Zale Business Corp. v. Site Services International c/o
Richard Sorensen
Claim Number: FA0709001082367
Complainant is Zale Business Corp. (“Complainant”), represented by Zale
Atley, of Zale Business Corp,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vou.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 27, 2007.
On September 29, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <vou.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@vou.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vou.com> domain name is identical to Complainant’s VOU.COM mark.
2. Respondent does not have any rights or legitimate interests in the <vou.com> domain name.
3. Respondent registered and used the <vou.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zale Business Corp., is a health education company that builds health information websites. Concurrent with the provision of these services, Complainant asserts common-law rights in the VOU.COM mark through continuous use of the mark in commerce since 1996.
The record indicates that Complainant registered the <vou.com> domain name on August 14, 1996. At some point around September of 2006, Respondent apparently came into possession of the disputed domain name. The disputed domain name previously resolved to a website displaying the same content as when Complainant held the domain name, but was recently suspended by the Registrar.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant attempts to assert rights in the VOU.COM mark
through the establishment of common-law rights in the mark. The Panel finds that a federal trademark
registration is unnecessary to establish rights in the mark pursuant to Policy
¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050
(WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between
registered and unregistered trademarks and service marks in the context of
abusive registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
Complainant is the original registrant of the <vou.com> domain name, and asserts common-law rights in the VOU.COM mark through the establishment of secondary meaning through the continuous use of the mark in commerce since 1996. The Panel finds that secondary meaning in the <vou.com> domain name has been sufficiently established, thereby establishing common-law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Respondent’s <vou.com>
domain name contains Complainant’s VOU.COM mark in its entirety without any
changes. Therefore, the Panel finds that
the disputed domain name is identical to Complainant’s mark pursuant to Policy
¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <vou.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The Panel finds that Respondent is not commonly known by the <vou.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent as “Site Services International c/o Richard Sorensen,” and Complainant has not licensed or authorized Respondent to use the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent previously used the <vou.com> domain name for nearly one year to display the same webpage that Complainant used. In essence, Respondent attempted to pass itself off as Complainant, and this does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant previously held the registration for the <vou.com> domain name prior to Respondent. The Panel finds this to be further evidence that Respondent lacks rights and legitimate interests in the <vou.com> domain name pursuant to Policy ¶ 4(a)(ii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is attempting to pass itself off as Complainant
since it did not change the content posted to the website that resolved from
the <vou.com> domain name
that advertised Complainant’s services. The
Panel therefore finds that Respondent registered and used the <vou.com> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See Monsanto
Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001)
(finding that the respondent's use of <monsantos.com> to misrepresent
itself as the complainant and to provide misleading information to
the public supported a finding of bad faith); see also Am. Int’l Group, Inc.
v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the
disputed domain name was registered and used in bad faith where the respondent
hosted a website that “duplicated Complainant’s mark and logo, giving every
appearance of being associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark”).
Complainant previously used the <vou.com> domain name to promote its
services. Respondent, however, subsequently
claimed registration of the <vou.com>
domain name and maintained the same website that resolved from it. Complainant’s previous registration and use
of the <vou.com> domain name
indicates that Respondent registered and is using the disputed domain name in
bad faith pursuant to Policy ¶ 4(a)(iii).
See InTest Corp. v. Servicepoint,
FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been
previously used by the Complainant, subsequent registration of the domain name
by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA
155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was
previously held, developed and used by Complainant, opportunistic registration
of the domain name by another party indicates bad faith, absent any
justification that illustrates legitimate use.”).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vou.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 16, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum