WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
First American Financial Corporation v. VistaPrint Technologies Ltd
Case No. DCO2016-0008
1. The Parties
The Complainant is First American Financial Corporation of Santa Ana, California, United States of America ("United States"), represented by DLA Piper US LLP, United States.
The Respondent is VistaPrint Technologies Ltd of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <firstaim.co> (the "Disputed 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 February 20, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 22, 2016, 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 February 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 21, 2016.
The Center appointed John Swinson as the sole panelist in this matter on April 4, 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 First American Financial Corporation of the United States. The Complainant is a financial services company which began operating in the United States in 1959, and now provides services in over 70 countries around the world.
The Complainant owns a number of United States registered trade marks which incorporate the term "first american". It also owns United States registered trade marks for FIRSTAM.COM, the earliest of which was registered on August 26, 1997 (the "Trade Mark").
The Complainant owns and operates the website at the domain name <firstam.com>. It registered this domain name on April 16, 1993.
The Respondent is VistaPrint Technologies Ltd of Bermuda. The Respondent did not file a Response, and consequently little information is known about the Respondent from the record.
The Disputed Domain Name was registered on October 16, 2015.
The website at the Disputed Domain Name is a holding page which advertises the Respondent's free website building services.
5. Parties' Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The only difference is that the Disputed Domain Name incorporates an additional letter "i" and uses the country code Top-Level Domain ("ccTLD") ".co", as opposed to the generic Top-Level Domain ("gTLD") ".com". This constitutes typosquatting, which is generally insufficient to distinguish a domain name from another's trade mark.
Rights or Legitimate Interests
The Respondent has not made any bona fide offering of goods or services in connection with the Disputed Domain Name.
The Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark, or to register any domain names incorporating the Trade Mark.
Further, the Complainant has received at least one email requesting wire transfers from an email address associated with the Disputed Domain Name. The Respondent has been named as respondent in a number of disputes under the Policy in relation to its registration and use of well-known trade marks, and in many of these disputes, the complainant alleged that the relevant domain name was being used as part of a phishing scam or for another purpose.
There is no indication that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent registered the Disputed Domain Name to achieve commercial gain by misleadingly diverting customers.
Registration and Use in Bad Faith
Typosquatting and registration of the Disputed Domain Name for use in a phishing scam are both evidence of bad faith.
The Respondent registered and is using the Disputed Domain Name intentionally to mislead and confuse the Complainant's employees and others into believing that the Respondent is the Complainant, or is otherwise associated or affiliated with the Complainant in order to perpetrate a phishing scam.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response.
A. Procedural Issues
The Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is a misspelling of the Trade Mark. It differs from the Trade Mark only by an additional letter (i.e., it inserts the letter "i" into "am" so that it reads "aim") and an omitted letter (i.e., it omits the letter "m" from ".com" (which is part of the Trade Mark) so that it reads ".co").
It is well established that "typosquatting" can constitute confusing similarly (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, DaimlerChrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201).
The Panel considers this to be a clear case of typosquatting. The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name is a parking page which advertises the Respondent's website building services. The Respondent is therefore using the Trade Mark in an attempt to promote its own services, and to redirect Internet users to its own website. This is not a bona fide use of the Disputed Domain Name under the Policy.
- The Panel accepts the Complainant's submission that the Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. As stated above, it appears that the Respondent is using the Trade Mark in the Disputed Domain Name for the purpose of advertising its own services. The Panel considers it likely that the Respondent is generating some sort of revenue from this.
- As previous panels have found, typosquatting does not constitute a legitimate use of the Disputed Domain Name (see, e.g., Edmunds.com, Inc. v. Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694; Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has been operating in the United States for over 50 years, and now has a global presence. It is clearly a well-known, respected and established brand. The Disputed Domain Name was registered on October 16, 2015. Previous UDRP panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein).
In this case, the Panel considers it likely that the Respondent was aware of the Complainant and the Trade Mark at the time it registered the Disputed Domain Name, and as such, registered the Disputed Domain Name in bad faith.
Previous UDRP panels have also found that if a respondent has engaged in typosquatting, that may be sufficient to establish registration and use in bad faith (Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537; Edmunds.com, Inc. v. Yingkun Guo, dba This domain is 4 sale, WIPO Case No. D2006-0694; Sephora v. WhoisGuard, WIPO Case No. D2006-0845). In particular, the UDRP panel in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.
This is a clear case of typosquatting having regard to the minor differences between the Disputed Domain Name and the Trade Mark. The Respondent has registered a misspelling of the Trade Mark to divert traffic from the Complainant's website to the Respondent's website. The Panel finds that this constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Further, as the Complainant indicated, there have been 30 previous UDRP panel decisions in which an adverse finding was made against the Respondent. In each of these cases, the Respondent had registered a misspelling or other variation of a third party's well-known trade mark. The Panel considers that the Respondent has engaged in a pattern of conduct of typosquatting or registering domain names to prevent owners of trade marks from reflecting their trade marks in those domain names, which is a further indicator of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
Finally, the Complainant has provided evidence that the Respondent has sent at least one email from an email address associated with the Disputed Domain Name to an employee of the Complainant seeking to arrange a wire transfer. As submitted by the Complainant, a number of the decisions referred to above involving the Respondent also contain allegations of phishing, wire fraud and other illegal activity. This type of conduct cannot be tolerated within the domain name system. This alone is sufficient to support a finding of registration and use in bad faith.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 Name, <firstaim.co>, be transferred to the Complainant.
Date: April 17, 2016