WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mather Lifeways Corporation v. VistaPrint Technologies Ltd
Case No. D2015-2352
1. The Parties
The Complainant is Mather Lifeways Corporation of Evanston, Illinois, United States of America (“U.S.”), represented by DLA Piper US LLP, U.S.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <matherlifevvays.com>, <matherlifeways.net> and <matherrlifeways.com> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2015. On December 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date 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 January 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2016.
The Center appointed Gunnar Karnell as the sole panelist in this matter on February 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 disputed domain names were registered as follows: <matherrlifeways.com> on August 25, 2015, <matherlifevvays.com> on August 27, 2015, and <matherlifeways.net> on October 13, 2015. They will here jointly be referred to as “the disputed domain names”.
The Complainant is the owner of the U.S. service mark MATHER LIFEWAYS, Registration No. 2769559, registered on September 30, 2003. Since May 2000 the Complainant uses its trademark MATHER LIFEWAYS in connection with various services, including senior adult residence services and living facilities, retirement home and nursing home services for senior adults. It also owns, operates and/or manages senior residence facilities.
The Complainant also owns and operates the website “www.matherlifeways.com”, registered on May 10, 2000, where users can find detailed information about senior living facilities and various other services offered by the Complainant in connection with its trade mark.
The Complainant requests that the disputed domain names be transferred to the Complainant.
5. Parties’ Contentions
The Complainant and its trademark MATHER LIFEWAYS are well known in the public by virtue of extensive media coverage, press releases, promotional activities, etc.
The Respondent has not been authorized to register or use the disputed domain names. The Complainant does not maintain any licensing relationship with the Respondent, who registered the disputed domain names, of which one is identical, both others nearly identical and all three confusingly similar to the Complainant’s trademark. The disputed domain names were registered well over a decade after the Complainant began its use of and filed its registration for its trademark. Differences shown by the disputed domain names from the Complainant’s trademark do not dispel the confusion. Internet users are likely to be confused as to whether an association exists between the disputed domain names and the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain names consistent with paragraph 4(c) of the Policy. There is no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain. Instead, the Respondent has deliberately chosen domain names that are identical or nearly so to the Complainant’s trademark to achieve commercial gain by misleadingly diverting consumers. The Respondent has made no bona fide offering of goods or services in connection with the disputed domain names. The Complainant’s employees have received emails requesting wire transfers and money from email addresses associated with the Respondent. Currently, the disputed domain names resolve to a website for “VistaPrint”, offering free websites.
The Respondent has been a part in a significant number of recent UDRP proceedings, where a disputed domain name has been shown to incorporate another’s well known trademark in use of the domain name to engage in phishing activities, also involving wire frauds and other criminal activity. All these domain names have been ordered to be transferred to the respective complainant. They were all registered with the Registrar of the presently disputed domain names.
The Respondent has registered and is using the disputed domain names in bad faith. It registered and is using the disputed domain names to intentionally mislead and confuse the Complainant’s employees and others into believing that the Respondent is the Complainant and/or is affiliated with the Complainant, this in order to perpetrate a phishing scheme to obtain individuals’ personal and confidential information and/or money. The typosquatting mirrored in two of the disputed domain names, by adding the extra letter “r” in one of them and putting two “v”, in exchange for “w” in the other, demonstrates the Respondent’s registration and use in bad faith of both disputed domain names, as does the complete inclusion of the Complainant’s trademark in the disputed domain name <matherlifeways.net>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The factual foundation of the Complainant’s contentions, as presented in great detail by the Complainant, while supporting its uncontradicted claims by written evidence and ample reference to earlier UDRP case decisions, allows the Panel to deal summarily with the case.
A. Identical or Confusingly Similar
The Panel finds that notwithstanding differences, indicated as irrelevant by the Complainant, between the Complainant’s trademark MATHER LIFEWAYS and the disputed domain names, these are confusingly similar to the Complainant’s registered trademark in which the Complainant has rights. The registration of the trademark took effect well before the registrations of the disputed domain names.
The Panel finds that the Complainant has made out the first limb of the Policy.
B. Rights or Legitimate Interests
The Complainant has, based on its contentions as summarized at 5.A. above, established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has or had any rights or legitimate interests in respect of the disputed domain names.
The Panel finds that the Complainant has made out the second limb of the Policy in that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Panel finds no indication on the record that might impair the Complainant’s assertions regarding the facts leading up to its conclusions that the disputed domain names have been registered and used in bad faith.
The Panel therefore finds that the Complainant has made out the third limb of the Policy and that the Respondent has registered and used the disputed domain names in bad faith.
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 <matherlifevvays.com>, <matherlifeways.net> and <matherrlifeways.com> be transferred to the Complainant.
Date: February 9, 2016