National Arbitration Forum

 

DECISION

 

LFP Video Group, LLC and VCA Labs, Inc. v. Texas International Property Associates - NA NA

Claim Number: FA0807001215365

 

PARTIES

Complainant is LFP Video Group, LLC and VCA Labs, Inc. (“Complainant”), represented by John P. Hains of Lipsitz Green Scime Cambria LLP, New York, USA.  Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker of Law Office of Gary Wayne Tucker, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vcaclassics.com>, registered with Compana LLC.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically July 14, 2008; the National Arbitration Forum received a hard copy of the Complaint July 17, 2008.

 

On July 16, 2008, Compana LLC confirmed by e-mail to the National Arbitration Forum that the <vcaclassics.com> domain name is registered with Compana LLC and that the Respondent is the current registrant of the name.  Compana LLC verified that Respondent is bound by the Compana LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 2008, 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@vcaclassics.com by e-mail.

 

A timely Response was received and determined to be complete August 12, 2008.

 

On August 20, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

The Panel has no Additional Submissions before it.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Preliminary Issue: Consent to Transfer

 

Respondent consents to transfer the <vcaclassics.com> domain name to Complainant; however, after initiation of this proceeding, Compana, LLC, placed a hold on Respondent’s account and Respondent cannot transfer the disputed domain name while this proceeding is pending. 

 

The Panel finds that in such a circumstance, where Respondent does not contest a transfer of the disputed domain name, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the <vcaclassics.com> domain name.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

However, in this case, Complainant has not consented in its Complaint to the transfer without a decision on the merits and the Panel finds it more appropriate to do the analysis under the policy to avoid the possibility that the “consent-to-transfer” might be a cybersquatter’s tactic to avoid adverse findings. See Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008).

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following allegations in this proceeding:

 

1.      Respondent registered a domain name, <vcaclassics.com>, which is confusingly similar to Complainant’s protected VCA mark.

2.      Respondent has no rights to or legitimate interests in the domain name containing it is entirety Complainant’s protected VCA mark.

3.      Respondent registered and use the disputed domain name in bad faith.

 

B.     Respondent set out in its Response the following points:

 

1.      Respondent agrees to the transfer upon receipt of an appropriate proper Order.

2.      An immediate transfer Order is the “most expeditious course.”

3.      An immediate transfer Order serves “the very purpose of the UDRP” for “expeditious and economical resolution of UDRP disputes.”

4.      Respondent does not address the three-part showing of: a) confusing similarity or identicality, b) no rights to or legitimate interests, and c) bad faith registration and use.

 

C.     The Panel has no Additional Submissions before it.

 

FINDINGS

Complainant established rights in the VCA mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,900,017 issued Nov. 2, 2004).

 

Complainant established that the disputed domain name that Respondent registered, <vcaclassics.com> was confusingly similar to Complainant’s VCA mark. 

 

Respondent registered the <vcaclassics.com> domain name November 23, 2005, a time at which he would have had actual or constructive notice of Complainant’s registered rights in the mark.

 

Respondent consented to the transfer of the domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires Complainant to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

 

Identical to and/or Confusingly Similar

 

Complainant asserts rights in the VCA mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,900,017 issued Nov. 2, 2004).  The Panel finds that Complainant established rights in the VCA mark for purposes of the Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant contends that the disputed domain name that Respondent registered, <vcaclassics.com>, is confusingly similar to Complainant’s VCA mark.  Respondent’s domain name contains Complainant’s mark, adding the generic term “classics,” a term that has a direct relation to Complainant’s movie offerings, along with the generic top-level domain (“gTLD”) “.com.”  The Panel finds that neither addition is sufficient to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

Respondent makes no allegations relative to the elements of Policy ¶ 4(a)(i). 

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Complainant contends that Respondent is using the <vcaclassics.com> domain name to operate a website that contains advertisements for companies selling Complainant’s products along with various products that are offered by those that would seek to compete directly with Complainant.  The circumstances and evidence support an inference by the Panel that Respondent enjoys financial gains for his own enterprises by receiving click-through fees for each Internet user redirected to a commercial website that seeks to compete with Complainant.  The Panel further finds that Respondent is not using the <vcaclassics.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Moreover, Complainant contends that Respondent is not commonly known by the <vcaclassics.com> domain name and that Complainant has not licensed Respondent to register names featuring the VCA mark, or any derivation thereof.  The Panel finds that Respondent failed to show that it is commonly known by the <vcaclassics.com> domain name and that Respondent not otherwise established such rights to or legitimate interests under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

            Respondent makes no allegations relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

 Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the <vcaclassics.com> domain name to operate a website that provides links to various websites offering Complainant’s products, along with products of Complainant’s competitors.  The Panel finds that the proof before the Panel is sufficient to support an inference that Respondent is profiting from such use through the collection of referral fees for each redirected Internet user.  The Panel also finds that such use constitutes a disruption of Complainant’s business and is therefore supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Moreover, Complainant contends that Respondent’s manner of use of the <vcaclassics.com> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website and disputed domain name.  The Panel finds that such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

Respondent makes no allegations relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <vcaclassics.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: September 3, 2008.

 

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