Vistaprint USA, Inc. v. domainnamesbyproxy.com Inc.
Claim Number: FA0909001284621
Complainant is Vistaprint USA, Inc. (“Complainant”), represented by Jessica
Costa, of Vistaprint
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <vkstaprint.com>, <vistqprint.com>, <vistzprint.com>, <vistapfint.com>, <vistaprknt.com>, <vistapribt.com>, and <vistaprijt.com>, registered with Godaddy.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <vkstaprint.com>, <vistqprint.com>, <vistzprint.com>, <vistapfint.com>, <vistaprknt.com>, <vistapribt.com>, and <vistaprijt.com> domain names are confusingly similar to Complainant’s VISTAPRINT mark.
2. Respondent does not have any rights or legitimate interests in the <vkstaprint.com>, <vistqprint.com>, <vistzprint.com>, <vistapfint.com>, <vistaprknt.com>, <vistapribt.com>, and <vistaprijt.com> domain names.
3. Respondent registered and used the <vkstaprint.com>, <vistqprint.com>, <vistzprint.com>, <vistapfint.com>, <vistaprknt.com>, <vistapribt.com>, and <vistaprijt.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
On
Respondent, domainnamesbyproxy.com
Inc., registered the <vistaprknt.com>
and <vistaprijt.com> domain names on
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 submitted evidence of the registration of
its mark with the USPTO. 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
The seven disputed domain names each vary from Complainant’s
VISTAPRINT mark by replacing one letter of the mark with a letter that is near
the replaced letter on the standard QWERTY keyboard and by adding the generic
top-level domain (“gTLD”) “.com.” For
example, the <vkstaprint.com>
domain name replaces the letter “i” in Complainant’s mark with the letter “k,”
which is directly under the letter (“i”) used in Complainant’s mark. 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
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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
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 “domainnamesbyproxy.com Inc.”
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
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 in the confusingly similar disputed
domain names 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.
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
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
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 by leading these
users to Complainant’s legitimate website and collecting affiliate fees. The Panel finds this is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Deluxe Corp. v.
Respondent began
registering the disputed domain names on
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
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 <vkstaprint.com>, <vistqprint.com>, <vistzprint.com>, <vistapfint.com>, <vistaprknt.com>, <vistapribt.com>, and <vistaprijt.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: 11-02-2009
National
Arbitration Forum
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