WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

e2Interactive, Inc. v. Donna Walker, Steven (Walker)

Case No. D2019-0020

1. The Parties

The Complainant is e2Interactive, Inc. of Atlanta, Georgia of United States of America, represented by Bates & Bates LLM, United States of America.

The Respondents are Donna Walker, Steven (Walker) of Highlandville, Missouri and Cleveland, Ohio United States of America.

2. The Domain Names and Registrar

The disputed domain names <balance-onevanilla.info>, <checkbalance-one-vanilla.com> and <one-vanilla-balancecheck.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2019. On January 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 5, 2019, 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 Respondents of the Complaint, and the proceedings commenced on January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 12, 2019.

The Center appointed William R. Towns as the sole panelist in this matter on February 22, 2019. 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 provides pre-paid debit and stored value card services on its websites at: “www.onevanilla.com”, “www.myvanillabalance.com”, “www.vanillabalance.com”, and “www.vanillabalance.net” (hereinafter referred to as “the Complainant’s websites”). The Complainant is the owner of United States trademark registrations for VANILLA, MYVANILLA, and ONE VANILLA, used by the Complainant in connection with its services, as follow:

VANILLA: United States Registration Nos. 3228698, 3644949, 3336174;

VANILLA (stylized): United States Registration Nos. 4907289, 3336190, 3750726, and 3349536.

MYVANILLA: United States Registration. Nos. 4324785, 4324786, and 4324787.

ONE VANILLA: United States Registration. No. 4050402.

The ONE VANILLA mark, prominently featured by the Complainant on its websites, was registered by the United States Patent and Trademark Office (USPTO) on November 1, 2011, with the first use of the mark in commerce in October 2010. The Complainant since has obtained registrations of its VANILLA and VANILLA-formative marks in a number of other countries, including Australia, Canada, Chile, China, Colombia, Hong Kong, China, Japan, Mexico, New Zealand, Taiwan, Province of China, and the United Kingdom.

The disputed domain name <balance-onevanilla.info> was registered in the name of the Respondent Steven (Walker) on October 26, 2017. The disputed domain names <checkbalance-one-vanilla.com> and

<one-vanilla-balancecheck.com> were registered five days later, on Nov 1, 2017, in the name of the Respondent Donna Walker. The contact details provided for all of the disputed domain names include a common email address, sana[...]@gmail.com. The disputed domain names resolve to what appear to be clones of the Complainant’s websites.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names <balance-onevanilla.info>,

<checkbalance-one-vanilla.com> and <one-vanilla-balancecheck.com> are identical or confusingly similar to the Complainant’s ONE VANILLA mark. The Complainant asserts that the inclusion of the common words “check” and “balance” in the disputed domain names does not preclude a finding of confusing similarity under the Policy. The Complainant further notes that “check” and “balance” are commonly understood terms in the banking and card industries, and as such reinforce the confusing similarity of the disputed domain names to the Complainant’s mark.

The Complainant maintains that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant avers that the Respondents are not affiliated with the Complainant, have not been authorized to use the Complainant’s marks, are not using and have not made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainant further asserts that the Respondents are not making a legitimate noncommercial or other fair use of the disputed domain names. The Complainant contends that the Respondents instead have engaged in a fraudulent phishing campaign, seeking to acquire valuable, confidential and sensitive information such as usernames, passwords, and credit card details from individuals diverted to the Respondents’ websites, on which the Respondents’ impersonate the Complainant.

The Complainant asserts that the Respondents registered and are using the disputed domain names in bad faith. The Complainant reiterates that the Respondents are using the disputed domain names to divert Internet traffic to that the Respondents’ websites, which are clones of the Complainant’s websites, in order to create a likelihood of confusion with the Complainant’s ONE VANILLA mark as to the source, sponsorship, affiliation or endorsement of the Respondent website, in furtherance of a fraudulent phishing scheme.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Preliminary Issue: Consolidation of Multiple Domain Names and Respondents

The Complainant has requested that the disputed domain names registered by the Respondents and identified in the Complaint be consolidated in a single administrative proceeding. Consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under the Policy and Rules where the domain names or the websites to which they resolve are subject to common control, and consolidation would be procedurally efficient and fair and equitable to all parties. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.2, and cases cited therein.

The facts in the instant record strongly suggest that the disputed domain names have been subject to common control by the Respondents. The disputed domain names were registered within in a time frame of seven days. The Respondents provided a common email address when registering the disputed domain names. Additionally, the record reflects that the Complainant has been the target of common conduct by the Respondents directly affecting the Complainant’s rights –namely, the Respondents’ attempt to perpetrate fraud on unsuspecting Internet by impersonating the Complainant and falsely suggesting an affiliation or connection with the Complainant and the Complainant’s ONE VANILLA mark.

The Panel, taking into account the Respondents’ use of the disputed domain names in a manner directly affecting the Complainants’ rights, and further finding that common questions of law and fact are predominant, concludes that consolidation would be procedurally efficient, and fair, and equitable to all parties.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names <balance-onevanilla.info>,

<checkbalance-one-vanilla.com> and <one-vanilla-balancecheck.com> are confusingly similar to the Complainant’s ONE VANILLA mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

The Complainant’s ONE VANILLA mark is clearly recognizable in the disputed domain names. The inclusion of the words “check” and “balance” in the disputed domain names does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. Given that “check” and “balance” have clearly understood meanings in the banking and card industries, the Panel considers the Respondents’ registration and use of the disputed domain names reflect targeting of the Complainant. Top-Level Domains (gTLDs) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondents have not been authorized to use the Complainant’s ONE VANILLA mark. Regardless, the record reflects that the Respondents have registered multiple domain names that are confusingly similar to the Complainant’s mark. The Respondents are using the disputed domain names to divert Internet traffic to cloned websites on which the Respondents impersonate the Complainant, in furtherance of what appears to be a fraudulent phishing campaign.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a 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.

The Respondents have not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

It is evident from the record that the Respondents were aware of the Complainant and the Complainant’s ONE VANILLA mark when registering the disputed domain names. In the absence of any explanation by the Respondents, the Panel considers in all likelihood that the Respondents registered the disputed domain names with the aim of exploiting and profiting from the Complainant’s mark, through the impersonation of the Complainant in furtherance of a fraudulent phishing scheme.

Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondents, the Panel concludes that the Respondents have not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names. Further, there is no indication that the Respondents have been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondents’ rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondents were aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain names. The record reflects that the Respondents’ motive in relation to the registration and use of the disputed domain names in all likelihood was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom. To that end the Respondents clearly have targeted the Complainant’s mark. The Respondents thus have registered and are using the disputed domain names in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

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 <balance-onevanilla.info>, <checkbalance-one-vanilla.com>, and <one-vanilla-balancecheck.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: March 3, 2019

¹ See WIPO Overview 3.0 , section 1.7 .

² Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.

³ See WIPO Overview 3.0, section 1.15.

⁴ See WIPO Overview 3.0 , section 1.11.2 and cases cited therein.