Vera Bradley, Inc. v. Shlomo Icik
Claim Number: FA1308001514655
Complainant is Vera Bradley, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Shlomo Icik (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwverabradley.com>, registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 14, 2013; the National Arbitration Forum received payment on August 14, 2013. The Complaint was submitted in both Slovakian and English.
On August 15, 2013, HEBEI GUOJI MAOYI (SHANGHAI) LTD doing business as HEBEIDOMAINS.COM confirmed by e-mail to the National Arbitration Forum that the <wwwverabradley.com> domain name is registered with HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM and that Respondent is the current registrant of the name. HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM has verified that Respondent is bound by the HEBEI GUOJI MAOYI (SHANGHAI) LTD d/b/a HEBEIDOMAINS.COM regis-tration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Reso-lution Policy (the “Policy”).
On August 29, 2013, the Forum served the Slovakian language Complaint and all Annexes, including a Slovakian language Written Notice of the Complaint, setting a deadline of September 18, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s regis-tration as technical, administrative, and billing contacts, and to the attention of postmaster@wwwverabradley.com. Also on August 29, 2013, the Slovakian language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 Not-ices, 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 National Arbitration 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 is a leading designer, producer, marketer and retailer of accessor-ies for women, including handbags, luggage, eyewear, paper and gifts.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”), for the VERA BRADLEY trademark (including Registry No. 1,745,799, registered January 12, 1993).
Respondent registered the <wwwverabradley.com> domain name no earlier than November 29, 2012.
The domain name is confusingly similar to Complainant’s VERA BRADLEY mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complainant’s mark VERA BRADLEY mark in a domain name.
Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent’s employment of the domain name is presumed to be done for its own profit in the form of pay-per-click fees.
Respondent has neither any rights to nor any legitimate interests in respect of the domain name.
The domain name is an example of typo-squatting.
The domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Preliminary Issue: Language of the Proceedings
Pursuant to Rule 11(a), the Panel finds that the language requirement of the Policy has been satisfied through the filing of a Slovakian language Complaint and issuance of a Commencement Notification. In the absence of a Response from Respondent, the remainder of this proceeding will be conducted in English.
Complainant has rights in the VERA BRADLEY trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trade-mark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. For-um Feb. 16, 2007) (finding that a USPTO registration adequately dem-onstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Slovakia). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has reg-istered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that the <wwwverabradley.com> domain name is substant-ively identical to Complainant’s VERA BRADLEY trademark. The domain name contains the entire mark, adding only the letters “www” before the mark and Complainant’s mark and the generic top-level domain (“gTLD”) “.com.” after it. These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity or identity under the standards of the Policy. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding, under Policy ¶ 4(a)(i), that the use in a domain name of the prefix “www” followed by the trademark of a UDRP complainant, with no period separating them, did not distinguish the mark from the domain name derived from it).
And, as to the addition of a gTLD to Complainant’s mark in creating the domain name, see, for example, U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
[T]he addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <wwwverabradley.com> domain name, that Respondent is not sponsored by or affiliated with Complain-ant in any way, and that Complainant has not given Respondent permission to use Complainant’s VERA BRADLEY mark in a domain name. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “Shlomo Icik,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed do-main name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel there concluding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed <wwwverabradley.com> domain name in a manner that is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, in that Respondent employs the domain name to re-direct unsuspecting Internet users to its resolving website, which features generic links to third-party websites, some of which directly compete with Complainant’s business, from the operation of which directory website Respondent is presumed to receive pay-per-click fees. This employment of the domain name is indeed neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legit-imate noncommercial or fair use under ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use of a contested domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), where a UDRP respond-ent presumably received “click-through” fees for each consumer it redirected to other websites).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <wwwverabradley.com> domain name in the manner alleged in the Com-plaint disrupts Complainant’s business. This stands as proof of bad faith in the registration and use of the domain name as described in Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding, under Policy ¶ 4(b)(iii), that a respondent engaged in bad faith registration and use by using disputed domain names to operate a search engine with links to websites offering the products of a UDRP complainant and of that complainant’s commercial competitors, thus disrupting that complainant’s business).
We are also convinced by the evidence that Respondent’s use of a domain name which is substantively identical to Complainant’s VERA BRADLEY trademark in order to profit from the confusion caused among Internet users as to the possibil-ity of Complainant’s association with the domain name shows that Respondent registered and uses the domain name in bad faith as provided in Policy ¶ 4(b)(iv). See, for example, Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a web-site which features links to competing and non-competing commer-cial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, we find that the <wwwverabradley.com> domain name is an example of typo-squatting, the deliberate misspelling in a domain name of the mark of another as rendered in a web address in an attempt to capture traffic from Internet users who mistype the address of a mark holder’s website when entering it into a search bar. Typo-squatting is independent evi-dence of bad faith registration of a domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003):
Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wwwverabradley.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 8, 2013
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