Vera Bradley Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1301001480975
Complainant is Vera Bradley Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vearbradley.com>, <verbradley.com>, and <verybradley.com>, registered with Internet.bs Corp.
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 electronically on January 18, 2013; the National Arbitration Forum received payment on January 18, 2013.
On Jan 23, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <vearbradley.com>, <verbradley.com>, and <verybradley.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 January 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2013 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@vearbradley.com, postmaster@verbradley.com, postmaster@verybradley.com. Also on January 25, 2013, 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 February 19, 2013, 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 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
Complainant, acting through its subsidiary, Vera Bradley Designs, Inc., is a de-signer, producer and marketer of accessories for women, including hand-bags, luggage, travel gear, eyewear and gifts, all sold under the VERA BRADLEY trademark.
Complainant holds trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”) for the VERA BRADLEY mark (including Reg. No. 1,745,799, registered January 12, 1993).
Respondent registered the <vearbradley.com> domain name on December 22, 2010, the <verbradley.com> domain name on January 12, 2004, and the <verybradley.com> domain name on May 8, 2004.
The <vearbradley.com>, <verbradley.com>, and <verybradley.com> domain names are confusingly similar to Complainant’s VERA BRADLEY mark.
Respondent has not been commonly known by any of the disputed domain names.
Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complain-ant’s mark in a domain name.
Each of Respondent’s domain names is emblematic of typo-squatting.
The pay-per-click links displayed on the websites resolving from each of Re-spondent’s contested domain names promote products that compete with the business of Complainant.
Respondent has no rights to or legitimate interests in respect of any of the disputed domain names.
Respondent has listed the <vearbradley.com> domain name for sale.
Respondent is a serial cyber-squatter and typo-squatter.
Respondent registered and is using 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 were 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 cancelled 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 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 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 reasonable 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 for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark trace to its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Chile). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that under Policy ¶ 4(a)(i) it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in the mark by registration in some jurisdiction).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude that each of the <vearbradley.com>, <verbradley.com>, and <verybradley.com> domain names is confusingly similar to Complainant’s VERA BRADLEY mark. In each instance, the domain name differs from Complainant’s mark by only a single character and the addition of the generic top-level domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain names, do not avoid a finding of confusing similarity under the standards of the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a UDRP complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). See also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a UDRP complainant’s PFIZER mark, where a respondent simply omitted the letter “i”). Further see Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in the mark with the letter “e”).
Finally under this head of the Policy, the addition of the generic top-level domain (“gTLD”) “.com” to each of the disputed domain names is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bank of Amer. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD to the mark of another in forming a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, 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 a 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 branch of the Policy. Therefore, and because Respondent has failed to respond to the allegations 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 Complaint, 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 Respondent 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 legitimately affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Moreover, the WHOIS record for each of the disputed domain names identifies the registrant only as “PPA Media Services / Ryan G Foo,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name disputed <coppertown.com> where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s domain names resolve to websites provide links to websites competing with the business of Complainant. This employment of the domain names is not a use in connection with either 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
The disputed domain name, …, currently re-solves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
See also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a UDRP respondent’s use of a contested domain name to redirect Internet users to websites unrelated to a complainant’s mark to which it was confusingly similar is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent is, as alleged in the Complaint, a serial cyber-squatter and typo-squatter. See Orbitz Worldwide, LLC v. PPA Media Services / Ryan G Foo, FA 1470415 (Nat. Arb. Forum Dec. 27, 2012); Kohl’s Illinois, Inc. v. PPA Media Services / Ryan G Foo, FA 1470418 (Nat. Arb. Forum Jan. 2, 2013); Ashley Furniture Industries, Inc. v. PPA Media Services / Ryan G Foo, FA 1470078 (Nat. Arb. Forum Dec. 31, 2012). This is evidence that Respondent has registered and is using the contested domain names in bad faith. SeeTRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009), the panel there finding that previous UDRP decisions demonstrated a pattern of bad faith registration and use of domain names which, under Policy ¶ 4(b)(ii), stood as evidence of bad faith registration and use of the domain name there in issue.
We are likewise convinced from the evidence that the websites resolving from each of Respondent’s contested domain names feature pay-per-click links to websites promoting products that compete with the business of Complainant. This employment of domain names, each of which is confusingly similar to Complainant’s VERA BRADLEY mark, to divert potential customers away from Complainant’s website to third-party websites, disrupts Complainant’s business. It therefore shows evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that a respondent’s use of a website resolving from a domain name which was confusingly similar to the mark of a UDRP complainant to divert Internet users to the websites of that complainant’s commercial competitors constituted proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)).
That Respondent employs the disputed domain names in this manner for profit is also evidence of bad faith registration and use of the domain names as described in 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.’
We also note that each of Respondent’s domain names stands as an example of typo-squatting, in that each domain name was plainly created to take advantage of Internet users common typographical errors in entering the names of prominent trademark holders in their web browsers. Typo-squatting is evidence of bad faith registration and use of a domain name. See, for example, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a UDRP respondent engaged in typo-squatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 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 the <vearbradley.com>, <verbradley.com>, and <verybradley.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 4, 2013
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