national arbitration forum

 

DECISION

 

Vivint, Inc. v. 4C Vision, Inc.

Claim Number: FA1302001485555

PARTIES

Complainant is Vivint, Inc. (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Salt Lake City, Utah, USA.  Respondent is 4C Vision, Inc. (“Respondent”), Logan, Utah, USA, acting pro se.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue iare <vivintwireless.com>, <vivintmobile.com>, <vivintgps.com>, <vivintcommunications.com>, <viventwireless.com>, <viventmobile.com>, <viventgps.com>, and <viventcommunications.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Richard DiSalle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2013; the National Arbitration Forum received payment on February 16, 2013.

 

On February 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <vivintwireless.com>, <vivintmobile.com>, <vivintgps.com>, <vivintcommunications.com>, <viventwireless.com>, <viventmobile.com>, <viventgps.com>, and <viventcommunications.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2013 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@vivintwireless.com, postmaster@vivintmobile.com, postmaster@vivintgps.com, postmaster@vivintcommunications.com, postmaster@viventwireless.com, postmaster@viventmobile.com, postmaster@viventgps.com, postmaster@viventcommunications.com.  Also on February 19, 2013, the 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.

 

A timely Response was received and determined to be complete on March 8, 2013.

 

On March 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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.

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

A.  Complainant’s Contentions

 

Policy ¶ 4(a)(i):  Complainant’s Rights / Confusing Similarity

Complainant owns rights for the VIVINT mark by way of United States Patent & Trademark Office (“USPTO”) trademark certificates of registration.  See Reg. No. 4,166,498 registered on July 3, 2012 (filed Dec. 15, 2010).  Complainant uses the mark to sell and install security systems.  Respondent’s <vivintwireless.com>, <vivintmobile.com>, <vivintgps.com>, and <vivintcommunications.com> domain names all contain the VIVINT mark in its entirety, adding the irrelevant generic top-level domain (“gTLD”) “.com,” and a generic term.  It is well established that a meaningful domain name is not acquired by adding a generic term to a registered mark.  The <viventwireless.com>, <viventmobile.com>, <viventgps.com>, and <viventcommunications.com> domain names similarly include a gTLD, a generic term, and a misspelling of the VIVINT mark via the replacement of the second letter “i” with the phonetically similar letter “e.”


Policy ¶ 4(a)(ii):  Respondent Lacks Rights & Legitimate Interests

Respondent is not commonly known by these domain names.  The term VIVINT was invented by Complainant and thus has no meaning other than to identify Complainant’s business.  Complainant has not otherwise authorized or permitted Respondent’s use of the VIVINT mark in its domain names, therefore it is not commonly known by these domain names.  Respondent has not made a bona fide offering of goods or services through these domain names, and there is no legitimate noncommercial or fair use.  All of the domain names resolve to parked pages that feature no content beyond sponsored links by the registrar.

 

Policy ¶ 4(a)(iii):  Respondent’s Bad Faith Use & Registration

Respondent likely intended to register and use these domain names so as to disrupt Complainant’s business or reap some financial gain.  Respondent has, for over a year, left these domain names to resolve to registrar-parked and undeveloped websites.  A failure to put these domain names to some active use for over a year is a sign of bad faith.  Respondent had actual knowledge of Complainant’s rights in the mark.  Respondent’s knowledge arises from the fanciful and arbitrary nature of the VIVINT mark, which is so distinct as to otherwise be unconceivable if Respondent had never encountered the VIVINT mark before.

 

B.  Respondent’s Contentions

The Panel notes the following domain name registrations:

Respondent registered the domain names so it would receive credit and payment for embodying the ideas regarding any future mobile or wireless services that Complainant may choose to offer under its VIVINT mark.  Respondent requests that Complainant purchase all of the domain names from Respondent for a reasonable price if Complainant has a need for them.  Respondent denies that it will extort Complainant for its purchase of the domain names, denies any intent to compete with Complainant, denies any intent to deceive Internet users into visiting the domain names, and denies that it is receiving any advertising revenues from these domain names.

 

 

FINDINGS

(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.

 

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."

