VS Media, Inc. v. chenbo
Claim Number: FA1206001448632
Complainant is VS Media, Inc. (“Complainant”), represented by Anna M. Vradenburgh of The Eclipse Group, LLP, California, USA. Respondent is chenbo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vs4.com>, registered with Ename Network Technology Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2012; the National Arbitration Forum received payment on June 13, 2012. The Complaint was submitted in both Chinese and English.
On Jun 14, 2012, Ename Network Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <vs4.com> domain name is registered with Ename Network Technology Co., Ltd. and that Respondent is the current registrant of the name. Ename Network Technology Co., Ltd. has verified that Respondent is bound by the Ename Network Technology Co., Ltd. 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 June 25, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 16, 2012 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@vs4.com. Also on June 25, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 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:
Respondent’s <vs4.com> domain name, the domain name at issue, is confusingly similar to Complainant’s VS mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant licenses the VS mark for the provision of live action adult-oriented entertainment services over a global computer network and owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its VS mark (Reg. No. 3,077,162 filed February 12, 2004; registered April 4, 2006).
Complainant has established common law rights in the VS mark dating back to May 25, 2002. The disputed domain name resolves to a website featuring pay-per-click links advertising third-party products and services, some of which compete with Complainant, and Respondent commercially benefits from the operation of its website. Respondent is not commonly known by the disputed domain name and had actual and constructive notice of Complainant’s rights in the VS mark at the time the disputed domain name was transferred to Respondent. The disputed domain name was transferred to Respondent on August 3, 2011.
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."
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.
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.”).
Complainant owns a trademark registration with the USPTO (Reg. No. 3,077,162, filed February 12, 2004; registered April 4, 2006) and has rights in the VS mark. The registration of a mark with the USPTO has previously been held to confer such rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant’s trademark registration with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i) dating back to the filing date, despite the fact that Complainant has not presented evidence of registration in the country in which Respondent operates. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The relevant comparison to be made for confusingly similar analysis is between only the second-level portion of the disputed domain name and the complainant’s mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The remaining portion of the disputed domain name consists of Complainant’s VS mark and the number “4.” The addition of a numeral after Complainant’s mark cannot distinguish the <vs4.com> from the VS mark for the purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)). Accordingly, Respondent’s <vs4.com> domain name is confusingly similar to Complainant’s VS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
The WHOIS information on file identifies the disputed domain name registrant as “chenbo.” There is insufficient similarity between “chenbo” and <vs4.com> to provide evidence that Respondent is commonly known by the disputed domain name. Additionally, Respondent has failed to produce a Response in this case, leaving an absence of any evidence suggesting that Respondent is in fact commonly known by the <vs4.com> domain name for the purposes of Policy ¶ 4(c)(ii). The Panel concludes that Respondent is not commonly known by the <vs4.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent lacks rights or legitimate interests in the <vs4.com> domain name because Respondent’s use of the disputed domain name can be considered neither 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). Respondent uses the disputed domain name to resolve to a website featuring hyperlinks to third-party websites, some of which directly compete with Complainant in the adult-oriented services market. Past panels have not found a legitimate right or interest where the disputed domain name displays generic hyperlinks, some of which compete with the complainant. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> 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).”). Respondent’s use of the disputed domain name can be considered neither 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and uses the confusingly similar disputed domain name to provide links to competing services in order to attract consumers for commercial gain in bad faith under Policy ¶ 4(b)(iv). Respondent profits from the operation of its website, most likely through the collection of click-through fees. Respondent’s registration and use of a confusingly similar domain name evidences an intent to create confusion as to Complainant’s affiliation with Respondent’s website. Respondent seeks to use this confusion to draw greater traffic to its site and this greater traffic will likely lead to a greater click-through rate, in turn, resulting in a greater commercial gain for Respondent.
Respondent had constructive knowledge of Complainant's rights in the VS mark by virtue of Complainant’s prior registration of the mark and longstanding prior use and consumer awareness of the mark. Although previous panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vs4.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 21, 2012
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