Designs Around You, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1109001409501
Complainant is Designs Around You, Inc. (“Complainant”), represented by Kevin Keener of Keener, McPhail, Salles, LLC, Illinois, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), represented by Jessica Costa of Vistaprint USA Incorporated, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <designedaroundyou.com>, registered with Tucows, 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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2011; the National Arbitration Forum received payment on September 29, 2011.
On September 29, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <designedaroundyou.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 September 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2011 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@designedaroundyou.com. Also on September 29, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on October 19, 2011.
Complainant submitted a timely Additional Submission that was received on October 24, 2011.
On October 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
1. it owns the trademark to DAY DESIGNS AROUND YOU, a logo showing the letters “D.A.Y.” in the background and the words “DESIGNS AROUND YOU” displayed prominently in the foreground, since December 25, 2001, used the mark continuously and consistently since that time and that the registration is current and valid;
2. it owns common law rights to “DESIGNS AROUND YOU” and was incorporated on October 2, 1995;
3. its’ trademark is suggestive in that it requires thought and perception to attach the term DESIGNS AROUND YOU to the services provided entitling it to greater protection than descriptive type marks;
4. the domain name is identical or confusingly similar to its trademark being only different by two letters, simply removed the “S” and added “ED”, Respondent offers services directly covered by the class of goods protected in Complainant’s registration, such as business cards, flyers, postcards, banners, posters, promotional designs, and websites, services directly covered by Complainant’s services of “namely creating and maintaining web sites for others, designing and implementing web sites for others, commercial art design, graphic art design, and desktop publishing for others;”
5. Respondent has no legitimate rights or interests in the domain name;
6. Respondent has registered and is using the domain name in bad faith;.
B. Respondent
Respondent contends that:
1. it is a subsidiary of Vistaprint Limited, an international provider of printed products and electronic services based in Bermuda, a subsidiary of Vistaprint N.V., a publicly traded company based in the Netherlands and it provides administrative, technical and other services for customers of Vistaprint Limited;
2. it hosts websites, primarily for small businesses and has developed highly automated self-service tools that allow a customer with little or no experience with websites to create their own personalized site quickly and easily, and provides automated self-service tools allowing a hosting customer to select a desired domain name for the customer’s site and to request Respondent to register the domain name;
3. it appears in the WHOIS record as the owner of the domain name, but the domain names acquired for Respondent’s customers are chosen by Respondent’s customers and it has no interest in or control over the goods or services offered by the customer on the hosted site;
4. all website hosting customers of Respondent are required to agree to Respondent’s Web Site Terms and Conditions which includes the agreement by the customer that a requested domain name will not infringe the rights of any third party and will not be used for any unlawful purpose;
5. its policy and practice is deactivate domain names if Respondent becomes aware that a domain name requested by a customer infringes the legitimate trademark rights of another party;
6. it lacks knowledge or information sufficient to form a belief as to the truth or falsity of the allegations set forth in the Complaint because Respondent merely registers and hosts the website on behalf of Respondent’s customers. The party who has the most knowledge about the circumstances surrounding registration of the disputed domain name and the legitimacy of rights in the domain name, and further who stands to lose the domain name, is Respondent’s customer. Respondent’s customer is not now a party to this Complaint and therefore cannot respond to this Complaint. Respondent cannot respond on behalf of the customer owning this domain name. The true party holding the domain name, Respondent’s customer should be named as Respondent to allow her to respond to the Complaint;
7. the contact information for Respondent’s customer who registered the domain name and is the party posting content to the website at the domain name is:
