About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cimpress plc, Vistaprint Netherlands B.V., Cimpress USA Manufacturing Incorporated, Cimpress Schweiz GmbH, Cimpress Windsor Corporation v. Registration Private, Domains By Proxy, LLC / Howard Granat, Charger House LLC

Case No. D2020-0030

1. The Parties

Complainants are Cimpress plc, Vistaprint Netherlands B.V., Cimpress USA Manufacturing Incorporated, Cimpress Schweiz GmbH, Cimpress Windsor Corporation, United States of America (“United States”), represented by The GigaLaw, United States.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Howard Granat, Charger House LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <vistaprint-usa.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2020. On January 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on January 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on January 14, 2020.

The Center verified that the Complaint together with the amendment to 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 January 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 4, 2020. On February 18, 2020, the Center received an email communication from Respondent.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 20, 2020. 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

Complainants are related companies that together own and operate a business under the mark VISTAPRINT. Prior UDRP panels have found under such circumstances that it is appropriate for companies to bring a joint complaint where:

(i) complainants either have a specific common grievance against respondent, or respondent has engaged in common conduct that has affected complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.

See section 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”) (discussing when it is appropriate for multiple companies to serve as joint complainants). The Panel finds that these criteria are satisfied and it is appropriate to have joint Complainants in this proceeding. See also eBay Inc., PayPal Inc. v. Rene Rene/Wuxi Yilian LLC, WIPO Case No. D2015-0010 and Altria Group, Inc. and Philip Morris USA Inc. v. Leonard Di Bari, WIPO Case No. D2014-0181, finding consolidation appropriate for a parent and wholly owned subsidiaries.

Since 1995, Complainants have offered products and services to businesses under the VISTAPRINT mark, including, among others, marketing, printing, and design services, along with business cards and clothing. Complainants owns several trademark registrations for the VISTAPRINT mark. These include, among others, United States Registration Nos. 2433418 (registered March 6, 2001); 3117106 (registered July 18, 2006); 3126343 (registered August 8, 2006); and 5473639 (registered May 22, 2018). Complainants own the registration for the domain name <vistaprint.com>, which they use to connect to a website from which they offer consumers information about their products and services, including products and services offered by Complainants to consumers in the United States.

The disputed domain name <vistaprint-usa.com> was registered on July 8, 2019. Respondent has had the URL associated with the disputed domain name resolve to a webpage that advertises “Printing Discounters” along with products and services that directly compete with those offered by Complainant.

5. Parties’ Contentions

A. Complainants

Complainants contend that (i) the disputed domain name <vistaprint-usa.com> is identical or confusingly similar to Complainants’ trademark; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainants contend that their VISTAPRINT mark is registered and in use in the United States, where Respondent lists his address of record. Complainants further assert that their VISTAPRINT marks is “famous and/or widely-known,” and that Complainant’s revenue from its VISTAPRINT business has garnered revenue in the 2019 fiscal year of almost USD 1.5 billion.

Complainants further contend that Respondent has no rights or legitimate interests in the domain name registration or use of the disputed domain name. Rather, Complainants contend that Respondent has acted in bad faith, in setting up a website at the disputed domain name that offers products and services in direct competition with those offered by Complainants under their VISTAPRINT mark.

B. Respondent

Respondent did not file a formal reply to Complainants’ contentions. After the deadline to file a reply had passed, Respondent sent an email communication to the Center, asserting that it “isn’t saying anything that isn’t true.”

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <vistaprint-usa.com> is identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainants’ registered trademark VISTAPRINT, and merely adds a hyphen to the term “usa,” which is a geographically descriptive abbreviation for the United States of America, wherein Complainant holds several trademark registrations.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words, including geographically descriptive wording, 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,Inter-IKEA v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.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 name is identical or confusingly similar to a trademark in which Complainants have 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 domain name at issue 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”.

No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainants.

Therefore, the Panel finds that Complainants have provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted.

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 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 had the URL associated with the disputed domain name resolve to a webpage that advertises “Printing Discounters” along with products and services that directly compete with those offered by Complainant. Hence, Respondent is trading on the goodwill of Complainants’ trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

The Panel further notes that bad faith may also be found under paragraph 4(b)(iii) of the Policy if a respondent has “registered the domain name primarily for the purpose of disrupting the business of competitor”, as has been demonstrated by Complainants in this proceeding. See Twiflex Limited v. Industrial Clutch Parts Ltd, WIPO Case No. D2000-1006; VeriSign, Inc. v. Nandini Tandon, WIPO Case No. D2000-1216. Given the nature of the disputed domain name, which includes Complainants’ registered mark VISTAPRINT, and the content of the associated web pages, the Panel finds strong evidence that Respondent was aware of Complainant’s rights when it registered the disputed domain name.

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

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 name <vistaprint-usa.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: March 2, 2020

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/