WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

e2Interactive, Inc. v. Kayla

Case No. D2018-2225

1. The Parties

The Complainant is e2Interactive, Inc. of United States of America (“United States”), represented by Bates & Bates LLM, United States.

The Respondent is Kayla of United States.

2. The Domain Name(s) and Registrar(s)

The disputed domain name <balance-onevanillaa.com> is 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 October 1, 2018. On October 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2018, 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 October 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2018.

The Center appointed Angela Fox as the sole panelist in this matter on November 22, 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

The Complainant is an Atlanta-based company which, in cooperation with its affiliate, Interactive Communications International, Inc. (“InComm”), provides pre-paid debit and stored value card services under the brand name ONE VANILLA. It has been providing these services under the ONE VANILLA trademark since at least as early as 2010, when InComm created the main website through which it provides its services at www.onevanilla.com. The Complainant also carries out its business through other websites that it or InComm owns, including “www.myvanillabalance.com”, “www.vanillabalance.com”, and “www.vanillabalance.net”.

The Complainant owns trademark registrations for ONE VANILLA and marks including ONE VANILLA in countries throughout the world, including in particular the following United States registrations, details of which were annexed to the Complaint:

- 4,050,400 for ONE VANILLA in Class 9 filed on August 5, 2010 and registered on November 1, 2011
- 4,050,402 for ONE VANILLA in Class 36 filed on August 5, 2010 and registered on November 1, 2011
- 4,080,903 for ONE VANILLA in Class 16 filed on August 5, 2010 and registered on January 3, 2012

The Respondent registered the disputed domain name on March 2, 2018. The website linked to the disputed domain name displays a home page that is nearly identical to that of the Complainant on its “www.onevanilla.com” website, which invites visitors to enter their account details to access their account.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its registered trademark ONE VANILLA, differing only in the addition of the non-distinctive word “balance”, which is descriptive of the Complainant’s services, the additional letter “a” at the end of VANILLA, and the non-distinctive domain name “suffix.com”.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered more than seven years after the Complainant began trading under its ONE VANILLA mark through its www.onevanilla.com website. The Complainant has not authorized the Respondent to use a domain name incorporating its trademark. Moreover, the Complainant contends that the Respondent is using the disputed domain name in connection with an illegal phishing scheme. The Complainant included images of the home page from its website and from the website linked to the disputed domain name, which are nearly identical.

Finally, the Complainant contends that the Respondent registered and has used the disputed domain name in bad faith. The use of the disputed domain name in connection with a phishing scheme designed to steal confidential information from website users evinces the Respondent’s bad faith in both registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

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

(ii) the respondent has no rights or legitimate interests in the domain name; and

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

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved that it has rights in the trademark ONE VANILLA. That trademark is clearly recognizable within the disputed domain name, and the incorporation of the duplicate latter “a” at the end of VANILLA is a mere common typographical error which is unlikely to be noted by the average Internet user. The additional word “balance” in the disputed domain name does nothing to detract from the clear and recognizable presence of the Complainant’s trademark within the disputed domain name. It is notable, moreover, that this word is directly relevant to the business which the Complainant carries out under the ONE VANILLA trademark.

The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

As noted by numerous prior panels, once a complainant has made a prima facie showing that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut that (see among others The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (hereinafter “WIPO Jurisprudential Overview 3.0”).

In this case, the Complainant has not authorized the Respondent to use the ONE VANILLA trademark, and the Respondent has been using the disputed domain name to masquerade as the Complainant in order to persuade Internet users to part with confidential personal data. The Complainant avers that the Respondent has been operating an illegal phishing scheme, and the Respondent has not denied that.

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Panel so finds.

C. Registered and Used in Bad Faith

The manner in which the disputed domain name has been used demonstrates that the Respondent chose the disputed domain name in the knowledge of the Complainant’s ONE VANILLA trademark and business, with the intention deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant.

The Panel is satisfied that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under para. 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.

The Panel concludes that the disputed domain name was registered and has been used in bad faith.

7. 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 name, <balance-onevanillaa.com>, be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: December 21, 2018