LD Products, Inc. v. VistaPrint Technologies Ltd
Claim Number: FA1510001642638
Complainant is LD Products, Inc. (“Complainant”), represented by Jeffrey M. Rosenfeld of KRONENBERGER ROSENFELD, LLP, California, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ldprooducts.com>, registered with Tucows Domains Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically October 15, 2015; the Forum received payment October 15, 2015.
On October 16, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <ldprooducts.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. verified that Respondent is bound by the Tucows Domains Inc. registration agreement and 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 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@ldprooducts.com. Also on October 16, 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 November 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant registered the LD PRODUCTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,306,070, registered October 9, 2007). Compl., p. 3. The mark is used in connection with the sale of printer supplies and accessories, as well as other computer-related accessories such as paper, electronic media, and camera cards. Respondent’s <ldprooducts.com> domain name is confusingly similar to the LD PRODUCTS mark as it incorporates that mark fully, while merely adding the letter “o,” eliminating spacing between words, and appending the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <ldprooducts.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent has not made a bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain. Instead, Respondent used the disputed domain to send fake emails in an attempt to phish for Complainant’s corporate information. In addition, Respondent used the disputed domain to advertise and provide a link to its commercial site, which is unrelated to Complainant’s business.
Respondent registered and used the <ldprooducts.com> domain name in bad faith. While Respondent advertises and includes a link to its own commercial site, the circumstances suggest attempt to make commercial gain, pursuant to Policy ¶ 4(b)(iv). Next, Respondent’s use of the disputed domain in connection with fake emails to solicit corporate information from Complainant in a phishing scheme constitutes non-enumerated bad faith under Policy ¶ 4(a)(iii). Lastly, under the totality of the circumstances, Respondent had knowledge of the LD PRODUCTS mark and Complainant’s rights in the mark.
B. Respondent’s Contentions in this Proceeding:
Respondent failed to submit a response. However, the Panel notes that Respondent registered the disputed <ldprooducts.com> domain September 14, 2015.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant registered the LD PRODUCTS mark with the USPTO (e.g., Reg. No. 3,306,070, registered October 9, 2007). See Compl., at Attached Annex 1.D. The mark is used in connection with the sale of printer supplies and accessories, as well as other computer-related accessories such as paper, electronic media, and camera cards. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights or legitimate interests in the <ldprooducts.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS lists registrant of record for the disputed domain as “VistaPrint Technologies Ltd” and that Respondent failed to submit any evidence for the record to support any finding in its favor under Policy ¶ 4(c)(ii), and therefore, this Panel finds no basis to rule in Respondent’s favor. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Further, Complainant urges that Respondent did not make a bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain. Instead, Respondent is alleged to have used the disputed domain to send fake emails in an attempt to phish for Complainant’s corporate information. See Compl., at Attached Decl. of Jorge Guerrero, at ¶ 9; see also Compl., at Attached Annex 1.H (“phishing” email). In addition, Respondent used the disputed domain to advertise and provide a link to its commercial site, which is unrelated to Complainant’s business. See Compl., at Attached Annex 1.I (Vistaprint advertisement w/hyperlink to <vistaprint.com/websites>); c.f., Compl., at Attached Annex 1.J (page resolving from <vistaprint.com/websites> hyperlink). Panels have found such use is not a bona fide offering of goods or services, or any legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also 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). Therefore, this Panel finds that Respondent failed to demonstrate rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and used the <ldprooducts.com> domain name in bad faith. While Respondent advertises and includes a link to its own commercial site (Annex I), the Panel notes indications of bad faith attraction, for commercial gain pursuant to Policy ¶ 4(b)(iv). See, e.g., Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). While Respondent presumably profits from its use of an advertisement and hyperlink, which redirects Internet users to its home site, the Panel also finds bad faith attraction, for commercial gain under Policy ¶ 4(b)(iv).
Next, Complainant contends that Respondent’s use of the disputed domain in connection with fake emails to solicit corporate information from Complainant in a phishing scheme constitutes non-enumerated bad faith under Policy ¶ 4(a)(iii). An example of such an email is included in Annex 1.H, Attached to the Complaint. While the email seems innocuous, the Panel finds the Declaration of Jorge Guerrero helpful, as Attached Annex 1. At ¶ 9 of his declaration, he states, “Employees of LD Products received similar fake emails sent using the Disputed Domain and ostensibly from Aaron Leon asking for payment information. While I saw those emails asking for payment information, they have been deleted.” Panels have held that use of emails incorporating a disputed domain name in connection with a phishing scheme is an indication of bad faith. See Juno Online Services, Inc. v. Carl Nelson, FA0402000241972 (Nat. Arb. Forum March 29, 2004) (complainant established bad faith registration and use where respondent used disputed domain for “phishing” scam, involving use of e-mails and pop-ups to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information). This Panel agrees with Complainant; Respondent used the <ldprooducts.com> domain name in a phishing scheme, which is evidence of bad faith per Policy ¶ 4(a)(iii).
Last, Complainant asserts that Respondent had knowledge of the LD PRODUCTS mark and Complainant’s rights in the mark. Panels have found evidence of actual knowledge to support a finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (holding, “[a]lthough 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.”). Here, while Respondent is alleged to have sent phishing emails to employees of Complainant’s business while using a handle incorporating a confusingly similar variation of the LD PRODUCTS mark, the Panel agree that the totality of the circumstances indicates that Respondent had actual knowledge per Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ldprooducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 19, 2015
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