national arbitration forum

 

DECISION

 

Vera Bradley Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin

Claim Number: FA1206001447096

 

PARTIES

Complainant is Vera Bradley Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2012; the National Arbitration Forum received payment on June 4, 2012.

 

On June 16, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, <versbradley.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 June 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@verabadley.com, postmaster@verabrabley.com, postmaster@verabraddley.com, postmaster@verabradlely.com, postmaster@verabradlet.com, postmaster@verabraley.com, and postmaster@versbradley.com.  Also on June 26, 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.

 

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

 

On July 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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. 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

1.    Complainant is the owner of multiple trademark registrations for its VERA BRADLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,745,799 registered Jan. 12, 1993).

2.    Respondent’s <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names are confusingly similar to Complainant’s VERA BRADLEY mark.

3.    The <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names are all misspelled versions of Complainant’s VERA BRADLEY mark.

4.    Respondent is engaging in typosquatting.

5.    Respondent has no rights or legitimate interests in respect to the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names.

6.    Respondent is not commonly known by the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names.

7.    Respondent is not affiliated with Complainant and Complainant has not given Respondent permission to use its VERA BRADLEY mark.

8.    Respondent uses the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names to redirect Internet users to websites featuring links to third-party websites, some competing with Complainant.

9.    The earliest date that Respondent registered the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names is May 8, 2005.

10. The <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names are registered in bad faith.

11. Respondent has a pattern of typosquatting behavior.

 

B.  Respondent

Respondent did not submit a Response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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."

 

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 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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends it holds rights for its VERA BRADLEY mark pursuant to Policy ¶ 4(a)(i). Previous panels have found that evidence of a trademark registration with the USPTO or other approved trademark office satisfies the requirement of demonstrating rights in a given mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). Complainant presents evidence of its trademark registrations with the USPTO for the VERA BRADLEY mark (e.g., Reg. No. 1745799 registered Jan. 12, 1993). Based on this presentation, the Panel finds that Complainant has established rights in its VERA BRADLEY mark pursuant to Policy ¶ 4(a)(i), regardless of where Respondent resides or operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Complainant alleges that Respondent’s <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names are confusingly similar to Complainant’s VERA BRADLEY mark. Complainant states that Respondent’s disputed domain names add the generic top-level domain (“gTLD”) “.com,” as well as adding or deleting an extra character. The Panel finds that all of the disputed domain names remove the space found between the terms of Complainant’s mark.  The Panel notes that the disputed domain names are misspelled versions of the VERA BRADLEY mark in that the <verabadley.com> domain eliminates the letter “r,” the <verabrabley.com> domain replaces the “d” in Bradley with a “b,” the <verabraddley.com> domain adds an additional “d,” and the <verabradlely.com> domain adds an additional “l.” The Panel further notes that the <verabradlet.com> domain replaces the “y” with a “t” and the <verabraley.com> domain eliminates the “d” from the VERA BRADLEY mark.  The Panel finally notes that the <versbradley.com> domain replaces the “a” in Vera with an “s.”

 

Prior panels have determined that variances, such as common misspellings and adding a gTLD, do not serve to adequately distinguish the domain name from the mark. See 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.”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that “[a] domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”); see also Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”)

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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 contends that Respondent is not commonly known by the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names. Complainant further states that the WHOIS record lists the registrant of the disputed domain names as “Private Registrations Aktien Gesellschaft,” who Complainant asserts is not licensed, authorized or permitted to register domain names using variations of Complainant’s VERABRADLEY mark. Therefore, the Panel finds that there is no evidence indicating that Respondent is commonly known as the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names pursuant to Policy 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Complainant asserts that Respondent is using the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names to redirect Internet users to websites featuring generic links to third-party websites. Complainant further suggests that Respondent receives pay-per-click fees from the links featured on the resolving websites. The <verabradlet.com>, <verabraddley.com>, <versbradley.com>, and <verabradlely.com>  domains resolve to sites containing links such as “Best HandBags Buyer,” “Vera Bradley,” “Designer Fashions,” “Vera Bradley Purses,” “Vera Bradley Bags,” “Luxury Handbags & More,” “Retired Vera Bradley,” and “fashion handbags,” which the Panel determines are in direct competition with Complainant, as well as featuring Complainant’s VERABRADLEY mark and links to Complainant’s business. The <verabrabley.com> and <verabadley.com> domain names resolve to sites featuring pictures of handbags and purses with links such as “Handbags,” “Purses,” “Tote,” “Satchel,” “Designer Handbags,” “Leather Handbags,” and “clutches.” The <verabrabley.com> domain contains headings such as “Vera bradley Luggage,” “Vera bradley Rugs,” “Vera Bradley Messenger Bag,” “Vera Bag,” “Vera Bradley Outlet Sale,” “Vera Bradley Bag,” “Vera Bradley Backpacks,” and “Vera Bradley Purse.” Previous panels have found that using a confusingly similar domain name to profit from links for third parties competing with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Based on this analysis, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing services does not constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant presents evidence that Respondent is a pattern “typosquatter” in violation of Policy ¶ 4(b)(ii) through repeated domain name registrations that infringe on the trademark rights of Complainant and others. Complainant provides the panel with case citations that it alleges are evidence of Respondent’s pattern of bad faith registration and use. See Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft/ Domain Admin, FA 1439309 (Nat. Arb. Forum June 6, 2012); see also L’Oreal SA v. Private Registrations Aktien Gesellschaft, Domain Admin, D2012-0780 (WIPO May 25, 2012); see also Buyseasons, Inc. v. Private Registrations Aktien Gesellschaft/ Domain Admin, FA 1444579 (Nat. Arb. Forum June 18, 2012). In reference to this evidence, the Panel finds that Respondent registered and uses the current disputed domain names in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

Complainant alleges that Respondent registered the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names in bad faith pursuant to Policy 4(b)(iv). Complainant argues that Respondent is using the confusingly similar domain names to attract Internet users based on their confusion in Respondent’s association with Complainant’s company and financially profiting through click-through fees associated with Respondent’s resolving websites. The majority of the links featured on the disputed resolving websites compete with Complainant’s business. Previous panels have found bad faith registration and use under Policy 4(b)(iv) when a respondent registers a confusingly similar domain name containing complainant’s mark and offers links to third-party websites that compete with complainant’s business. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Based on Complainant’s arguments, the Panel finds that Respondent registered and uses the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names in bad faith pursuant to Policy 4(b)(iv) when attracting consumers and financially profiting from the confusion between the disputed domain name and registered VERABRADLEY mark.

 

Complainant contends that Respondent is engaging in typosquatting, which Complainant argues indicates bad faith use and registration under Policy 4(a)(iii). Complainant argues that Respondent has done this by using the confusingly similar <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names. This practice of typosquatting is evidence by itself of bad faith registration and use under Policy 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

Complainant has proven this element.

 

DECISION

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

 

Accordingly, it is ORDERED that the <verabadley.com>, <verabrabley.com>, <verabraddley.com>, <verabradlely.com>, <verabradlet.com>, <verabraley.com>, and <versbradley.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  August 2, 2012

 

 

 

 

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