Dedra
Bailey
7620 St. Stephens Ct.
Orlando, FL 32835
Tel: 407-394-5172
Email: dgbaileych@aol.com
C. Additional Submissions
Complainant further contends that:
1. Respondent has submitted no evidence rebutting the case established by Complainant, instead relying on a statement of Respondent’s lack of information or knowledge. Respondent’s failure to present any evidence is insufficient to rebut the prima facie case established by the Complainant;
2. Respondent’s statement does not relieve it of the duty to comply with the UDRP. The WHOIS registration lists VistaPrint Technologies Ltd. as registrant of the domain. As registrant of the domain, Respondent agreed to abide by the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999;
3. Respondent’s reliance on a contractual relationship with its customer does not negate the fact that Respondent is the actual registrant of the domain at issue. UDRP Supplemental Rule l(d) states, “The Holder of a Domain Name Registration,’ as used in The Rules (Rule 1), means the single person or entity listed in the WHOIS registration information at the time of commencement.” At the time of commencement the WHOIS registration information listed VistaPrint Technologies Ltd. as the Respondent. Thus, Respondent is the proper party to this proceeding;
4. The registration was renewed on October 2, 2011 after the commencement of this proceeding yet. Respondent has failed to disable the site in accordance with its own terms;
5. In the event that Respondent’s customer is found to be the true owner of the domain and the correct party to the proceeding, Respondent’s customer did in fact have proper notice of this proceeding and had the opportunity to respond. The Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 30, 2009 specify the methods by which a Complainant can provide notice to a Respondent. Section 2(a)(ii)(C) states that a Complainant can provide notice by sending an email of the complaint in electronic format to “any e-mail address shown or e-mail links on that web page.” The “About Us” page of the domain in question shows an email address ofdesignedaroundu@aol.com. At the time of filing the Complaint for this action, Complainant’s legal representative complied with Rule 2(a)(ii)(C) by emailing the Complaint, the UDRP Complaint transmittal sheet, and the Exhibits to the Complaint to designedaroundu@aol.com;
6. Respondent registered the domain on October 16, 2009, well after Complainant had already established priority in common law rights and had registered the trademark;
7. Respondent has no rights or legitimate interests in the use of the domain name. Respondent is not commonly known by the domain name;
8. A Google search for “designed around you” returns no mention of Respondent or even the infringing site but returns a link to Complainant’s website, showing that Complainant is better known for the term “designed around you” than even Respondent;
9. The domain is clearly for commercial purposes, containing next to no content which could be deemed fair use of the domain name;
10. Respondent is offering services which are in direct competition with the services provided by Complainant; such registration is clearly for the purpose of misleadingly diverting consumers for commercial gain;
11. Registration of the domain name should be considered as having been done in bad faith since it is primarily for the purpose of disrupting the business of a competitor. Respondent offers the services of graphic design, print media, and website design. These services are in direct competition to the services offered by Complainant and covered by Complainant’s trademark registration. Such services are not bound by geography, an individual or company can provide these services to anyone anywhere, unrestricted by the physical location of the client. Therefore, Complainant and Respondent can be direct competitors for clientele regardless of the physical location of either Complainant or Respondent;
12. Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name is confusingly similar to a trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Names.
3) Complainant has met its burden to prove by a preponderance of the relevant,admissible evidence that Respondent’s Domain Names have been registered and are being used 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:
(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.
Preliminary Issue: Incorrect Respondent/Proxy Respondent
Respondent claims that it is not the actual and true owner-operator of the disputed domain name nor of the site to which it resolves. Respondent states that it is in the business of registering, designing, and maintaining websites on behalf of its clients. Respondent also states that as a part of this business arrangement, it is listed as the registrant of the domain names it administers. Respondent claims the actual owner is “Dedra Bailey.” Respondent also provides a physical address and contact e-mail for Ms. Bailey, which would allow Complainant to properly notify her of its claim regarding the disputed domain name. Respondent protests that it is not able to offer a sufficient defense to the claim filed against it due to the nature of this business relationship with Ms. Bailey and as a result, the Panel should dismiss the claim with leave to re-file against Ms. Bailey or allow Complainant the opportunity to amend its Complaint, adding Ms. Bailey as the correct Respondent and removing the current Respondent from the Complaint. The UDRP Rules and the Forum’s Supplemental Rules provide that Respondent is the entity listed in WHOIS, therefore the Forum required Complainant to list VistaPrint as Respondent.
