national arbitration forum

 

DECISION

 

Vera Bradley, Inc. v. zhenhua ai / aizhenhua

Claim Number: FA1210001466574

 

PARTIES

Complainant is Vera Bradley, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is zhenhua ai / aizhenhua (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <verabradey.com> and <erabradley.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2012; the National Arbitration Forum received payment on October 9, 2012.

 

On October 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <verabradey.com> and <erabradley.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  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 November 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@verabradey.com, postmaster@erabradley.com.  Also on November 5, 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 December 7, 2012, 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" 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 makes the following assertions:

1.     Respondent’s <verabradey.com> and <erabradley.com> domain names are confusingly similar to Complainant’s VERA BRADLEY mark.

2.    Respondent does not have any rights or legitimate interests in the <verabradey.com> and <erabradley.com> domain names.

3.    Respondent registered or used the <verabradey.com> and <erabradley.com> domain names in bad faith.

           

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

    1. Complainant owns the VERA BRADLEY mark through several trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 1,745,799 registered Jan. 12, 1993).  See Complainant’s Exhibit E. 
    2. Respondent’s <verabradey.com> and <erabradley.com> domain names are confusingly similar to the VERA BRADLEY mark, as the relevant comparison is between only the second level portion of the disputed domain names and Complainant’s mark. The removal of letters from the mark renders the domain names typosquatted and confusingly similar to the mark.
    3. Respondent does not have rights or legitimate interests in the disputed domain names.

                                          i.    Respondent is not commonly known by the disputed domain names and has not been authorized or granted permission to use Complainant’s marks.

    1. Respondent has registered and is using the disputed domain name in bad faith.

                                          i.    Respondent has listed the disputed domain names for sale to the public, thereby showing that Respondent registered and is using the disputed domain names in bad faith.  See Complainant’s Exhibit Q.

                                         ii.    Respondent holds registrations of other domain names that appear to be straightforward examples of typosquatting, and although the names are not involved in this Complaint, they serve as further evidence of bad faith intent on the part of Respondent.

                                        iii.    Respondent is using the disputed domain names to display pay-per-click links to websites that promote products competing with Complainant’s own product offerings.  Respondent’s use diverts potential customers away from Complainant and disrupts Complainant’s business in bad faith.

                                       iv.    Respondent’s setting up a “click through” website for which Respondent likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith.

                                        v.    Respondent’s typosquatting behavior is evidence, in and of itself, of bad faith registration and use. 

 

 

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 claims that it owns the VERA BRADLEY mark through several trademark registrations with the USPTO (e.g. Reg. No. 1,745,799 registered Jan. 12, 1993).  See Complainant’s Exhibit E.  The Panel finds that Complainant has established its rights in the VERA BRADLEY mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO, regardless of Respondent’s location.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Further, Complainant argues that Respondent’s <verabradey.com> and <erabradley.com> domain names are confusingly similar to the VERA BRADLEY mark, as the relevant comparison is between only the second level portion of the disputed domain names and Complainant’s mark. Complainant argues that the removal of letters from the mark renders the domain names typosquatted and confusingly similar to the mark.  The Panel notes that Respondent has removed the letter “l” from the <verabradey.com> domain name, and has removed the letter “v” from the <erabradley.com> domain name, while adding the generic top-level domain (“gTLD”) “.com” to both domain names and removing the space from between the terms of the mark.  The Panel finds that as such, Respondent’s <verabradey.com> and <erabradley.com> domain names are confusingly similar to Complainant’s VERA BRADLEY mark under Policy ¶ 4(a)(i).  See 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 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 establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

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 asserts that Respondent is not commonly known by the disputed domain names and has not been authorized or granted permission to use Complainant’s marks.  The Panel notes that the WHOIS information identifies “aizhenhua” or “zhenhua ai” as the registrant of the dispute domain names.  The Panel finds that neither of these names is similar to the disputed domain names.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

 

The Panel notes that Complainant does not argue what Respondent’s use of the disputed domain names consists of under Policy ¶ 4(a)(ii).  However, under Policy ¶ 4(a)(iii), Complainant asserts that the disputed domain names resolve to websites that contain third-party links to Complainant’s competitors or to websites offering similar products as Complainant.  See Complainant’s Exhibit H.  The Panel finds Complainant’s evidence appears to support this conclusion, and finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See H-D Michigan 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).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent has listed the disputed domain names for sale to the public, thereby showing that Respondent registered and is using the disputed domain names in bad faith.  See Complainant’s Exhibit Q.  The Panel notes that Complainant’s evidence indicates that only the <verabradey.com> domain name was placed for sale on the domain name auction site <sedo.com>.  Therefore, the Panel finds that Respondent registered and is using the <verabradey.com> domain name in bad faith under Policy ¶ 4(b)(i).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)  (finding that the attempted sale of a domain name is evidence of bad faith).

 

Complainant contends that Respondent holds registrations of other domain names that appear to be straightforward examples of typosquatting, and although the names are not involved in this Complaint, they serve as further evidence of bad faith intent on the part of Respondent.  See Complainant’s Exhibit O.  Complainant brings this argument under Policy ¶ 4(b)(ii).  The Panel agrees with Complainant and finds that the registration of the two domain names at issue in the current dispute, as well as Respondent’s other domain name registrations are sufficient for the Panel to find bad faith under Policy ¶ 4(b)(ii) in the present dispute.  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).

 

Complainant next argues that Respondent is using the disputed domain names to display pay-per-click links to websites that promote products competing with Complainant’s own product offerings.  Complainant asserts that Respondent’s use diverts potential customers away from Complainant and disrupts Complainant’s business in bad faith.  The Panel agrees and finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).  See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Further, Complainant contends that Respondent’s setting up a “click through” website for which Respondent likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith.  As noted above, Respondent’s disputed domain names resolve to website featuring various third-party links to competing websites and products to those offered by Complainant.  The Panel finds that Respondent has registered and is using the disputed domain names in bad faith under such circumstance pursuant to 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.’”).

 

Lastly, Complainant asserts that Respondent’s typosquatting behavior is evidence, in and of itself, of bad faith registration and use.  The Panel finds that Respondent’s <verabradey.com> and <erabradley.com> domain names are typosquatted versions of Complainant’s VERA BRADLEY mark.  The Panel finds that the registration and use of such domain names is also evidence of bad faith under Policy ¶ 4(a)(iii).  See 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)).

 

DECISION

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

 

Accordingly, it is Ordered that the <verabradey.com> and <erabradley.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  December 19, 2012

 

 

 

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