Vera Bradley, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1308001516553
Complainant is Vera Bradley, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <veerabradley.com>, registered with MEDIA ELITE HOLDINGS LIMITED.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2013; the National Arbitration Forum received payment on August 26, 2013.
On September 6, 2013, MEDIA ELITE HOLDINGS LIMITED confirmed by e-mail to the National Arbitration Forum that the <veerabradley.com> domain name is registered with MEDIA ELITE HOLDINGS LIMITED and that Respondent is the current registrant of the name. MEDIA ELITE HOLDINGS LIMITED has verified that Respondent is bound by the MEDIA ELITE HOLDINGS LIMITED 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 September 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@veerabradley.com. Also on September 6, 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 October 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <veerabradley.com> domain name is confusingly similar to Complainant’s VERA BRADLEY mark.
2. Respondent does not have any rights or legitimate interests in the <veerabradley.com> domain name.
3. Respondent registered and uses the <veerabradley.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant is the owner of a federal trademark registration for its VERA BRADLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,745,799 registered January 12, 1993), and uses the mark in connection with accessories for women.
Respondent registered the <veerabradley.com> domain name on March 19, 2005, and uses it to resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Respondent also offers the domain name for sale.
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.”).
The Panel finds that Complainant’s USPTO registrations sufficiently establish Complainant’s rights in the mark under Policy ¶ 4(a)(i), despite the fact that Respondent appears to reside in Australia. 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 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).
Respondent’s <veerabradley.com> domain name is confusingly similar to Complainant’s VERA BRADLEY mark under Policy ¶ 4(a)(i), as it simply adds an extra “e” and the generic top-level domain (“gTLD”). The Panel finds that the addition of an extra “e” to the VERA BRADLEY mark is not enough to overcome confusing similarity under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The removal of spaces and affixation of a gTLD are requisite elements of all domain names, and thus these changes do not distinguish the disputed domain from the mark either. 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.”). Accordingly, the Panel finds that <veerabradley.com> domain name is confusingly similar to Complainant’s VERA BRADLEY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <veerabradley.com> domain name and has no trademark or intellectual property rights in the disputed domain name. Complainant states that it has not given Respondent permission to use the VERA BRADLEY mark in a domain name, and that Respondent is not sponsored by or affiliated with Complainant. The Panel thus finds that Respondent is not commonly known by the <veerabradley.com> domain name for the purposes of 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).
Complainant also alleges that Respondent lacks rights and legitimate interests in the <veerabradley.com> domain name because Respondent is not using the domain in connection with a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant asserts that Respondent points the disputed domain to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Complainant posits that Respondent earns a financial gain from its operation of the resolving website by collecting pay-per-click fees from the links advertised there. The Panel agrees and finds that Respondent’s use of the <veerabradley.com> domain name constitutes 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has demonstrated bad faith by listing the disputed domain name for sale. The Panel notes that the <veerabradley.com> domain name resolves to a website containing the phrases “VeerABradley.com is for sale” and “The owner of the domain you are researching has it listed for sale.” The panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) held that even a general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i). The Panel finds that Respondent’s offer to sell the <veerabradley.com> domain name is sufficient to support a finding of bad faith registration under Policy ¶ 4(b)(i).
Further, Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by diverting potential customers away from Complainant to third-party websites that display pay-per-click links promoting products that compete with those offered by Complainant under its VERA BRADLEY mark. This constitutes bad faith pursuant to Policy ¶ 4(b)(iii). In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found bad faith pursuant to Policy ¶ 4(b)(iii) where the respondent used the disputed domain names to resolve to websites that listed links to competitors of the complainant, as this use evidenced an intent to disrupt the complainant’s business. Thus, the Panel finds that Respondent registered and uses the <veerabradley.com> domain name to disrupt Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Respondent has registered and used the disputed domain name to attract and mislead consumers for Respondent’s own profit by setting up a “click-through” website from which Respondent likely receives revenue for each misdirected Internet user. The Panel finds that this demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Respondent’s <veerabradley.com> domain name also constitutes typosquatting, itself evidence of bad faith. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”). The Panel finds that Respondent has registered the <veerabradley.com> domain name in bad faith under Policy ¶ 4(a)(iii) due to typosquatting.
The Panel finds that Complainant has satisfied 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 <veerabradley.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 8, 2013
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