Vanity Shop which just acquired the domain name Vanity.com last year after another UDRP and a federal lawsuit of its own, just lost its bid to grab the domain name vanityshop.com from it’s owner Vertical Axis Inc. which was represented by Ari Goldberger of Esqwire.com.
The three member panel of the The Hon. Nelson A. Diaz, the Hon. Neil Brown Q.C., and David E. Sorkin found that the term Vanity Shop was generic as was Vanity and that the domain holder did not acquire the domain with the trademark holder in mind.
It appears the Complainant at one time also owned the domain at issue VanityShops.com but let it drop.
Here are the highlights:
“”Complainant launched a website at
Complainant apparently recently switched its online presence to
Complainant claims that the VANITY brand is well known in the fashion/apparel industry, particularly among young women.
Respondent states that it registered the disputed domain name in January 2004, after its prior owner failed to renew it and allowed the registration to lapse.
Respondent claims that it registered the domain name because it was an available descriptive word domain name composed of two common words in the English language; that Respondent has registered hundreds or thousands of other domain names for similar reasons; and that such common-word domain names have inherent commercial value because they are easy to remember. Respondent lists many other domain names it has registered that include the word “vanity” or “shop,” including
Respondent states that its goal is to “develop or otherwise monetize” domain names in order to generate revenue, and that in the interim it hosts domain names with domain name parking services in exchange for a share of advertising revenues. The disputed domain name is hosted with Hitfarm.com, which places pay-per-click advertising links that are auto-generated by Google based upon the words “vanity” or “shop.”
Respondent is using the disputed domain name for a website comprised of pay-per-click links. The images on the site and most of the links relate to furniture, but there are also links for clothing, fashion, and other categories. Respondent explains the links as having been auto-generated by a third party based upon the terms “vanity” and “shop.” The Panel notes that the word “vanity” has multiple common meanings, including excessive pride in one’s appearance and a bathroom cabinet or dressing table.
Where a domain name is comprised of common dictionary words that also correspond to a trademark, its use for a PPC link page can give rise to legitimate interests if the page does contains links related to the common meaning of the words, and not to their trademark sense.
Here, a few of the links on Respondent’s site relate to fields in which Complainant has trademark rights; but the Panel considers it more likely than not that those links were generated based solely upon common non-trademark meanings of the word “vanity” (and possibly “shop” as well) and not the VANITY mark.
Complainant bears the ultimate burden of proof on this issue. The Panel finds that Complainant has not met this burden.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith.
To have registered a domain name in bad faith, Respondent must have been aware of Complainant or its mark when it registered the domain name, and the registration must in some way have been targeted at Complainant or its mark.
In this case, the disputed domain name consists of common dictionary words, and Respondent claims that it registered the domain name solely for that reason.
The Panel considers that claim to be plausible and consistent with the evidence.
Even if Complainant’s mark is well known in the United States, it is not clear that it was true back in 2004, when Respondent registered the domain name.
Furthermore, there is no evidence that Complainant’s mark has ever been well known outside the United States, while Respondent is located in Barbados.
Finally, Complainant asserts rights only in VANITY, not VANITY SHOP, and even today a search of U.S. trademarks corresponding to VANITY SHOP is unlikely to yield any references to Complainant or its mark. For these reasons, the Panel is unwilling to infer that Respondent was aware of Complainant or its mark when Respondent registered the domain name in 2004, nor that Respondent would have learned of Complainant’s existence had it performed a trademark search at that time.
The Panel therefore concludes that Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith.””