Cimpress plc, Cimpress Schweiz GmbH, Vistaprint Netherlands B.V., Cimpress Windsor Corporation and Cimpress USA Manufacturing Incorporated v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2212002025533
Complainant is Cimpress plc, Cimpress Schweiz GmbH, Vistaprint Netherlands B.V., Cimpress Windsor Corporation and Cimpress USA Manufacturing Incorporated (“Complainant”), represented by Douglas M Isenberg of The GigaLaw Firm, LLC, Georgia, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf (“Respondent”), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vistaprint.us.com>, registered with NameCheap, 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 Neil Anthony Brown KC as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.
On December 28, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <vistaprint.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”)
On December 29, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2023 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@vistaprint.us.com. Also on December 29, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, 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 made the following contentions.
Complainant invests in and builds customer-focused, entrepreneurial, mass-customization businesses for the long term. Complainant submits that it has rights in the VISTAPRINT mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,433,418, registered March 6, 2001). See Compl. Annex 7. Respondent’s <vistaprint.us.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.us” country code top-level domain (“ccTLD”), and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <vistaprint.us.com> domain name. Respondent is not licensed or authorized to use Complainant’s VISTAPRINT mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is diverting Internet users to an infringing website that appears to be associated with Complainant and offers competing goods for sale.
Respondent registered or uses the <vistaprint.us.com> domain name in bad faith. Respondent is creating a likelihood of confusion with the Complainant’s mark to divert Internet users to its infringing website that offers competing goods. Respondent’s registration or use was opportunistic bad faith. Additionally, Respondent had actual knowledge of Complainant’s rights in the VISTAPRINT mark at the time of registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainants are members of a group of companies who invest in and build customer-focused, entrepreneurial, mass-customization businesses for the long term, including the business known as Vistaprint. As such, Complainants have a common interest in the Vistaprint business, in protecting their interests in its VISTAPRINT trademarks, and in doing so, inter alia, by filing complaints under the CentralNic Dispute Resolution Policy (the “CDRP Policy”). Complainants are hereinafter referred to as “Complainant”.
2. Complainant has established its rights in the VISTAPRINT mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,433,418, registered March 6, 2001).
3. Respondent registered the <vistaprint.us.com> domain name on April 13, 2022.
4. Respondent has used the disputed domain name to divert Internet users to an infringing website associated with Complainant and to offer competing goods 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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP decisions as applicable in rendering its decision.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
There are five complainants in this proceeding. Those companies are members of a group of companies who invest in and build customer-focused, entrepreneurial, mass-customization businesses for the long term, including the business known as Vistaprint. As such, Complainants have a common interest in the Vistaprint business, in protecting their interests in its VISTAPRINT trademarks, and in doing so, inter alia, by filing complaints under the CentralNic Dispute Resolution Policy (the “CDRP Policy”) and, where applicable, complaints under the Uniform Domain Name Dispute Resolution Policy ( the “ UDRP Policy”). Complainants are hereinafter referred to as “Complainant”.
It is clearly appropriate that the various interests thus represented should be pursued in the one proceeding. That approach has been followed, rightly in the view of this panelist, in two recent proceedings under the UDRP, namely:
(a) Cimpress plc, Vistaprint Netherlands B.V., Cimpress USA Manufacturing Incorporated, Cimpress Schweiz GmbH, Cimpress Windsor Corporation v. Registration Private, Domains By Proxy, LLC / Howard Granat, Charger House LLC, WIPO Case No. D2020-0030 (transfer of <istaprint-usa.com); and
(b) Cimpress PLC, Cimpress Schweiz GmbH, Vistaprint Netherlands B.V, Cimpress Windsor Corporation, Cimpress USA Manufacturing Incorporated v. Privacy Service Provided by Withheld for Privacy ehf / Osama Tanveer, WIPO Case No. D2022-0320 (transfer of <vistaprinthub.com>).
It is therefore appropriate that the same interests should be pursued in the same manner and the present Complaint reflects that position. It is also appropriate that Complainants should be referred to in this decision as “Complainant”.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the VISTAPRINT mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 2,433,418, registered March 6, 2001). See Compl. Annex 7. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel agrees and finds that Complainant has established its rights in the VISTAPRINT mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VISTAPRINT mark. Complainant argues that the <vistaprint.us.com> domain name is identical or confusingly similar to Complainant’s mark. The addition of a ccTLD or gTLD to a mark does not distinguish the disputed domain name from the mark incorporated therein and is usually considered irrelevant per Policy ¶ 4(a)(i). See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). The disputed domain name incorporates the VISTAPRINT mark in its entirety, merely adding the “.us” ccTLD and the “.com” gTLD. Accordingly, as the Panel agrees, it finds that the <vistaprint.us.com> domain name is confusingly similar to the Complainant’s VISTAPRINT mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VISTAPRINT mark and to use it in its domain name and merely adding the “.us” ccTLD and the “.com” gTLD;
(b) Respondent registered the <vistaprint.us.com> domain name on April 13, 2022;
(c) Respondent has used the disputed domain name to divert Internet users to an infringing website associated with Complainant and to offer competing goods for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent does not have rights or legitimate interest in the <vistaprint.us.com> domain name because Respondent is not licensed or authorized to use Complainant’s VISTAPRINT mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Redacted for Privacy”. See Compl. Annex 4. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the <vistaprint.us.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent is directing Internet users to its infringing website and offering for sale goods that are the same as the goods offered by Complainant in connection with its mark. Passing off as a complainant and offering competing goods does not represent 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 H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant provides screenshot evidence of the disputed domain name’s infringing website. See Compl. Annex 5. Therefore, the Panel finds Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered or uses the <vistaprint.us.com> domain name in bad faith. Respondent is creating a likelihood of confusion with the VISTAPRINT mark to divert consumers to its infringing website and offering for sale goods that are the same as the goods offered by Complainant. Creating a likelihood of confusion as to the source of a website to sell competing goods is evidence of bad faith per Policy ¶ 4(b)(iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore, the Panel finds that a likelihood of confusion exists, that Respondent is attempting to benefit commercially from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Here, Complainant provides screenshot evidence of the resolving website. See Compl. Annex 5. Accordingly, as the Panel agrees, it finds Respondent has acted in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent’s registration or use of the <vistaprint.us.com> domain name was opportunistic bad faith. The disputed domain name is so obviously connected with Complainant based upon the long history of Complainant’s trademarks and Complainant’s significant presence and brand recognition. Opportunistic bad faith is evidence of bad faith per Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). The Panel notes that Complainant’s VISTAPRINT mark is entirely incorporated into the disputed domain name. Thus, the Panel finds Respondent has acted in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Respondent contends Respondent had actual knowledge of Complainant’s rights in the VISTAPRINT mark at the time of registering the <vistaprint.us.com> domain name. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support this submission, it is implausible that Respondent was unaware of Complainant given the fame of the trademark. Further, the Complainant first used the VISTAPRINT mark in 1999, well before the Respondent registered the disputed domain name on April 13, 2022. See Compl. Annex 4. Therefore, as the Panel finds Respondent had actual knowledge of Complainant’s rights in its mark, this supports a finding of bad faith under Policy ¶ 4(a)(iii) which the Panel now makes.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vistaprint.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC ,
Panelist
Dated: January 23, 2023
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