The Complainant is Verimatrix, Inc. of San Diego, California, United States of America, represented by KPPB LLP, United States of America.
The Respondent is VistaPrint Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2015. On November 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on December 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 22, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 5, 2016. 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. 4. Factual Background
The Complainant is a computer software company based out of San Diego, United States of America. In particular, it provides computer software and related services for the creation and encryption of electronic digital signatures.
The Complainant has held a trade mark for the word mark VERIMATRIX (the "VERIMATRIX Mark") since at least 2005 in the United States, with a date of first use of August 31, 2002. The Complainant has also registered the domain name which redirects to the Complainant's website.
The Domain Name was created on August 5, 2015. It currently resolves to a site (the "Respondent's Website") that contains a graphical image containing the word "VistaPrint" below which the following words appear
"Websites are FREE at /websites
Create Your Website in Minutes
- Grow your business with an online presence
- Coordinate your brand-online and offline
No programming skills needed" 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's VERIMATRIX Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the VERIMATRIX Mark having registered numerous marks containing "verimatrix" including the VERIMATRIX Mark on December 6, 2015.
The Domain Name consists of the VERIMATRIX Mark in its entirety with the addition of the letter "i" after the second "i" in "verimatrix". This is a clear case of typosquatting.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use its marks. The Respondent does not use the Domain Name for a bona fide purpose. Rather, prior to the commencement of the proceeding, the Respondent used the Domain Name to create e-mail addresses that spoof the Complainant's e-mail addresses in an effort to convince the recipient of spoof e-mails to wire large sums of money to a fraudulent account. Such use does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name is being used to create phishing e-mails that target the Complainant by trying to persuade its company officers to wire money to it. Such conduct is deceptive and illegal and is evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the VERIMATRIX Mark, having registrations for VERIMATRIX as a trade mark in the United States.
The Domain Name consists of the VERIMATRIX Mark with the addition of the letter "i" after the second "i" in the word "verimatrix". The Panel finds that the addition of the "i" does not prevent a finding of confusing similarity between the VERIMATRIX Mark and the Domain Name. Moreover, an individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site run by the Complainant as the Domain Name differs from the VERIMATRIX Mark in a minor way. The Domain Name and the VERIMATRIX Mark are also phonetically identical. The Panel finds that the Domain Name is confusingly similar to the Complainant's VERIMATRIX Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VERIMATRIX Mark or a mark similar to the VERIMATRIX Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears from the evidence submitted by the Complainant that the Respondent is using the Domain Name to create spoof e-mails to officers of the Complainant, hoping that, as a result of confusion between the e-mail addresses of the Complainant, and the e-mail addresses of the Respondent, the officers of the Complainant would mistakenly transfer money to it. Such conduct is fraudulent and is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
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:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name' registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Domain Name is used to create e-mails accounts that have sent e-mails to the Complainant. Furthermore the VERIMATRIX Mark is a coined mark with no generic or descriptive meaning. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and any rights it had at the time in the VERIMATRIX Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to send spoof e-mails demanding the payment of money from the Complainant to an account that is operated by the Respondent. Such conduct is deceptive and in previous UDRP decisions has been found to be evidence of registration and use in bad faith; see, The Coca-Cola Company v. Marcus Steiner,WIPO Case No. D2012-1804. The Panel, noting that the circumstances set out in Policy, paragraph 4(b) are not exhaustive, finds that the Respondent is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: January 8, 2016
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