Oklahoma State Fair, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1508001635616
Complainant is Oklahoma State Fair, Inc. (“Complainant”), represented by Zachary A.P. Oubre of McAfee & Taft A Professional Corporation, Oklahoma, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <0kstatefair.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2015; the Forum received payment on August 28, 2015.
On August 31, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <0kstatefair.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 September 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2015 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@0kstatefair.com. Also on September 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 has registered the OKLAHOMA STATE FAIR trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,213,123, registered Feb. 27, 2007). The mark is used on or in connection with entertainment services namely, conducting an annual state fair including exhibitions of art, crafts, concerts, concessions, amusements, rides, contests, shows, educational displays and amateur and professional entertainments. The <0kstatefair.com> domain name is confusingly similar to the OKLAHOMA STATE FAIR trademark because the only alterations Respondent has made are the addition of the generic top-level domain (“gTLD”) “com” and the incorporation of what appears to be the common two-letter abbreviation for “Oklahoma,” which is present in Complainant’s trademark.
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage that contains a hyperlink that leads Internet users to a website advertising unrelated services. Such use does not consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Additionally, Respondent has engaged in a phishing scheme, which is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent has engaged in bad faith registration and use. Respondent has engaged in a pattern of bad faith registrations. Respondent is also attempting to commercially profit from a likelihood of confusion. Respondent is engaging in a phishing scheme, which consists of bad faith. Respondent has engaged in a pattern of previous bad faith registration and use of domain names. Respondent has engaged in typosquatting. Further, Respondent had actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Oklahoma State Fair, Inc., has registered the OKLAHOMA STATE FAIR trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,213,123, registered Feb. 27, 2007). The mark is used on or in connection with entertainment services namely, conducting an annual state fair including exhibitions of art, crafts, concerts, concessions, amusements, rides, contests, shows, educational displays and amateur and professional entertainments.
Respondent, VistaPrint Technologies Ltd, registered the <0kstatefair.com> domain name on June 29, 2015. Respondent’s domain name resolves to a webpage that contains a hyperlink that leads Internet users to a website advertising unrelated services. Also, Respondent is engaging in a phishing scheme. Respondent has engaged in a pattern of previous bad faith registration and use of domain names. Respondent has engaged in typosquatting.
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.”).
Complainant has rights in the OKLAHOMA STATE FAIR trademark under Policy ¶ 4(a)(i) through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <0kstatefair.com> domain name is confusingly similar to the OKLAHOMA STATE FAIR trademark under Policy ¶ 4(a)(i). Respondent has added the generic top-level domain (“gTLD”). The domain name appears to incorporate the common two-letter abbreviation for “Oklahoma,” which is present in Complainant’s trademark. Respondent has substituted the number “0” for the letter “o.”
Respondent is not commonly known as the <0kstatefair.com> domain name under Policy ¶ 4(c)(ii). Complainant has not licensed or authorized Respondent to use the OKLAHOMA STATE FAIR trademark. The WHOIS information lists “VistaPrint Technologies Ltd” as the registrant of record for the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s use of the <0kstatefair.com> domain name fails to consist of 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). Respondent’s domain name resolves to a webpage containing a hyperlink for the <vistaprint.com/websites> domain name, which leads to a website advertising unrelated services (website and business marketing products and services). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Additionally, Respondent is using the <0kstatefair.com> domain name in connection with a phishing scheme to obtain personal financial information of Internet users. Complainant’s allegations are as follows: Respondent created an email address that utilizes the disputed domain name, Respondent then proceeded to send fraudulent emails purporting to be Complainant, said emails contained a request for Complainant’s bank statements. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (the respondent lacked rights and legitimate interests in the disputed domain name because the domain name was used to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers.).
Respondent has displayed bad faith under Policy ¶ 4(b)(ii) by engaging in a pattern of bad faith registrations. Complainant cites numerous other UDRP decisions adverse to Respondent in which domain name transfer was ordered. See Bloomberg Finance L.P. v. Vistaprint Technologies Ltd, FA1506001623048 (Nat. Arb. Forum July 13, 2015); Koc Holding A.S. v. Vistaprint Technologies Ltd., D2015-0886 (WIPO July 13, 2015); Masonite Int. Corp. v. VistaPrint Technologies Ltd., FA1505001621359 (Nat. Arb. Forum July 2, 2015); see also Compl., at p. 5-6. Prior panels have established bad faith under Policy ¶ 4(b)(ii) where the respondent was party to a number of adverse prior UDRP decisions. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Internet users who view the resolving webpage are likely to believe that it is sponsored by or affiliated with Complainant and its OKLAHOMA STATE FAIR trademark. Respondent is presumably profiting from this confusion. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent is engaging in a phishing scheme, which is evidence of bad faith under Policy ¶ 4(a)(iii). See SHUAA Capital psc v. Oba Junkie / shuaa capital psc (Nat. Arb. Forum Oct. 29, 2014) (“Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”).
Respondent had actual knowledge of Complainant's rights in the OKLAHOMA STATE FAIR mark. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <0kstatefair.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 10, 2015
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