Vivint, Inc. v. Derrick Brown
Claim Number: FA1112001418536
Complainant is Vivint, Inc. (“Complainant”), represented by R. Parrish Freeman of Workman Nydegger, Utah, USA. Respondent is Derrick Brown (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vivintenergy.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2011; the National Arbitration Forum received payment on December 6, 2011.
On December 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vivintenergy.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2011 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@VIVINTENERGY.COM. Also on December 7, 2011, 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 January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant is the owner of the VIVINT mark, and it uses its mark in connection with the marketing of home security and automation services as well as providing solar energy power.
Respondent registered the disputed domain name on September 26, 2011.
The <vivintenergy.com> domain name resolves to a website which displays links to goods and services competing with the business of Complainant.
Respondent’s <vivintenergy.com> domain name is confusingly similar to Complainant’s VIVINT mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not authorized to use the VIVINT mark.
Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent does not have any rights to or legitimate interests in the domain name <vivintenergy.com>.
Respondent both registered and uses the <vivintenergy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
While it is possible to acquire rights through trademark registration with a trademark authority, such registration is unnecessary. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the UDRP Rules do not require that a complainant's trademark or service mark be registered by a government authority for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a complainant need not own a trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
It is undisputed in the record of this proceeding that Complainant has common law rights in the VIVINT mark. Complainant has been using the VIVINT mark continuously since January of 2011 in connection with its business of marketing home security, automation and solar energy products and services. It is today one of largest home security and automation companies in the world, with over 550,000 customers and revenues between 25-30 million dollars per month. The VIVINT mark has acquired secondary meaning in the marketplace, and, as a result, Complainant has common law rights in the VIVINT mark sufficient to satisfy 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 Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007):
[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.
Respondent’s <vivintenergy.com> domain name is confusingly similar to the VIVINT mark. The addition of the generic top-level domain (“gTLD”) “.com” to the mark in forming the domain name is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
Similarly, Respondent’s addition to the mark of the descriptive term “energy,” which describes an aspect of Complainant’s business, fails to distinguish the domain name from the mark under the standards of the Policy. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance” to a complainant’s AIG mark in creating a domain name failed to distinguish the domain name from the mark under Policy ¶ 4(a)(i) because the appended term related to that complainant’s business); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to the registered mark of another in forming a domain name did not distinguish the domain name from the mark under Policy ¶ 4(a)(i)).
Therefore the Panel finds that Respondent’s <vivintenergy.com> domain name is confusingly similar to the VIVINT trademark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain name. Once Complainant has made out a prima facie case in support of this assertion, the burden shifts to Respondent to dispute it. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant under 4(a)(ii) of the Policy, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name.
Therefore, and because Respondent has failed to submit a response to the Complaint filed in this proceeding, we are permitted to make all reasonable inferences from the information available to us. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
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.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent is not authorized to use the VIVINT mark. Moreover, the WHOIS record for the disputed domain name lists the domain name registrant only as “Derrick Brown”, which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the <vivintenergy.com> domain name so as to have rights to or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant contends, without objection from Respondent, that Respondent’s use of the disputed domain name, as described in the Complaint, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. We concur. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 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, it was not using a domain name 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).
Therefore, the Panel finds that the requirements of Policy ¶ 4(a)(ii) are met.
Respondent’s use of the contested <vivintenergy.com> domain name in the manner alleged in the Complaint is disruptive to the business of Complainant. This stands as evidence that the registration and use of the domain by Respondent is in bad faith as provided in Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), both holding that the use of a disputed domain name to display links to websites offering goods and services that compete with the business of a complainant demonstrates bad faith under Policy ¶ 4(b)(iii).
In addition, the <vivintenergy.com> domain name is confusingly similar to the VIVINT mark, and the goods and services offered via the domain name’s resolving website are similar to those that Complainant provides. In the circumstances here presented, we may comfortably presume that Respondent receives income tracing to the visits Internet users to the websites resolving from the links displayed on Respondent’s website. Because of that confusing similarity, Internet users are likely to be confused as to the possibility that Complainant is the source or sponsor of the domain name and offered links. Respondent’s registration and use of the disputed domain name in this manner is therefore evidence that Respondent has registered and uses the domain in bad faith within the meaning of Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that offered links to third-party websites featuring services similar to those of a complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <VIVINTENERGY.COM> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 18, 2012
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