Vanity Shop of Grand Forks, Inc. v. Vanity.com, Inc.
Claim Number: FA1205001443435
Complainant is Vanity Shop of Grand Forks, Inc. (“Complainant”), represented by Antoinette M. Tease, Montana, USA. Respondent is Vanity.com, Inc. (“Respondent”), represented by Mike Rodenbaugh of RODENBAUGH LAW, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanity.com>, registered with GoDaddy.com, LLC.
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 Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2012; the National Arbitration Forum received payment on May 10, 2012.
On May 11, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <vanity.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’ s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vanity.com. Also on May 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 6, 2012.
On June 7, 2012 Additional Submission was received from Complainant. The Additional Submission complies with Supplemental Rule 7 and was considered by the Panel. On June 14, 2012 an Additional Submission was submitted by Respondent. This submission was received after the deadline for submissions, this submission is not in compliance with Supplemental Rule 7. However, it should be considered.
On June 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Nelson A. Diaz (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns numerous federal trademark registrations for the VANITY mark, issued by the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,780,669 registered July 6, 1993); Complainant and Respondent’s marks are virtually identical; Respondent has not been commonly known by the disputed domain name; Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; Respondent is using the disputed domain name to direct consumers to its own website offering information, blogs, chat groups, and social media links on beauty, fashion, health, and self topics;
Respondent is targeting the same consumer group as Complainant with its website; It is inconceivable that Respondent was not aware of Complainant when it acquired the disputed domain name; Respondent’s disputed domain name is causing confusion among consumers as to whether or not Respondent’s site is affiliated with Complainant; Respondent offered to sell the disputed domain name to Complainant for $1,000,000 after Complainant offered to purchase the domain name from Respondent; Respondent has attempted to attract Internet users to Respondent’s commercial website by creating a likelihood of confusion with Complainant’s marks.
B. Respondent
Respondent recently filed a civil action against Complainant in the United States District Court, Northern District of California for a declaratory judgment of non-infringement with respect to Respondent’s registration and use of the <vanity.com> domain name; Respondent’s filing of a civil complaint in District Court takes precedent over this proceeding; Respondent registered the disputed domain name in 1995, over seventeen years ago;
Respondent owns active and valid federal trademark registrations issued by the USPTO for the VANITY.COM mark (e.g., Reg. No. 3,720,766 registered December 8, 2009); Respondent’s <vanity.com> domain name is composed of a common English word, such that bad faith could not possibly have persisted; Respondent requests the Panel dismiss the Complaint without prejudice.
C. Additional Submissions
Allegations of using the domain name for interest contrary to that of the Complaint was informed and provided by the Complainant. Respondent Vanity.com, Inc. (“Respondent”) has given notice that it has filed a civil action against Complainant in the United States District Court, Northern District of California, for a declaratory judgment of non-infringement with respect to Respondent’s registration and use of the domain name at issue in this case. That action will dispose of the key issue in this case, whether Respondent has infringed Complainant’s trademark and/or committed cybersquatting via Respondent’s registration and use of the domain name since 1995. The UDRP decision will have no relevance to the court or the parties. Therefore this UDRP proceeding should be dismissed without prejudice.
The Respondent has violated ICANN’ s Uniform Domain Name Dispute Resolution Policy ¶ 4(b)(i), Policy ¶ 4(c)(iii) and Policy ¶ 4(b)(iv).
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."
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.
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the arbitration filing. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also Western Florida Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
The Panel chooses to proceed to a decision.
Complainant asserts that it registered the VANITY mark with the USPTO (e.g., Reg. No. 1,780,669 registered July 6, 1993). Complainant submits a printout from the USPTO website , which indicates that the mark is registered and that Complainant is the owner of the registration. Previous panels have determined that registering a mark with the USPTO confers upon the registrant defendable rights in the mark registered for the purposes of the Policy. 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 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). Therefore, the Panel determines that Complainant has established its rights in the VANITY mark pursuant to Policy ¶ 4(a)(i).
Complainant also asserts that its VANITY mark is virtually identical to Respondent’s mark. The Panel notes that Respondent’s <vanity.com> domain name includes the entire mark, while merely adding the generic top-level domain (“gTLD”) “.com.” Based upon that single change, the Panel concludes that Respondent’s disputed domain name is identical to Complainant’s VANITY mark under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has never been commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies the registrant of the <vanity.com> domain name as “Vanity.com, Inc.” The Panel also notes that there is no other evidence on record addressing this issue. Therefore, even though the Panel finds that the WHOIS information appears to indicate that Respondent is commonly known by the disputed domain name, the Panel concludes that Respondent is not commonly known by the <vanity.com> domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <vanity.com> domain name. Complainant states that Respondent resolves the <vanity.com> domain name to a commercial website offering information, blogs, chat groups, and social media links on beauty, fashion, health, and self topics. Nonetheless, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <vanity.com> domain name under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent offered to sell the <vanity.com> domain name to Complainant for $1,000,000. Complainant states that it initially offered to purchase the <vanity.com> domain name for $4,500-$10,000 dollars, based upon an appraisal of the domain name’s worth provided by GoDaddy. Based upon the offer made by Respondent, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the respondent offered the domain name for sale to the complainant for $125,000).
Complainant also alleges that Respondent’s disputed domain name is causing confusion among consumers as to whether or not Respondent’s site is affiliated with Complainant. Complainant states that Respondent has attempted to attract Internet users to Respondent’s commercial website by creating a likelihood of confusion with Complainant’s marks. The Panel agrees with Complainant’s allegations and statements, the Panel finds that Respondent registered and uses the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”)
Complainant posits that it is inconceivable that Respondent was not aware of Complainant when it acquired the disputed domain name. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the VANITY mark when it registered the disputed domain name, the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanity.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Nelson A. Diaz (ret.),Panelist
Dated: June 20, 2012
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