national arbitration forum

 

DECISION

 

RenderX, Inc. v. Elena Kharitonova

Claim Number: FA1004001321800

 

PARTIES

Complainant is RenderX, Inc. (“Complainant”), represented by Nathan E. Ferguson, of Wilson Sonsini Goodrich & Rosati, California, USA.  Respondent is Elena Kharitonova (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <visualxsl.com>, registered with GoDaddy.com, Inc..

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2010.

 

On April 29, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <visualxsl.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 May 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@visualxsl.com.  Also on May 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

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" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <visualxsl.com> domain name is identical to Complainant’s VISUALXSL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <visualxsl.com> domain name.

 

3.      Respondent registered and used the <visualxsl.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, RenderX, Inc., develops and licenses commercial software.  Complainant began operating in 1999.  Since that time, Complainant has used the Internet to conduct much of its business.  Complainant has also heavily invested in the promotion of its VISUALXSL mark and Complainant’s official <renderx.com> website prominently displays the mark. In addition, Complainant and its mark have been featured in articles and reviews, including a 2007 article from Send2Press Newswire.  From approximately January 23, 2007 until approximately January 23, 2009, Complainant used the domain name at issue, <visualxsl.com>, in addition to <renderx.com>, to market its VISUALXSL mark.  Around January 23, 2009, Complainant and/or its agent inadvertently allowed the registration for the <visualxsl.com> domain name to lapse. 

 

Respondent, Elena Kharitonova, registered the <visualxsl.com> domain name on or about March 6, 2009.  The disputed domain name resolves to a website that nearly replicates the <visualxsl.com> website that Complainant previously operated under the domain name as well as Complainant’s official <renderx.com> website.  The website to which the disputed domain name resolves includes additional text at the bottom of the page.  The words and phrases in this text are each links to third-party websites. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant does not hold a trademark registration for the VISUALXSL mark.  However, federal trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i).  Previous panels have found that a governmental registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark.  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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant argues that it has acquired common law rights in the VISUALXSL mark through the secondary meaning it has gained in association with the mark.  Complainant began operating in 1999.  Complainant states that it has used the VISUALXSL mark continuously since at least 2007.  In addition, Complainant claims that it has substantially invested in the promotion of the product marketed under its VISUALXSL mark and, subsequently, has sold many thousands of licenses for the product.  Complainant also  provides screen shots of its official website, which prominently features the VISUALXSL mark.  Furthermore, Complainant provides evidence that its business achievements have been featured in articles and reviews, including a 2007 article from Send2Press Newswire discussing Complainant in conjunction with its VISUALXSL mark.  Finally, from approximately January 23, 2007 until approximately January 23, 2009, Complainant used the domain name at issue, <visualxsl.com>, in addition to <renderx.com>, to market its VISUALXSL mark.  Around January 23, 2009, Complainant and/or its agent inadvertently allowed the registration for the <visualxsl.com> domain name to lapse.  The Panel finds Complainant has established common law rights in the VISUALXSL mark through continuous and extensive commercial use under Policy ¶ 4(a)(i) dating back to at least 2007.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also Palm Desert Nat’l Bank, N.A. v. Manila Indus., Inc., FA 843468 (Nat. Arb. Forum Jan. 17, 2007) (“Complainant’s…registrations for the <palmdesertnationalbank.net> and <palmdesertnationalbank.org> domain names serve as further evidence of Complainant’s rights in the mark.”).

 

Complainant claims that Respondent’s <visualxsl.com> domain name is identical to its VISUALXSL mark.  The disputed domain name fully incorporates Complainant’s mark and then merely adds the generic top-level domain (“gTLD”) “.com” to the mark.  A gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).  Therefore, the Panel finds Respondent’s <visualxsl.com> domain name is identical to Complainant’s VISUALXSL mark. 

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant must first establish Respondent lacks rights or legitimate interests in the <visualxsl.com> domain name pursuant to Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name.  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Although Respondent failed to submit a Response, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).

 

Complainant states that it has not licensed or otherwise authorized Respondent to use its VISUALXSL mark in a domain name.  Furthermore, the WHOIS information lists the registrant of the disputed domain name as “Elena Kharitonova.”  Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also 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).

 

Complainant argues that Respondent’s use of the <visualxsl.com> domain name to receive commercial gain does not create rights or legitimate interests in Respondent.  Respondent’s disputed domain name resolves to a website that features links to third-party websites.  Respondent presumably receives click-through fees each time an Internet user is redirected to one of these third-party sites.  The Panel finds Respondent’s use of a domain name that is identical to Complainant’s mark to redirect Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

Complainant also claims that Respondent uses the disputed domain name in an attempt to pass itself off as Complainant.  The disputed domain name resolves to a website that nearly replicates the <visualxsl.com> website that Complainant previously operated under the domain name as well as Complainant’s official <renderx.com> website. Respondent’s website prominently displays Complainant’s name and VISUALXSL mark.  The only difference between Respondent’s current website and Complainant’s former website is the inclusion of a small amount of text at the bottom of the homepage.  The Panel finds Respondent is attempting to pass itself off as Complainant, which is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); 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).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues Respondent intentionally registered and is using the disputed domain name to attract, for commercial gain, Internet users to the <visualxsl.com> domain name, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  As previously discussed, Respondent’s disputed domain name is identical to Complainant’s mark.  Respondent also prominently displays Complainant’s name and mark throughout its website.  The Panel finds Respondent is using the disputed domain name to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website in order to attract Internet users to Respondent’s site so that it can profit from click-through fees.  Therefore, the Panel finds this behavior is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

Finally, Respondent is using the disputed domain name to pass itself off as Complainant by using an imitation of Complainant’s official website and prominently displaying its VISUALXSL mark. The Panel finds Respondent’s attempt to pass itself off as Complainant constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii).  See 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”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).

 

The Panel finds 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 <visualxsl.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  June 9, 2010

 

 

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