national arbitration forum

 

DECISION

 

Vistaprint USA, Inc. v. Eyal Hay Moshe

Claim Number: FA0909001283169

 

PARTIES

Complainant is Vistaprint USA, Inc. (“Complainant”), represented by Jessica Costa, of Vistaprint USA, Inc., Massachusetts, USA.  Respondent is Eyal Hay Moshe (“Respondent”), Israel.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <cistaprint.com>, <v8staprint.com>, <vis5aprint.com>, <vis6aprint.com>, <vishaprint.com>, <visfaprint.com>, <vistwprint.com>, <vistxprint.com>, <vista0rint.com>, <v9staprint.com>, <vlstaprint.com>, <vistalrint.com>, <vistap4int.com>, <vistap5int.com>, <vistapgint.com>, <vistapdint.com>, <vistapr8nt.com>, <vistapr9nt.com>, <vistaprlnt.com>, <vistaprin6.com>, <vistaprinh.com>, and <vistaprinf.com>, registered with Dynadot, Llc.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 9, 2009.

 

On September 9, 2009, Dynadot, Llc confirmed by e-mail to the National Arbitration Forum that the <cistaprint.com>, <v8staprint.com>, <vis5aprint.com>, <vis6aprint.com>, <vishaprint.com>, <visfaprint.com>, <vistwprint.com>, <vistxprint.com>, <v9staprint.com>, <vlstaprint.com>, <vistalrint.com>, <vistap4int.com>, <vistap5int.com>, <vistapgint.com>, <vistapdint.com>, <vistapr9nt.com>, <vistaprlnt.com>, <vistaprin6.com>, and <vistaprinh.com> domain names are registered with Dynadot, Llc and that Respondent is the current registrant of the names.  Dynadot, Llc has verified that Respondent is bound by the Dynadot, Llc 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 September 14, 2009, Dynadot, Llc confirmed by e-mail to the National Arbitration Forum that the <vista0rint.com>, <vistapr8nt.com>, and <vistaprinf.com> domain names are registered with Dynadot, Llc and that Respondent is the current registrant of the names.  Dynadot, Llc has verified that Respondent is bound by the Dynadot, Llc 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 September 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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@cistaprint.com, postmaster@v8staprint.com, postmaster@vis5aprint.com, postmaster@vis6aprint.com, postmaster@vishaprint.com, postmaster@visfaprint.com, postmaster@vistwprint.com, postmaster@vistxprint.com, postmaster@vista0rint.com, postmaster@v9staprint.com, postmaster@vlstaprint.com, postmaster@vistalrint.com, postmaster@vistap4int.com, postmaster@vistap5int.com, postmaster@vistapgint.com, postmaster@vistapdint.com, postmaster@vistapr8nt.com, postmaster@vistapr9nt.com, postmaster@vistaprlnt.com, postmaster@vistaprin6.com, postmaster@vistaprinh.com, and postmaster@vistaprinf.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <cistaprint.com>, <v8staprint.com>, <vis5aprint.com>, <vis6aprint.com>, <vishaprint.com>, <visfaprint.com>, <vistwprint.com>, <vistxprint.com>, <vista0rint.com>, <v9staprint.com>, <vlstaprint.com>, <vistalrint.com>, <vistap4int.com>, <vistap5int.com>, <vistapgint.com>, <vistapdint.com>, <vistapr8nt.com>, <vistapr9nt.com>, <vistaprlnt.com>, <vistaprin6.com>, <vistaprinh.com>, and <vistaprinf.com> domain names are confusingly similar to Complainant’s VISTAPRINT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cistaprint.com>, <v8staprint.com>, <vis5aprint.com>, <vis6aprint.com>, <vishaprint.com>, <visfaprint.com>, <vistwprint.com>, <vistxprint.com>, <vista0rint.com>, <v9staprint.com>, <vlstaprint.com>, <vistalrint.com>, <vistap4int.com>, <vistap5int.com>, <vistapgint.com>, <vistapdint.com>, <vistapr8nt.com>, <vistapr9nt.com>, <vistaprlnt.com>, <vistaprin6.com>, <vistaprinh.com>, and <vistaprinf.com> domain names.

 

3.      Respondent registered and used the <cistaprint.com>, <v8staprint.com>, <vis5aprint.com>, <vis6aprint.com>, <vishaprint.com>, <visfaprint.com>, <vistwprint.com>, <vistxprint.com>, <vista0rint.com>, <v9staprint.com>, <vlstaprint.com>, <vistalrint.com>, <vistap4int.com>, <vistap5int.com>, <vistapgint.com>, <vistapdint.com>, <vistapr8nt.com>, <vistapr9nt.com>, <vistaprlnt.com>, <vistaprin6.com>, <vistaprinh.com>, and <vistaprinf.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

On March 6, 2001, the United States Patent and Trademark Office (“USPTO”) issued Complainant, Vistaprint USA, Inc., a registration of the VISTAPRINT mark (Reg. 2,433,418) for use in connection with its printing services business.

