Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd
Claim Number: FA1502001607039
Complainant is Acme Lift Company, L.L.C. (“Complainant”), represented by Ryan D. Ricks of SNELL & WILMER L.L.P, Arizona, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Hamilton, Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acrnelift.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2015; the Forum received payment on February 26, 2015.
On February 27, 2015, TUCOWS, INC. confirmed by e-mail to the Forum that the <acrnelift.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 March 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 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@acrnelift.com. Also on March 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 March 31, 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 uses the ACME LIFT mark in connection with its services as a wholesale re-rental company, with more than 800 boom lifts and telehandlers under management in the re-rental market across the United States and Canada. Complainant owns common law rights in the ACME LIFT mark due to its continuous and distinctive use of the mark as early as November 27, 1999. Respondent’s <acrnelift.com> domain name is confusingly similar to the ACME LIFT mark because the adjacent letters “r” and “n” are visually deceptive as they appear indistinguishable from the “m” in the mark. Further, the space between terms has been omitted and the generic top-level domain (“gTLD”) “.com” has been added to the end of the disputed domain name.
Respondent has no rights or legitimate interests in the <acrnelift.com> domain name. Respondent has not been commonly known by the disputed domain name or any variant of the ACME LIFT mark, and Complainant has not consented to Respondent’s use of the mark. Respondent is also not using the disputed domain in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Rather, the <acrnelift.com> domain name resolves to an inactive website that displays an advertisement to Respondent’s business.
Respondent is using the disputed domain name in bad faith. Respondent used the disputed domain name to impersonate the CFO of Complainant’s business in an attempt to profit through a fraudulent email scam.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Acme Lift Company, L.L.C., uses the ACME LIFT mark in connection with its services as a wholesale re-rental company, with more than 800 boom lifts and telehandlers under management in the re-rental market across the United States and Canada. Complainant owns common law rights in the ACME LIFT mark due to its continuous and distinctive use of the mark as early as November 27, 1999.
Respondent, VistaPrint Technologies Ltd, registered the <acrnelift.com> domain name on January 7, 2015. The <acrnelift.com> domain name resolves to an inactive website that displays an advertisement to Respondent’s business. Respondent used the domain name to send fraudulent emails impersonating Complainant’s CEO and including urgent instructions to process an electronic funds transfer.
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.”).
A complainant may establish a common law trademark through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. Complainant has used the ACME LIFT mark in connection with its services since November 27, 1999, and has developed consumer recognition of the mark. Therefore, Complainant has established common law rights in the ACME LIFT mark for the purposes of Policy ¶ 4(a)(i). See Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <acrnelift.com> domain name is confusingly similar to the ACME LIFT mark under Policy ¶ 4(a)(i). Specifically, the adjacent letters “r” and “n” are visually deceptive as they appear indistinguishable from the letter “m” in the mark. Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Further, the space between terms has been omitted and the generic top-level domain (“gTLD”) “.com” has been added to the end of the disputed domain name. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
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).
Respondent has no rights or legitimate interests in the <acrnelift.com> domain name. The WHOIS information lists “VistaPrint Technologies Ltd” as registrant of record. Complainant has not authorized Respondent to use the ACME LIFT mark. Respondent is not commonly known by the <acrnelift.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Respondent is not making a bona fide offering of goods or services through the <acrnelift.com> domain name, nor a legitimate noncommercial or fair use. The disputed domain name is used to advertise and promote Respondent’s own commercial website. Respondent’s use of the disputed domain name to divert Internet users to its own commercial business does not constitute 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 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) see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Respondent’s registration and use of the <acrnelift.com> domain name for a fraudulent e-mail scam impersonating Complainant for illegal commercial gain constitutes passing off. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Respondent’s use of the <acrnelift.com> domain name to pass itself off as Complainant in fraudulent emails for commercial gain shows Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent’s use of the <acrnelift.com> domain name to pass itself off as Complainant and to attempt to defraud Complainant through fraudulent emails is bad faith under Policy ¶ 4(a)(iii). See SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA 1581255 (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.”).
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 <acrnelift.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 11, 2015
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