Vera Bradley Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1207001453710
Complainant is Vera Bradley Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <verabrdley.com> and <verabradleybackpackforsale.com>, registered with Internet.Bs Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2012; the National Arbitration Forum received payment on July 17, 2012.
On July 19, 2012, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <verabrdley.com> and <verabradleybackpackforsale.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 July 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@verabrdley.com and postmaster@verabradleybackpackforsale.com. Also on July 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 August 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its VERA BRADLEY mark.
2. Respondent’s <verabrdley.com> and <verabradleybackpackfor sale.com> domain names are confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain names.
4. Respondent registered and used the domain names in bad faith.
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.”).
Complainant contends that it owns rights in the VERA BRADLEY mark under Policy ¶ 4(a)(i). Complainant claims that, through its subsidiary, Vera Bradley Designs, Inc., Complainant designs, produces, markets, and sells accessories for women. According to Complainant, Complainant offers its accessories, such as handbags, luggage, travel accessories, and eyewear, under the VERA BRADLEY mark. Complainant asserts that it owns trademark registrations with the USPTO for the VERA BRADLEY mark (e.g., Reg. No. 1,745,799 registered January 12, 1993). See Complainant’s Exhibit E. While the Panel notes that Respondent resides in Panama, the Panel nevertheless determines that Complainant’s USPTO trademark registrations establish Complainant’s rights in the VERA BRADLEY mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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 <verabrdley.com> and <verabradleybackpackforsale.com> domain names are confusingly similar to Complainant’s VERA BRADLEY mark under Policy ¶ 4(a)(i). Complainant claims that the disputed domain names either combine Complainant’s mark with generic terms or contain a common misspelling of Complainant’s mark. The Panel notes that Respondent’s <verabradleybackpackforsale.com> domain name combines Complainant’s mark with the descriptive term “backpack” and the generic terms “for” and “sale.” The Panel finds that these additions fail to adequately distinguish the <verabradleybackpackforsale.com> domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). The Panel also notes that the <verabrdley.com> domain name contains a common misspelling of Complainant’s mark that is created by the removal of the letter “a.” The Panel determines that this misspelling does not remove the <verabrdley.com> domain name from the realm of confusing similarity. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Complainant argues that the addition of a generic top-level domain (“gTLD”) “.com” is irrelevant for the purposes of Policy ¶ 4(a)(i). The Panel notes that both of the disputed domain names contain the gTLD “.com” and also remove the space found in Complainant’s mark. The Panel may hold that both alterations are irrelevant to a Policy ¶ 4(a)(i) analysis. See 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.”). Based on the Panel’s findings, the Panel concludes that Respondent’s <verabrdley.com> and <verabradleybackpackforsale.com> domain names are confusingly similar to Complainant’s VERA BRADLEY marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 claims that Respondent is not commonly known by the <verabrdley.com> and <verabradleybackpackforsale.com> domain names under Policy ¶ 4(c)(ii). Complainant argues that the WHOIS information, which identifies the registrant of the disputed domain names as “Fundacion Private Whois / Domain Administrator,” does not indicate that Respondent is known by the disputed domain names. See Complainant’s Exhibit I. Complainant asserts that Respondent is not sponsored by, or legitimately affiliated with, Complainant and that Complainant did not give Respondent permission to use Complainant’s VERA BRADLEY mark in a domain name. Complainant further contends that Respondent’s failure to respond to the case indicates that Respondent does not own any rights or legitimate interests in the disputed domain name. The Panel notes that Respondent’s failure to respond ensures that Respondent did not present any evidence to contradict Complainant’s claims. In light of the evidence in the record, the Panel holds that Respondent is not commonly known by the <verabrdley.com> and <verabradleybackpackforsale.com> domain names according to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <verabrdley.com> and <verabradleybackpackforsale.com> domain names under Policy ¶ 4(c)(iii). Complainant alleges that Respondent’s disputed domain names resolve to websites that contain generic hyperlinks to third-party websites, some of which directly compete with Complainant’s business. See Complainant’s Exhibit H. Complainant avers that Respondent receives pay-per-click fees in relation to its use of the disputed domain name. Based on Respondent’s alleged use, which the Panel notes is supported by the screen shots provided by Complainant, the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <verabrdley.com> and <verabradleybackpackforsale.com> domain names. See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
According to Complainant, Respondent registered and uses the <verabrdley.com> and <verabradleybackpackforsale.com> domain names in bad faith under Policy ¶ 4(b)(ii). Complainant argues that Respondent has been a respondent in prior UDRP proceedings in which the panels ordered the transfer of the domain names to the respective complainants. See Seiko Holdings Kabushili Kaisha v. Fundaction Private Whois, D2012-0810 (WIPO June 28, 2012); see also Xcentric Ventures, LLC v. Fundacion Private WHOIS, FA 1441027 (Nat. Arb. Forum June 7, 2012). Complainant provides the Panel with copies of these decisions and others involving Respondent in Complainant’s Exhibit N. Complainant also claims that Respondent owns domain names that include the trademarks of third parties. See Complainant’s Exhibit O. Based on this evidence, the Panel determines that Respondent registered and uses the <verabrdley.com> and <verabradleybackpackforsale.com> domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Complainant avers that Respondent registered and uses the <verabrdley.com> and <verabradleybackpackforsale.com> domain names in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent’s advertised pay-per-click hyperlinks displayed on the resolving website promote products that compete with Complainant’s products. See Complainant’s Exhibit H. Complainant argues that these hyperlinks divert potential customers away from Complainant and to Complainant’s competitors. The Panel determines that Complainant’s business is disrupted. The Panel concludes that Respondent registered and uses the <verabrdley.com> and <verabradleybackpackforsale.com> domain names in bad faith according to Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent registered and uses the <verabrdley.com> and <verabradleybackpackforsale.com> domain names in bad faith under Policy ¶ 4(b)(iv). Complainant alleges that Respondent receives revenue for misdirecting Internet users by receiving pay-per-click fees from the hyperlinks found on the resolving website. Complainant claims that Respondent uses Complainant’s mark in the disputed domain names in order to take advantage of the notoriety of Complainant’s mark. The Panel finds that Respondent is attempting to commercially benefit by creating the likelihood of confusion as to Complainant’s association with the disputed domain names. The Panel makes such a finding. The Panel holds that Respondent registered and uses the <verabrdley.com> and <verabradleybackpackforsale.com> domain names in bad faith under Policy ¶ 4(b)(iv). See 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.’”) .
Complainant finally argues that Respondent’s typosquatting is evidence of Respondent’s bad faith registration and use of the <verabrdley.com> and <verabradleybackpackforsale.com> domain names under Policy ¶ 4(a)(iii). The Panel notes that the <verabrdley.com> domain name contains a common misspelling of Complainant’s mark: the removal of the letter “a.” The Panel infers that Respondent is attempting to take advantage of Internet users mistyping or misspelling Complainant’s mark. The Panel finds that Respondent’s registration and use of the <verabrdley.com> domain name for such a purpose is evidence of Policy ¶ 4(a)(iii) bad faith registration and use. See 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). However, the Panel notes that the <verabradleybackpackforsale.com> domain name does not contain a common misspelling of Complainant’s mark and instead contains a combination of Complainant’s mark with generic and descriptive terms. Therefore, the Panel concludes that Respondent’s <verabradleybackpackforsale.com> domain name is not evidence of typosquatting under 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 <verabrdley.com> and <verabradleybackpackforsale.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 31, 2012
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