Complainant is E2Interactive, Inc. of Atlanta, Georgia, United States of America ("US" or "United States"), represented by Bates & Bates LLM, United States.
Respondent is Jennifer Hart of Decatur, Georgia, United States / Donna Burton of Greensboro, North Carolina, United States.
The disputed domain names <onevaniilla.net> and <onevanillagiftcard.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2017. On August 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 13, 2017.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on September 24, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant provides pre-paid debit and stored value card services through its ONE VANILLA registered mark, including United States Trademark Registration No. 4050400, registered on November 1, 2011. Complainant owns registered marks for ONE VANILLA, VANILLA GIFT CARD, and related marks and pending applications throughout the world. Complainant also owns the domain names <onevanilla.com> and <vanillaprepaid.com>, through which it offers its cards and services.
The disputed domain names, <onevaniilla.net> and <onevanillagiftcard.com>, were registered on September 26, 2016 and October 4, 2016, respectively.
Prior to August 16, 2017, <onevanillagiftcard.com> automatically linked to <onevaniilla.com>, a domain name not the subject of this administrative proceeding. The website to which the domain name <onevaniilla.com> resolved displayed an exact copy of Complainant's website, "www.onevanilla.com". On August 16, 2017, <onevanillagiftcard.com> began to re-route to <onevaniilla.net> instead of to <onevaniilla.com>, and the website to which <onevaniilla.net> resolved displayed an exact copy of Complainant's website, "www.onevanilla.com". As of August 17, 2017, <onevanillagiftcard.com> had been suspended and no longer linked to <onevaniilla.net>., but the website at the disputed domain name <onevaniilla.net> is still a copy of Complainant's website, "www.onevanilla.com".
Complainant attempted numerous times to have the websites at the disputed domain name <onevanillagiftcard.com> and the domain name <onevaniilla.com> taken down. Even when successful, the websites were immediately restored with a different web hosting service, and the domain name <onevaniilla.com> was replaced with the disputed domain name <onevaniilla.net>.
Complainant asserts that it has rights in the ONE VANILLA mark. It contends that the disputed domain names are confusingly similar to Complainant's mark. The only difference between Complainant's mark and the disputed domain name <onevaniilla.net> is the misspelling of the mark in the disputed domain name. The only difference between Complainant's mark and the disputed domain name <onevanillagiftcard.com> is the inclusion of the word "giftcard". Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that Respondent registered and uses the disputed domain names in bad faith.
Respondent did not reply to Complainant's contentions.
Although neither the Policy nor the Rules explicitly provides for the consolidation of multiple respondents, as reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2, "[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties" and "[p]rocedural efficiency would also underpin panel consideration".
In the present administrative proceeding, the Panel notes the following circumstances:
- There are similarities in the WhoIs records for the registrant of the disputed domain name <onevanillagiftcard.com> and the domain name <onevaniilla.com>.
- The website to which the disputed domain name <onevaniilla.net> resolves is a copy of the website to which the domain name <onevaniilla.com> resolved.
- The disputed domain name <onevanillagiftcard.com> redirects to the disputed domain name <onevaniilla.net>.
- The disputed domain names <onevanillagiftcard.com> and <onevaniilla.net> are registered with the same Registrar, use the same web hosting service, and target Complainant.
- The Respondent has neither submitted a response nor otherwise participated in this administrative proceeding.
In view of the foregoing, the Panel finds on the balance that the disputed domain names appear to be subject to common control and the consolidation would be procedurally efficient and fair and equitable to the Parties. Additionally, the Panel notes that the named respondents are referred to collectively as "Respondent" throughout the Decision.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns various trademark and service mark registrations for the ONE VANILLA mark. Both disputed domain names are confusingly similar to Complainant's ONE VANILLA mark, as both contain Complainant's ONE VANILLA mark in its entirety. The only difference between Complainant's mark and the disputed domain name <onevanillagiftcard.com> is the addition of the common words "gift" and "card". Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from a complainant's mark or preclude a finding of confusing similarity. See, e.g., Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Additionally, the disputed domain name <onevaniilla.net> is confusingly similar to Complainant's mark because the misspelled mark remains the dominant or principal component of the domain name. Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
Accordingly, the Panel finds that Complainant has rights in the ONE VANILLA mark and that the disputed domain names are confusingly similar to Complainant's mark. Complainant has established the first element of paragraph 4(a) of the Policy.
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the ONE VANILLA mark and has not authorized Respondent to register and use the disputed domain names <onevaniilla.net> and <onevanillagiftcard.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the ONE VANILLA mark. Respondent is not known under the mark. Respondent has made no showing that it has any rights or legitimate interests in using the disputed domain names or makes a bona fide offering of goods or services using the disputed domain names. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain names.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy states that:
"for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
[…]
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your web site or location or of a product or service on your web site or location."
This list is not exhaustive.
It is difficult to conceive that Respondent did not know of Complainant's mark when it registered the disputed domain names. As set forth above, the ONE VANILLA products and services are protected by various US and international trademark registrations. Complainant's registration and use of the ONE VANILLA mark for its products and services occurred before Respondent registered the disputed domain names <onevanilagiftcard.com> and <onevaniilla.net>. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's mark when Respondent registered the disputed domain names, and therefore registered them in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests".
It appears that Respondent has engaged in "phishing", which constitutes bad faith, since it is intended to steal valuable information and money. "Phishing is the criminally fraudulent process of attempting to acquire sensitive information such as usernames, passwords and credit card details by masquerading as a trustworthy entity in an electronic communication. Phishing … often directs users to enter details at a fake website whose look and feel are almost identical to the legitimate one." Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001.
Respondent blatantly copied Complainant's entire website, including Complainant's mark, and displayed it on the pages to which the disputed domain names reverted. This is incontrovertible evidence that Respondent intended to disrupt Complainant's business and to divert web traffic intended for Complainant by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. See Telcel, C.A. v jerm and Jhonattan Ramirez, WIPO Case No. D2002-0309. Thus, Respondent has used Complainant's mark in bad faith under paragraph 4(b)(iv) of the Policy, and thus Complainant meets the third criterion of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <onevaniilla.net> and <onevanillagiftcard.com> be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: October 8, 2017