NATIONAL ARBITRATION FORUM
Vanity Shop of Grand Forks, Inc. v. Domain Administrator / Vertical Axis Inc.
Claim Number: FA1412001595932
Complainant is Vanity Shop of Grand Forks, Inc. (“Complainant”), represented by Antoinette M. Tease, Montana, USA. Respondent isDomain Administrator / Vertical Axis Inc. (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vanityshop.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The Hon. Nelson A. Diaz, the Hon. Neil Brown Q.C., and David E. Sorkin (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2014; the National Arbitration Forum received payment on December 18, 2014.
On December 18, 2014, FABULOUS.COM PTY LTD. confirmed by email to the National Arbitration Forum that the <vanityshop.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 December 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2015 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 firstname.lastname@example.org. Also on December 19, 2014, 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.
A timely Response was received and determined to be complete on January 8, 2015.
On January 15, 2015, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Nelson A. Diaz, the Hon. Neil Brown Q.C., and David E. Sorkin (Chair) as Panelists.
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 Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a retail seller of clothing, jewelry, hair accessories, beauty products, and other goods, both online and through retail stores. Complainant uses VANITY in connection with this business, and claims rights in this mark by virtue of numerous U.S. trademark registrations. In support thereof, Complainant provides a list of trademark registrations for VANITY and related marks, including the registration number, the goods or services, and the international class number for each; however, the list does not include the dates on which the registrations issued or of first use of the marks, nor does Complainant provide copies of registration certificates.
Complainant states that it currently has 171 retail stores in 26 states throughout the United States, and has used the VANITY mark for its stores since 1957. Complainant launched a website at <vanityshops.com> in 1998, and sold products on this site from 1999 to 2003; Complainant launched a website at <evanity.com> in 2008. Complainant documents these statements with a redacted copy of an affidavit by its Chief Financial Officer from May 2012, apparently prepared and submitted in connection with a previous UDRP proceeding. Complainant apparently recently switched its online presence to <vanity.com> after acquiring that domain name in late 2013. Complainant claims that the VANITY brand is well known in the fashion/apparel industry, particularly among young women.
Complainant contends that the disputed domain name <vanityshop.com> is identical or confusingly similar to its 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. In support thereof, Complainant alleges that Respondent is using the disputed domain name to direct consumers to its website that includes “related links” and “sponsored listings” relating to clothing, fashion, and jewelry, among other things; and that Respondent does not actually offer any goods or services for sale itself, but rather directs visitors to third-party sites. Complainant asserts that “it is virtually inconceivable” that Respondent was not aware of Complainant when it registered or acquired the disputed domain name, given Vanity’s widespread brick-and-mortar and online presence; and that Respondent’s use of the disputed domain name is causing confusion among consumers as to whether Respondent is affiliated with Complainant, at a minimum including initial interest confusion that exists until consumers realize they are not on Complainant’s website, resulting in lost sales to Complainant.
Respondent states that it registered the disputed domain name in January 2004, after its prior owner failed to renew it and allowed the registration to lapse. Respondent claims that it registered the domain name because it was an available descriptive word domain name composed of two common words in the English language; that Respondent has registered hundreds or thousands of other domain names for similar reasons; and that such common-word domain names have inherent commercial value because they are easy to remember. Respondent lists many other domain names it has registered that include the word “vanity” or “shop,” including <bathroomvanityfurniture.com>, <bathroomvanityset.com>, <thefurnitureshop.com>, <travelshop.com>, and others. Respondent states that its goal is to “develop or otherwise monetize” domain names in order to generate revenue, and that in the interim it hosts domain names with domain name parking services in exchange for a share of advertising revenues. The disputed domain name is hosted with Hitfarm.com, which places pay-per-click advertising links that are auto-generated by Google based upon the words “vanity” or “shop.”
Respondent disputes Complainant’s contention that the disputed domain name is similar to a mark in which Complainant has rights. Respondent notes that Complainant’s trademark is for VANITY standing alone, and that Respondent does not appear to have a registered trademark for VANITY SHOP. Respondent argues that the disputed domain name is not confusingly similar to VANITY, and that trademark law does not confer upon Complainant exclusive rights to the word “vanity,” especially when used for goods or services wholly unrelated to Complainant. Respondent distinguishes its use of the disputed domain name from Complainant’s field, noting that Respondent’s use, relating to the common meaning of “vanity” and “shop,” is for shopping, furniture, and décor; while Complainant uses the VANITY mark in connection with jewelry, lotions, handbags, hair items, and certain clothing.
