WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E2Interactive, Inc. v. Janielle Faith Kempfer
Case No. D2018-1005
1. The Parties
Complainant is E2Interactive, Inc. of Atlanta, Georgia, United States of America (or “United States”), represented by Bates & Bates LLM, United States of America.
Respondent is Janielle Faith Kempfer is of Chester, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain names <check-onevanilla-balance.org> and <onevanilla.biz> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2018. On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2018.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 11, 2018. 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
Complainant is a United States company, based in Atlanta, Georgia. Complainant offers prepaid debit and stored value cards and services. Complainant has several registered trademarks including in the United States, where Respondent lists her address of record. These include United States Registration Nos. 3,228,698 and 3,336,174 for VANILLA (registered 2007); United States Registration Nos. 4,050,400 and 4,050,402 for ONE VANILLA (registered 2011); and United States Registration No. 4,324,785, 4,324,786 and 4,324,787 for MY VANILLA (registered 2013).
Complainant, via its affiliate, owns the registration for several domain names incorporating its marks. These include, among others, <onevanilla.com> (registered November 11, 2010); <myvanillabalance.com> (registered May 27, 2008); and <vanillabalance.net> (registered July 6, 2012).
Complainant uses the domain names and associated websites to inform customers about its marks and its prepaid debit and stored value cards and services.
The disputed domain names <check-onevanilla-balance.org> and <onevanilla.biz> were registered on October 24, 2017. Respondent has no affiliation with Complainant. Respondent has used the disputed domain names to resolve to websites that mimic the official website of Complainant, and include asking consumers for consumer card numbers or other personal information. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions
Complainant contends that (i) disputed domain names <check-onevanilla-balance.org> and <onevanilla.biz> are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith.
In particular, Complainant contends that it has trademark registrations for VANILLA and VANILLA formative marks, including ONE VANILLA, as well as domain name registrations for variations on this term, along with generic or descriptive wording regarding Complainant’s prepaid debit and stored value cards and services. Complainant contends that Respondent has merely used the disputed domain names to set up websites meant to lure in customers looking for Complainant and its services, in a “phishing” scheme. Complainant further contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain names. Rather, Complainant contends that Respondent has acted in bad faith in setting up these websites, when Respondent clearly knew of Complainant’s rights.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain names <check-onevanilla-balance.org> and <onevanilla.biz> are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademarks VANILLA and ONE VANILLA. In the case of <onevanilla.biz>, Complainant’s registered trademark ONE VANILLA comprises the entirety of the second level domain. In the case of <check-onevanilla-balance.org>, the domain name incorporates in full Complainant’s registered ONE VANILLA mark and merely adds the terms “check” and “balance”, which are descriptive of services offered by Complainant. In particular, the Panel finds that the addition of the terms “check” and “balance” to Complainant’s mark in the disputed domain name <check-onevanilla-balance.org> may be perceived by Internet users as descriptive of a website where they could check the balance on their ONE VANILLA debit cards.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example,General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Inter-IKEA v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
The Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the disputed domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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”.
Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has used the disputed domain names to divert Internet users to websites that mimic Complaint’s website but which are unaffiliated with Complainant or Complainant’s services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain names, which Respondent has not rebutted, thereby satisfying paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in section 4 of this Panel’s decision, Respondent has set up the disputed domain names to resolve to websites that mimic the official website of Complainant, and include asking consumers to enter their card numbers so that they can check their balance. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the sites’ content and the disputed domain names, which incorporate Complainant’s registered ONE VANILLA mark, the Panel finds strong evidence that Respondent registered and used the disputed domain names with knowledge of Complainant’s prior rights, thereby evidencing bad faith. See E2Interactive, Inc. v. Aditya Singh & Andy Clark, WIPO Case No. D2017-1991 (transferring <check-onevanilla-balance.com> and <onevanillas.com>); E2Interactive, Inc. v. Jennifer Hart & Donna Burton, WIPO Case No. D2017-1624 (transferring <onevanilla.net> and <onevanillagiftcard.com>); and E2Interactive, Inc. v. Lorraine Tillery & Cleo Runyan, WIPO Case No. D2017-2074 (transferring <onevanilla-balance.net>, <one-vanilla-card.com> and <onevanilla.pro>).
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <check-onevanilla-balance.org> and <onevanilla.biz> be transferred to Complainant.
Dated: June 22, 2018