 

Respondent, Eyal Hay Moshe, registered the <cistaprint.com>, <v8staprint.com>, <vis5aprint.com>, <vis6aprint.com>, <vishaprint.com>, <visfaprint.com>, <vistwprint.com>, <vistxprint.com>, <vista0rint.com>, <v9staprint.com>, <vlstaprint.com>, <vistalrint.com>, <vistap4int.com>, <vistap5int.com>, <vistapgint.com>, <vistapdint.com>, <vistapr8nt.com>, <vistapr9nt.com>, <vistaprlnt.com>, <vistaprin6.com>, <vistaprinh.com>, and <vistaprinf.com> domain names on June 12, 2009.  The disputed domain names redirect Internet users to Complainant’s website, attaching an affiliate ID number that Complainant uses to calculate referral commissions.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the VISTAPRINT mark under Policy ¶ 4(a)(i) by registering it with the USPTO (Reg. 2,433,418 issued March 6, 2001).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).

 

The twenty-two disputed domain names each vary from Complainant’s VISTAPRINT mark by replacing one letter of the mark with a letter or number that is near the replaced letter on the standard QWERTY keyboard and by adding the generic top-level domain (“gTLD”) “.com.”  For example, the <cistaprint.com> domain name replaces the letter “v” in Complainant’s mark with the letter “c,” which is directly to the left of the letter used in Complainant’s mark.  Another example is the <v8staprint.com> domain name, which replaces the first letter “i” in Complainant’s markwith the number 8, which is located above the letter “i” on a standard QWERTY keyboard. The Panel finds that the disputed domain names are confusingly similar to Complainant’s VISTAPRINT mark under 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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).”). 

 

Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the VISTAPRINT mark, and the WHOIS information identifies Respondent as “Eyal Hay Moshe.”  The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names.  Thus, the Panel finds that Respondent is not commonly known by any of the disputed domain names and has therefore not established rights or legitimate interests in 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Complainant’s affiliate program compensates other domain name holders who direct Internet users to Complainant’s website.  If the Internet user purchases something from Complainant, then the affiliate receives a commission.  Complainant argues that Respondent is using typographical errors to redirect Internet users to Complainant’s website and attempting to profit from it through Complainant’s affiliate program.  The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) respectively.  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy  ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program); 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).

 

Additionally, typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who commit those typographical errors.  The disputed domain names take advantage of Internet users who mistype Complainant’s VISTAPRINT mark.  The Panel finds that Respondent engaged in typosquatting by misspelling Complainant’s mark in the disputed domain names.  This is further evidence that Respondent does not have rights or 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 the 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 Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is attempting to profit by using domain names that are confusingly similar to Complainant’s VISTAPRINT mark.  The disputed domain names resolve to Complainant’s website, so Internet users could easily be confused as to Complainant’s control or affiliation with the disputed domain names.  Respondent is attempting to profit from this confusion and Internet users mistyping Complainant’s mark.  The Panel finds this is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See 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); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

Respondent registered the disputed domain names on June 12, 2009, more than eight years after Complainant had established rights in the VISTAPRINT mark.  The Panel finds that Respondent’s engagement in typosquatting is evidence that Respondent registered and is using the <cistaprint.com>, <v8staprint.com>, <vis5aprint.com>, <vis6aprint.com>, <vishaprint.com>, <visfaprint.com>, <vistwprint.com>, <vistxprint.com>, <vista0rint.com>, <v9staprint.com>, <vlstaprint.com>, <vistalrint.com>, <vistap4int.com>, <vistap5int.com>, <vistapgint.com>, <vistapdint.com>, <vistapr8nt.com>, <vistapr9nt.com>, <vistaprlnt.com>, <vistaprin6.com>, <vistaprinh.com>, and <vistaprinf.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).

 

Complainant asserts that Respondent is acting in violation of the affiliate program by registering domain names based on the mark in an attempt to profit from commissions.  The Panel finds that this action is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” and therefore registered and used the domain name in bad faith).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <cistaprint.com>, <v8staprint.com>, <vis5aprint.com>, <vis6aprint.com>, <vishaprint.com>, <visfaprint.com>, <vistwprint.com>, <vistxprint.com>, <vista0rint.com>, <v9staprint.com>, <vlstaprint.com>, <vistalrint.com>, <vistap4int.com>, <vistap5int.com>, <vistapgint.com>, <vistapdint.com>, <vistapr8nt.com>, <vistapr9nt.com>, <vistaprlnt.com>, <vistaprin6.com>, <vistaprinh.com>, and <vistaprinf.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  November 2, 2009

 

 

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