PineBridge Investments IP Holdings Limited v. VistaPrint Technologies Ltd
Claim Number: FA1411001588800
Complainant is PineBridge Investments IP Holdings Limited (“Complainant”), represented by Claudia W. Stangle of Leydig, Voit & Mayer, Ltd., Illinois, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pinebirdge.com>, registered with TUCOWS, INC.
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 November 6, 2014; the National Arbitration Forum received payment on November 6, 2014.
On November 6, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <pinebirdge.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2014 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@pinebirdge.com. Also on November 7, 2014, 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 10, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the PINEBRIDGE mark in connection with its financial and investment services.
Complainant has registered the PINEBRIDGE trademark with the United States Patent and Trademark Office ("USPTO") (Registry 3,836,169, registered Aug. 17, 2010).
Respondent registered the <pinebirdge.com> domain name on October 24, 2014.
The domain name is confusingly similar to Complainant’s PINEBRIDGE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not licensed or otherwise authorized by Complainant to use its PINEBRIDGE mark.
Respondent has used the disputed domain name to pose as Complainant’s CFO under the misleading <pinebirdge.com> e-mail string to send an e-mail message to Complainant requesting a wire transfer of 67,870.00 AUD to be sent to Respondent’s account.
Respondent’s use of the <pinebirdge.com> domain name is an attempt to defraud Complainant.
Respondent lacks any rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the PINEBRIDGE mark when it registered the domain name.
Respondent has both registered and used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) The same domain name was registered and is 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 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 has rights in the PINEBRIDGE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013):
Complainant’s USPTO registration sufficiently establishes its rights in the … mark under Policy ¶4(a)(i),…
See also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):
Complainant has established rights in the … mark through registration of the mark with … the USPTO.
This is true without regard to whether Complainant has acquired rights in its mark by reason of its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Bermuda). See, for example, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pinebirdge.com> domain name is confusingly similar to Complainant’s PINEBRIDGE trademark. The domain name contains the entire mark, with only a transposition of the letters “r” and “i,” plus the addition of the generic-top level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
See also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), a panel there finding the <googel.com> domain name to be confusingly similar to a UDRP complainant’s GOOGLE mark, 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.
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 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 re-spondent 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 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine 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 asserts, and Respondent does not deny, that Respondent has not been commonly known by the <pinebirdge.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its PINEBRIDGE trademark. Moreover, the pertinent WHOIS record identifies the registrant of the contested domain name only as “VistaPrint Technologies Ltd,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the contemplation 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 <coppertown.com> domain name, and so had failed to show that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, to support such a showing).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has used the <pinebirdge.com> domain name to pose as Complainant’s CFO by using the disputed domain name in a misleading e-mail string to send an e-mail message to Complainant fraudulently requesting that a wire transfer of 67,870.00 AUD be sent to Respondent’s account. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (the panel there finding, under Policy ¶¶ 4(c)(i) and 4(c)(iii), that a respondent lacked rights to and legitimate interests in a disputed domain name where that respondent used the domain name to send e-mail messages to various IT hardware suppliers in an attempt to impersonate a UDRP complainant in an attempt to perpetrate a fraud).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
It is customary in proceedings of this kind for a panel to examine the question whether Respondent has registered and used a domain name in bad faith within the meaning of Policy ¶ 4(a)(iii) by resort to the list of relevant considerations set out in Policy ¶ 4(b). However, the provisions of Policy ¶ 4(b) are merely illustrative of factors that may be taken into account in weighing the question of bad faith. We are therefore free to consider the totality of the surrounding circumstances in assessing this issue. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets out certain circumstances, without limitation by enumeration, that may be taken as evidence of registration and use of a domain name in bad faith).
With this in mind, we conclude from the evidence presented that Respondent’s use of the <pinebirdge.com> domain name to impersonate Complainant in an attempt to perpetrate a financial fraud is strong evidence of Respondent’s bad faith in the registration and use of the domain name. See National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014):
We are persuaded by the evidence that Respondent’s use of the … domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.
See also Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that a respondent’s attempt to use a domain name that was confusingly similar to the mark of a UDRP complainant to impersonate an employee of that complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the PINEBRIDGE trademark when it registered the disputed <pinebirdge.com> domain name. This too is evidence of Respondent’s bad faith in the registration and use of the domain name. See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (Nat. Arb. Forum Oct. 29, 2014):
Respondent’s knowledge of Complainant’s mark is apparent by Respondent’s attempt to project itself as Complainant.
For these reasons, the Panel 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 <pinebirdge.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 11, 2014
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