Respondent further contends that it has rights and a legitimate interest in the disputed domain name, and denies that it registered or is using the domain name in bad faith. In support thereof, Respondent argues that registration of descriptive term domain names establishes a legitimate interest, provided the domain name was not registered with a trademark in mind, and notes that several previous UDRP panels have expressly recognized the bona fide nature of Respondent’s practices. Respondent insists that it registered the disputed domain name without any knowledge of Complainant’s VANITY mark, and argues that absent evidence that it knew of Complainant’s mark at that time, bad faith cannot be proved. Respondent denies that Complainant was known worldwide in 2004, and argues that Complainant did not even possess a registered trademark until 2009. (The Panel notes that some of the marks listed in Complainant’s submission do appear to predate the disputed domain name, although this fact is not apparent from the submission itself, since it omits registration and first use dates for Complainant’s marks.) In addition, Respondent claims that its use of the disputed domain name has never targeted Complainant or its products, precluding a finding of bad faith use.
Finally, Respondent objects to Complainant’s delay in challenging Respondent’s registration and use of the disputed domain name, noting that it has owned the disputed domain name for 11 years. Respondent also notes that Complainant’s counsel appears to have filed various trademark applications in 2009 and again in mid-2014, yet took no action against Respondent at either of those times. Respondent states that Complainant’s delay “rises to the level of prejudicial and unreasonable delay” and gives rise to an inference that Complainant did not believe that Respondent registered the domain name in bad faith.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has not proved that Respondent lacks rights or legitimate interests in respect of the disputed domain name, nor that the disputed domain name was registered and has been 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.
Identical and/or Confusingly Similar
The disputed domain name corresponds to Complainant’s registered mark VANITY, with the addition of the generic term “shop” and the “.com” top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant’s mark. See, e.g., Amazon Technologies, Inc. v. Caffey, FA 1576228 (Nat. Arb. Forum Sept. 22, 2014) (finding <kindlestore.com> confusingly similar to KINDLE); DaimlerChrysler A.G. v. Drummonds, D2001-0160 (WIPO June 18, 2001) (finding <mercedesshop.com> confusingly similar to MERCEDES). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Rights or Legitimate Interests
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent is using the disputed domain name for a website comprised of pay-per-click links. The images on the site and most of the links relate to furniture, but there are also links for clothing, fashion, and other categories. Respondent explains the links as having been auto-generated by a third party based upon the terms “vanity” and “shop.” The Panel notes that the word “vanity” has multiple common meanings, including excessive pride in one’s appearance and a bathroom cabinet or dressing table.
Where a domain name is comprised of common dictionary words that also correspond to a trademark, its use for a PPC link page can give rise to legitimate interests if the page does contains links related to the common meaning of the words, and not to their trademark sense. See, e.g., Havanna S.A. v. Brendhan Hight, Mdnh Inc, D2010-1652 (WIPO Nov. 26, 2010); CEAT Ltd. v. Vertical Axis Inc., D2011-1981 (WIPO Feb. 20, 2012). Here, a few of the links on Respondent’s site relate to fields in which Complainant has trademark rights; but the Panel considers it more likely than not that those links were generated based solely upon common non-trademark meanings of the word “vanity” (and possibly “shop” as well) and not the VANITY mark.
Complainant bears the ultimate burden of proof on this issue. The Panel finds that Complainant has not met this burden.
Registration and Use in Bad Faith
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, 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.” The requirements of registration and use in bad faith are conjunctive: there must be bad faith both at the time of registration and subsequently. See, e.g., Mile, Inc. v. Burg, D2010-2011 (WIPO Feb. 7, 2011).
To have registered a domain name in bad faith, Respondent must have been aware of Complainant or its mark when it registered the domain name, and the registration must in some way have been targeted at Complainant or its mark. See, e.g., Kanal, Inc. v. Domain Admin, FA 1478238 (Nat. Arb. Forum Feb. 12, 2013). Some Panelists have applied a heightened “willful blindness” standard, finding bad faith where a registrant turns a blind eye to third-party trademarks through failure to conduct adequate searches. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.4 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/.
In this case, the disputed domain name consists of common dictionary words, and Respondent claims that it registered the domain name solely for that reason. The Panel considers that claim to be plausible and consistent with the evidence. Even if Complainant’s mark is well known in the United States, it is not clear that it was true back in 2004, when Respondent registered the domain name. Furthermore, there is no evidence that Complainant’s mark has ever been well known outside the United States, while Respondent is located in Barbados. Finally, Complainant asserts rights only in VANITY, not VANITY SHOP, and even today a search of U.S. trademarks corresponding to VANITY SHOP is unlikely to yield any references to Complainant or its mark. For these reasons, the Panel is unwilling to infer that Respondent was aware of Complainant or its mark when Respondent registered the domain name in 2004, nor that Respondent would have learned of Complainant’s existence had it performed a trademark search at that time.
The Panel therefore concludes that Complainant has failed to prove 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 DENIED.
Accordingly, it is Ordered that the <vanityshop.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Chair
The Hon. Nelson A. Diaz, Panelist
The Hon. Neil Brown Q.C., Panelist
Dated: January 20, 2015