Vanity Shop of Grand Forks, Inc. v. Adolfo Meza / Blaze's Shop
Claim Number: FA1701001712133
Complainant is Vanity Shop of Grand Forks, Inc. ("Complainant"), represented by Peter J. Ims of Westman, Champlin & Koehler, P.A., Minnesota, USA. Respondent is Adolfo Meza / Blaze's Shop ("Respondent"), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanityshop.co>, registered with Tucows Domains 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2017; the Forum received payment on January 12, 2017.
On January 12, 2017, Tucows Domains Inc. confirmed by email to the Forum that the <vanityshop.co> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 January 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@vanityshop.co. Also on January 13, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 13, 2017, the Forum received by email correspondence from Respondent stating it had removed all content from the disputed domain name. The correspondence did not amount to a Response or consent to transfer.
On February 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 sells clothing and accessories in retail stores and online under the VANITY mark. Complainant owns various U.S. trademark registrations for VANITY and related marks. These include registrations for VANITY as a word mark for clothing and for retail clothing stores, with a date of first use of 1957, and a word-and-design mark comprised of a fleur-de-lis with the word VANITY.
Respondent registered the disputed domain name <vanityshop.co> through a privacy registration service in September 2016. The domain name resolves to a website that displays copies of Complainant's word-and-design mark and offers various clothing and accessory items for sale. Complainant states that Respondent is neither associated with Complainant nor authorized to use its VANITY mark. Complainant provided evidence of complaints received from customers who had purchased goods through Respondent's website, believing that it was operated by Complainant.
Complainant contends on these grounds that the disputed domain name <vanityshop.co> is identical and confusingly similar to Complainant's VANITY mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is 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.
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 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 (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.").
The disputed domain name <vanityshop.co> combines Complainant's registered VANITY mark with the generic term "shop" and the ".co" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark for purposes of the Policy. See, e.g., C & J Clark Int'l Ltd. v. Karen Brand, DCO2015-0035 (WIPO Dec. 23, 2015) (finding <clarksshop.co> confusingly similar to CLARKS); Vanity Shop of Grand Forks, Inc. v. Domain Administrator / Vertical Axis Inc., FA 1595932 (Forum Jan. 20, 2015) (finding <vanityshop.com> confusingly similar to VANITY). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to promote the sale of competing products, using Complainant's marks in a manner likely to confuse potential customers. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., NSK LTD. v. Chdd Baboo, FA 1707414 (Forum Jan. 17, 2017).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name incorporating Complainant's mark and its use of that domain name to sell competing products by creating confusion with Complainant are indicative of bad faith under these provisions of the Policy. See, e.g., Monster Energy Co. v. Timothy Davis, FA 1654480 (Forum Feb. 3, 2016) (finding bad faith registration and use under similar circumstances). Respondent's attempt to shield his identity through the use of a privacy service, although not itself a conclusive indicator of bad faith, lends further support to this conclusion. See id. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vanityshop.co> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 14, 2017
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