainant satisfied the elements of ICANN Policy 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vistaprintt.com>, <vvistaprint.com>, <vistaprinty.com>, <bistaprint.com>, <vistaprinnt.com>, <vistaprinmt.com>, <vistapprint.com>, <visdtaprint.com>, <viostaprint.com>, <vistaaprint.com>, <vistaprrint.com>, <vbistaprint.com>, <vistapriont.com>, and <cvistaprint.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 14, 2009.
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