 

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 claims that it owns rights for the VIVINT mark by way of USPTO trademark certificates of registration.  See Reg. No. 4,166,498 registered on July 3, 2012 (filed Dec. 15, 2010).  Complainant claims to use this mark in conjunction with the provision of security systems.  Complainant’s USPTO registration satisfactorily establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i) back to the December 15, 2010 filing date of the trademark.  See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant next argues that Respondent’s <vivintwireless.com>, <vivintmobile.com>, <vivintgps.com>, and <vivintcommunications.com> domain names all contain the VIVINT mark in its entirety, adding the irrelevant gTLD “.com,” and a generic term.  Complainant avers that it is well established that one does not acquire a meaningful domain name by adding a generic term to a registered mark.  Complainant turns to the <viventwireless.com>, <viventmobile.com>, <viventgps.com>, and <viventcommunications.com> domain names, noting that these domain names similarly include a gTLD, a generic term, and a misspelling of the VIVINT mark via the replacement of the second letter “i” with the phonetically similar letter “e.”  The Panel agrees that the addition of gTLDs and generic terms such as “gps,” “mobile,” and “wireless” are meaningless additions to the otherwise distinct VIVINT mark.  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); Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).  The Panel further agrees that the <viventwireless.com>, <viventmobile.com>, <viventgps.com>, and <viventcommunications.com> domain names’ misspelling of the VIVINT mark illustrates the confusing similarity of the domain names.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).  Therefore, the Panel finds that all of these domain names are confusingly similar to the VIVINT mark under Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

The Panel notes that 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.”).

 

Complainant argues that Respondent is not commonly known by these domain names.  Complainant explains that the term VIVINT was invented by Complainant and thus has no meaning other than to identify Complainant’s business.  Complainant avers that it has not otherwise authorized or permitted Respondent’s use of the VIVENT mark in its domain names, therefore Respondent is not commonly known by these domain names.  The Panel notes that all of the disputed domain names list “4C Vision, Inc.” as the registrant.  The Panel also notes that the Response to this proceeding was submitted by the WHOIS information’s listed administrative contact, “Jeremiah Cox.”  The Panel agrees that, based upon this record, there is nothing to suggest Respondent was known by any of these disputed domain names under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant contends that Respondent has not made a bona fide offering of goods or services through these domain names, and that there is no legitimate noncommercial or fair use occurring.  Complainant claims that all of the domain names resolve to parked pages that feature no content beyond sponsored links by the registrar.  The Panel notes that all of the domain names resolve to a webpage hosted by GoDaddy.com, LLC, wherein the Internet user is given the option to purchase the respective domain name, or find another domain name that it may wish to purchase.  The Panel agrees that because Respondent is ultimately held accountable for the disputed domain names’ content, the use of the domain names to solicit them for sale in no way illustrates a Policy ¶ 4(c)(i) bona fide offering of goods and services, nor is such a solicitation a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site.  Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).

 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent likely intended to register and use these domain names so as to disrupt Complainant’s business or reap some financial gain.  At present, all of these domain names direct the Internet user to a parked website, which requests Respondent to turn the respective domain name into a website, whilst also asking the general public if they would like to purchase the domain name.  Previous panels have found that a Policy ¶ 4(b)(iii) instance of bad faith arises when the disputed domain name is being used in some way that competes against the complainant in a disruptive manner.  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).  The Panel believes that Respondent’s use of these domain names in such a manner meets this criteria, and finds that Respondent’s use and registration of these domain names constitutes Policy ¶ 4(b)(iii) bad faith.

 

 

Complainant asserts that Respondent has, for over a year, left these domain names to resolve to registrar-parked and undeveloped websites.  Complainant argues that a failure to put these domain names to some active use for over a year is a sign of bad faith.  The Panel notes that in its Response, Respondent explicitly states the domain names are to remain undeveloped until Complainant outright refuses to purchase them.  Respondent’s decision to allow these domain names to resolve to an undeveloped parked website illustrates Respondent’s bad faith under Policy ¶ 4(a)(iii).  See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith); Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (“Mere [failure to make an active use] of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.”).

 

Complainant finally argues that Respondent had actual knowledge of Complainant’s rights in the mark.  Complainant asserts that Respondent’s knowledge arises from the fanciful and arbitrary nature of the VIVINT mark, which is so distinct as to otherwise be an unconceivable inclusion in a domain name if Respondent had never encountered the VIVINT mark before.  The Panel notes that Respondent states in its Response that the reason it is holding on to these domain names is because it hopes Complainant will compensate Respondent in some manner.  The 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 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

 

DECISION

The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <vivintwireless.com>, <vivintmobile.com>, <vivintgps.com>, <vivintcommunications.com>, <viventwireless.com>, <viventmobile.com>, <viventgps.com>, and <viventcommunications.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Richard DiSalle, Panelist

Dated:  April 5, 2013

 

 

 

 

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