The Panel shall proceed against the Respondent, as listed in the WHOIS.
UDRP Supplemental Rule 1(d) states that the “‘holder of a domain name registration’ means the single person or entity listed in the WHOIS registration information at the time of commencement.” The domain name registration was renewed on October 2, 2011, after the commencement of the current proceedings on September 29, 2011. Even if Respondent’s customer is found to be the true owner of this disputed domain name and the correct party to the proceeding, she did have notice of the proceeding and the opportunity to respond as an electronic form of the Complaint was e-mailed to the e-mail address listed on the “About Us” page of the resolving website.
Complainant has established rights in the DAY DESIGNS AROUND YOU mark by registering that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,522,019 registered December 25, 2001). Registrant has rights in said mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Therefore, the Panel finds that Complainant has established its rights in the DAY DESIGNS AROUND YOU mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO.
According to Complainant, the disputed domain name <designedaroundyou.com> includes the distinctive portion of Complainant’s mark, merely changing the first term of the mark from “designs” to “designed”, adding the generic top-level domain (“gTLD”) “.com” and removing the spaces from the mark. The Panel finds that the changes made fail to distinguish the disputed domain name from Complainant’s DESIGNS AROUND YOU mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark).
The Respondent’s <designedaroundyou.com> domain name is confusingly similar to its DAY DESIGNS AROUND YOU mark. The disputed domain name ostensibly includes a majority of the mark, omitting the term “day” and the spaces in the mark, while adding the gTLD “.com.” The disputed domain name also appears to change the term “designs” to “designed.” The Panel finds that these changes do not remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i) other than to summarily deny the charges leveled by Complainant.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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 claims that Respondent is not commonly known by the disputed domain name. Complainant points to the WHOIS information to support its claim. The WHOIS information identifies the registrant of the disputed domain name as “VistaPrint Technologies Ltd.” Respondent does not claim to be commonly known by the disputed domain name nor does it offer evidence to the contrary. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also claims that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent is a competitor in the graphic design, print media, and website design industry. According to Complainant, the disputed domain name resolves to a website where Respondent offers its services, along with other links and advertisements. The Panel finds that Respondent’s competing use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant asserts that Respondent is disrupting its business by offering competing services. According to Complainant, the disputed domain name resolves to a website where Respondent offers services which compete directly with Complainant’s own services. The Panel finds that Internet users may arrive at the website and utilize Respondent’s company for its printing and design needs rather than those offer by Complainant. The Panel finds that this use disrupts Complainant’s business and as such, is affirmative evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant also asserts that Respondent is gaining commercially from the disputed domain name evidencing bad faith registration and use on the part of Respondent. The Panel finds that Respondent generates revenue from the sale of these services to Internet users. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because it is attempting to gain commercially from the confusingly similar domain. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Regardless of any third-party customer relationship alleged by Respondent, as the registrant of the disputed domain name, Respondent agreed to abide by the UDRP policy that states it is the registrant’s “responsibility to determine whether [the] domain name registration infringes or violates someone else’s rights.” Respondent’s position that it registered the disputed domain name on behalf of a third-party customer does not relieve Respondent of its responsibility to ensure no infringement. Respondent should be aware that its internal policies give it a duty to guard against infringement as the issue arose in a prior case, Maxim Healthcare Servs., Inc. v. VistaPrint Techs. Ltd., D2009-1168 (WIPO Oct. 20, 2009), with very similar circumstances. Based on these additional arguments submitted by Complainant, the Panel concludes the circumstances support a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii) other than to summarily deny the charges leveled by 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 <designedaroundyou.com> domain name be TRANSFERRED from Respondent to Complainant.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: November 4, 2011
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