Vera Bradley, Inc. v Above.com Domain Privacy
Claim Number: FA1207001453715
Complainant is Vera Bradley, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vera-bradley.com>, <verabradleys.com>, <verabrasley.com>, <verabtadley.com>, <verobradley.com>, and <vwerabradley.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 17, 2012; the National Arbitration Forum received payment on July 17, 2012.
On July 22, 2012, Above.com Pty Ltd. Confirmed, by e-mail message addressed to the National Arbitration Forum, that each of the <vera-bradley.com>, <verabradleys.com>, <verabrasley.com>, <verabtadley.com>, <verobradley.com>, and vwerabradley.com> domain names is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 August 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of the following: postmaster@vera-bradley.com, postmaster@verabradleys.com, postmaster@verabrasley.com, postmaster@verabtadley.com, postmaster@verobradley.com, and postmaster-@vwerabradley.com. Also on August 15, 2012, the Written Notice of the Com-plaint, 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 September 6,, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant is a leading designer, producer and marketer of fashion accessories for women, including handbags, luggage, travel bags, eyewear and gifts.
Complainant holds the VERA BRADLEY trademark and has registered the mark with the United States Patent and Trademark Office (“USPTO”), as Registry No. 1,745,799, registered January 12, 1993.
The disputed domain names are confusingly similar to Complainant’s VERA BRADLEY trademark.
The disputed domain names are examples of typo-squatting.
Respondent has not been commonly known by the disputed domain names.
Respondent is not sponsored by or affiliated with Complainant.
Complainant has not licensed or otherwise authorized Respondent to register domain names incorporating Complainant’s mark.
Respondent uses some or all of the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent presumably receives pay-per-click fees from the operation of the links to these websites.
Respondent is not making a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the disputed domain names.
Respondent has neither any rights to nor any legitimate interests in any of the disputed domain names.
Respondent registered the disputed domain names no earlier than April 8, 2008.
Respondent’s use of the contested domain names to promote competing prod-ucts and to divert Complainant’s potential customers to third-party websites disrupts Complainant’s business.
Respondent’s both registered and uses each of the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names have been registered and are being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the VERA BRADLEY trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO adequate to establish rights in the mark pursuant to Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of business. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under the Policy whether a com-plainant has registered its trademark in the country of a respondent’s residence).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that each of the contested domain names <vera-bradley.com>, <verabradleys.com>, <verabrasley.com>, <verabtadley.com>, <verobradley.com>, and <vwerabradley.com> is confusingly similar to Com-plainant’s VERA BRADLEY trademark. The domain names differ from the mark by the elimination of the space between the terms of the mark, the attachment of a gTLD, the insertion of a hyphen, and the exchange or addition of a single character. These alterations, made to the mark in creating the domain names, do not distinguish the domain names from the mark under the standards of the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of a Policy ¶ 4(a)(i) analysis); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not est-ablish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)).
Similarly, misspelling the mark of another in forming a domain name by replacing one letter or adding an extra letter is insufficient to distinguish the resulting do-main name from the mark from which it was derived. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by slightly
misspelling another’s mark and adding letters to other marks, a respondent made the resulting domain names confusingly similar to a UDRP complainant’s marks).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain names, that Respondent is not sponsored by or affiliated with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to register domain names incorporating Complainant’s mark. Moreover, the pertinent WHOIS information identifies the registrant of each of the contested domain names only as “Above.com Domain Privacy,” which does not resemble the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have demonstrated that it has rights to or legitimate interests in any of them under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not auth-orized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name).
We next observe that Complainant alleges, without objection from Respondent, that Respondent is using some or all of the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant’s business, and that Respondent presumably receives pay-per-click fees from the operation of these linked websites. This is neither a bona fide offering of goods or services by means of or a legitimate non-commercial or fair use of the domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See, for example, TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a UDRP complainant’s marks to send Internet users to a website which displayed links to that complainant’s competitors, was not a bona fide offering of goods or services).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s presumably employment of the disputed domain names to promote the marketing of products that com-pete with, and thus disrupt, Complainant’s business stands as evidence that Respondent has registered and is using the domain names in bad faith within the contemplation of Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a com-mercial search engine with links to the websites of a complainant’s competitors).
We are likewise persuaded from the evidence that Respondent uses the disputed domain names, each of which is confusingly similar to Complainant’s VERA BRADLEY trademark, to create, and to profit from, a likelihood of confusion among Internet users as to the possibility of Complainant’s association with the resolving websites. This is evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(iv). See, for example, AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to those of a UDRP complainant).
Finally, the pattern of spelling of the contested domain names convinces us that Respondent’s registration of the <verabradleys.com>, <verabrasley.com>, <verabtadley.com>, <verobradley.com>, and <vwerabradley.com> domain names is “typo-squatting,” intended to take advantage of Internet users’ common typographical errors made in entering in their web browsers the names of enter-prises with which they might wish to do business. This is further evidence of bad faith registration and use of those domain names under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typo-squatting in its purest form).
For these reasons, the Panel finds that Complainant has met its obligations of proof under ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that each of the contested domain names <vera-bradley.com>, <verabradleys.com>, <verabrasley.com>, <verabtadley.com>, <verobradley.com>, and <vwerabradley.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 20, 2012
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