VistaPrint USA, Inc. v. Marketing Opportunitites
Claim Number: FA0902001246277
PARTIES
Complainant is VistaPrint USA, Inc. (“Complainant”), represented by Jessica Costa, Massachusetts, USA. Respondent is Marketing Opportunitites (“Respondent”), represented by Theresa Wyne, of Marketing Opportunities, Washington, USA.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <visteprint.com>, <vistaprit.com>, <visatprint.com>, <vistapint.com>, <vastaprint.com>, <vestaprints.com>, <vistaprant.com>, <vistaprent.com>, <vista-printer.com>, <vistaprinters.com>, and <vista-printers.com>, registered with Wild West Domains, Inc.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2009.
On February 5, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <visteprint.com>, <vistaprit.com>, <visatprint.com>, <vistapint.com>, <vastaprint.com>, <vestaprints.com>, <vistaprant.com>, <vistaprent.com>, <vista-printer.com>, <vistaprinters.com>, and <vista-printers.com> domain names are registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 3, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@visteprint.com, postmaster@vistaprit.com, postmaster@visatprint.com, postmaster@vistapint.com, postmaster@vastaprint.com, postmaster@vestaprints.com, postmaster@vistaprant.com, postmaster@vistaprent.com, postmaster@vista-printer.com, postmaster@vistaprinters.com, and postmaster@vista-printers.com by e-mail.
A timely Response was received and determined to be complete on February 17, 2009.
On
February 20, 2009, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel,
the National Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant is a leading supplier of online graphic design services and customized printing products. It has serviced over 13 million customers in 120 countries.
- Complainant has used its service mark, VISTAPRINT, in connection with said services and products continually since 1999. Complainant has obtained a United States Office of Patents and Trademarks (“USPTO”) registration for that mark.
- Respondent registered all of the disputed domain names well after Complainant had registered its service mark with the USPTO. All such names resolve eventually to Complainant’s website, a diversion for which Respondent presumably claims some form of remuneration through a paid search affiliate program.
- All of the disputed domain names are confusingly similar to Complainant’s VISTAPRINT mark as each of them is a common misspelling of that mark. Respondent is engaged in typosquatting, as each disputed domain name differs from Complainant’s mark by the change, deletion or addition of one or two letters and/or punctuation marks.
- Respondent has no legitimate interest or right in the disputed domain names. Respondent’s use of the names to redirect internet users to Complainant’s website is neither a legitimate interest nor a “bona fide offering of goods and services.” There is no evidence that Respondent has ever been known by any of the disputed domain names. Moreover, Respondent is in no way affiliated with or licensed by Complainant. Finally, Respondent’s use of said names does not constitute “noncommercial or fair use” of the same.
- Respondent has registered and is using the disputed domain names in bad faith. Respondent’s intentional use of the names that are similar to Complainant’s mark for Respondent’s commercial gain is evidence of bad faith. Respondent’s practice of typosquatting is further evidence of bad faith. Finally, Respondent’s knowledge of Complainant’s rights in its mark prior to Respondent’s registration of the confusingly similar disputed domain names is evidence of bad faith.
B. Respondent
- Respondent does not challenge Complainant’s contentions, but rather agrees to transfer all rights in the disputed domain names to Complainant.
FINDINGS
Complainant is an online company based in the United States that provides graphic design services and customized printing products worldwide. Complainant has used the service mark, VISTAPRINT, continuously in its operations since 1999 and owns a valid USPTO service mark registration for the same (Registration No. 2,443,418; March 6, 2001).
Respondent is the owner of the disputed domain names, and registered them as follows: <vistaprit.com> and <visatprint.com> on May 24, 2003; <vista-printer.com>, <vistaprinters.com>, and <vista-printers.com> on June 18, 2003; <vistapint.com>, on September 19, 2003; and <visteprint.com>, <vastaprint.com>, <vestaprints.com>, <vistaprant.com> and <vistaprent.com> on September 24, 2003. For commercial gain, Respondent uses the names to resolve to Complainant’s website without Complainant’s authorization.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(1) the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) the disputed domain names have been registered and are being used in bad faith.
In this case there is no need for the Panel, in rendering its decision, to engage in a full analysis to determine compliance with all of the elements required under the Policy. Complainant has demonstrated to the Panel’s satisfaction that Complainant has legitimate interests in all of the disputed domain names. Offering no defense against Complainant’s contentions, Respondent has agreed to an immediate transfer of those names. Therefore, in compliance with the desires of both parties and in the interest of judicial economy, the Panel decides that the disputed domain names should be so transferred to Complainant.
The Panel finds support for its ruling in prior UDRP cases, for example: Disney Enterprises, 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.”); Ladbrokes Betting & Gaming Ltd. v. Privacy Ltd. Disclosed Agent for Yolapt, D2007-1702 (WIPO January 7, 2008); and Citigroup Inc. v. Texas International Property Associates - NA NA, FA 1210904 (Nat. Arb. Forum Aug. 5, 2008).
DECISION
Having established that Complainant has a legitimate interest in the disputed domain name and that Respondent consents to the requested relief, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <visteprint.com>, <vistaprit.com>, <visatprint.com>, <vistapint.com>, <vastaprint.com>, <vestaprints.com>, <vistaprant.com>, <vistaprent.com>, <vista-printer.com>, <vistaprinters.com>, and <vista-printers.com> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: March 6, 2009
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