Exadel, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1510001640487
Complainant is Exadel, Inc. (“Complainant”), represented by Eugene M. Pak of Wendel, Rosen, Black & Dean, LLP, California, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exadell.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 1, 2015; the Forum received payment on October 1, 2015.
On October 2, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <exadell.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 October 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@exadell.com. Also on October 2, 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 October 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Policy ¶ 4(a)(i)
Complainant has rights in the EXADEL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,186,802, registered August 7, 2012). Respondent’s <exadell.com> domain name is confusingly similar to the EXADEL mark because it contains the entirety of the mark, altered by only an additional “l” (lowercase “L”) and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <exadell.com> domain name because there is no evidence to suggest being so commonly known. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses e-mail addresses hosted at the <exadell.com> domain name to send fraudulent e-mails to customers of Complainant requesting money.
Policy ¶ 4(a)(iii)
Respondent has demonstrated a pattern of bad faith registration and use of domains through prior UDRP decisions decided against it. Respondent uses the <exadell.com> domain name in bad faith because the resolving website contains advertisements for Respondent’s own website and because Respondent uses e-mail addresses hosted at the domain to fraudulently request money from customers of Complainant. Respondent registered the <exadell.com> domain name in bad faith because it is a typosquatted version of the EXADEL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Exadel, Inc., of Walnut Creek, CA, USA. Complainant is the owner of domestic registrations for the mark EXADEL which it has used continuously since at least as early as 2004 in connection with its provision of goods and services in the computer software industry.
Respondent is VistaPrint Technologies Ltd., of Hamilton, Bermuda. Respondent’s registrar’s address is listed as Toronto, ON, Canada. The Panel notes that the <exadell.com> domain name was created on or about August 5, 2015.
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.”).
Preliminary Issue: Consent to Transfer
While the Respondent failed to submit a formal response, the NAF did receive informal correspondence indicating a desire to consent to the transfer of the <exadell.com> domain name to Complainant. However, after the initiation of this proceeding, Tucows Domains Inc. placed a hold on Respondent’s account pursuant to UDRP policy and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. Under the present circumstances the Panel finds, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name to the Complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the <exadell.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Respondent consents to transfer.
Respondent consents to transfer.
Respondent consents to transfer.
Because the Respondent consents to transfer the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <exadell.com> domain name be IMMEDIATELY TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 10, 2015
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