national arbitration forum

 

DECISION

 

Vossen Wheels, Inc. v. Varun Wadehra

Claim Number: FA1307001511511

PARTIES

Complainant is Vossen Wheels, Inc. (“Complainant”), represented by Matthew W. Stavish of Berenato & White, LLC, Maryland, United States.  Respondent is Varun Wadehra (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <vossenprecisionseries.com>, <teamvossen.com>, <vpswheel.com>, <vpswheels.com>, <vpsforgedwheels.com>, <vpsforged.com>, <vossenprecisionwheels.com>, <vossenskate.com>, <vossenskateboard.com>, <vossenskateboards.com>, <vossenskatedecks.com>, <vossenskatedeck.com>, <vossenstore.com>, <vossencv3.com>, <vossenconcave.com>, <vossenapparel.com>, and <vossengear.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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2013; the National Arbitration Forum received payment on July 25, 2013.

 

On July 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <vossenprecisionseries.com>, <teamvossen.com>, <vpswheel.com>, <vpswheels.com>, <vpsforgedwheels.com>, <vpsforged.com>, <vossenprecisionwheels.com>, <vossenskate.com>, <vossenskateboard.com>, <vossenskateboards.com>, <vossenskatedecks.com>, <vossenskatedeck.com>, <vossenstore.com>, <vossencv3.com>, <vossenconcave.com>, <vossenapparel.com>, and <vossengear.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 August 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@vossenprecisionseries.com, postmaster@teamvossen.com, postmaster@vpswheel.com, postmaster@vpswheels.com, postmaster@vpsforgedwheels.com, postmaster@vpsforged.com, postmaster@vossenprecisionwheels.com, postmaster@vossenskate.com, postmaster@vossenskateboard.com, postmaster@vossenskateboards.com, postmaster@vossenskatedecks.com, postmaster@vossenskatedeck.com, postmaster@vossenstore.com, postmaster@vossencv3.com, postmaster@vossenconcave.com, postmaster@vossenapparel.com, and postmaster@vossengear.com.  Also on August 5, 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.

 

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

 

On September 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

  1. Policy  ¶ 4(a)(i)
    1. Complainant, Vossen Wheels, Inc., has used its VOSSEN and VOSSEN PRECISION SERIES marks in commerce since 2007 in connection with the production and marketing of a range of consumer products including vehicle wheels, skateboards and related goods, and gear. Complainant receives between $1 million and $2.5 million in revenue annually.
    2. Complainant has common law rights in the VOSSEN mark because since 2007 this mark has become uniquely associated with the vehicle wheel and gear products marketed under that name. Complainant has spent considerable time and money in developing the goodwill associated with the VOSSEN mark. Complainant similarly has common law rights in the VOSSEN PRECISION SERIES mark because since 2007 this mark has become uniquely associated with Complainant’s “lightweight one-piece forged wheel product,” and Complainant has spent considerable time and money in developing the goodwill associated with this product and mark. In addition, Complainant owns trademark applications for with the United States Patent and Trademark Office (“USPTO”) for its VOSSEN and VOSSEN PRECISION SERIES marks. Both applications were filed on February 7, 2013 and claim commercial use dating back to December 31, 2007.
    3. Complainant is the owner of the <vossenwheels.com> domain name.
    4. Respondent’s <teamvossen.com>, <vossenskate.com>, <vossenskateboard.com>, <vossenskateboards.com>, <vossenskatedecks.com>, <vossenskatedeck.com>, <vossenstore.com>, <vossenapparel.com>, <vossengear.com>, <vossencv3.com>, and <vossenconcave.com> domain names are confusingly similar to Complainant’s VOSSEN mark, because each disputed domain name fully incorporates the mark and merely adds either:

                                          i.    a generic term such as “team,” “skate,” “skateboard,”  “skatedecks,” “skatedeck,” “store,” “apparel,” or “gear;” or

                                         ii.    a descriptive term or phrase such as “cv3,” or “concave.”

    1. Respondent’s <vossenprecisionseries.com>, <vossenprecisionwheels.com>, <vpswheel.com>, <vpswheels.com>, <vpsforgedwheels.com>, and <vpsforged.com> domain names are confusingly similar to Complainant’s VOSSEN PRECISION SERIES mark or the “vps” abbreviation of that mark.
  1. Policy  ¶ 4(a)(ii)
    1. Respondent is not commonly known by any of the disputed domain names, because the WHOIS information identifies the registrant of these domain names as “Varun Wadehra,” not “Vossen” or “vps.” Complainant has not authorized Respondent to use its VOSSEN or VOSSEN PRECISION SERIES marks in a domain name.
    2. Respondent’s use of the disputed domain names is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii), because Respondent has failed to make any active use of the disputed domain names. Instead, Respondent registered the disputed domain names in order to sell them for an amount in excess of Respondent’s own out-of-pocket costs, a use that is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
  2. Policy  ¶ 4(a)(iii)
    1. By offering each of the disputed domain names for sale, Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(i). Each of the disputed domain names is currently listed for sale at the price of $69.99, which is greater than $11.99, the current rate charged by the relevant registrar to register a domain name with the generic top-level domain (“gTLD”) “.com.” Furthermore, between May 16, 2013 and June 25, 2013, the disputed <vossenprecisionseries.com> and <teamvossen.com> domain names were listed for sale at a price of $50,000 each, an amount grossly in excess of Respondent’s costs.
    2. By registering seventeen domain names that are confusingly similar to Complainant’s VOSSEN and VOSSEN PRECISION SERIES marks, Respondent has engaged in a pattern of bad faith registration, which is further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii).
    3. The disputed domain names take advantage of Complainant’s well-known VOSSEN and VOSSEN PRECISION SERIES marks, and Respondent’s failure to make an active use of the disputed domain name tends to show the domain names were registered and used in bad faith under Policy ¶ 4(b)(iv).
    4. Because Respondent is the CEO of Complainant’s competitor, the Panel may infer that Respondent had actual notice of Complainant’s rights in the marks, which tends to show that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
  3. Respondent registered the disputed domain names on the following dates:
    1. On October 27, 2012, Respondent registered the <vossenprecisionseries.com> domain name. 
    2. On October 29, 2012, Respondent registered the <vpswheels.com>, <vossenstore.com>, <teamvossen.com> and <vossencv3.com> domain names. 
    3. On November 15, 2012, Respondent registered the <vpswheel.com>, <vpsforgedwheels.com>, <vpsforged.com>, <vossenprecisionserieswheels.com>, and <vossenconcave.com> domain names.  
    4. On February 27, 2013, Respondent registered the <vossenapparel.com>, <vossengear.com>, <vossenskate.com>, <vossenskateboard.com>, and <vossensakeboards.com> domain names.  
    5. On June 16, 2013, Respondent registered the <vossenskatedecks.com> and <vossenskatedeck.com> domain names. 

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Vossen Wheels, Inc., has used its VOSSEN and VOSSEN PRECISION SERIES marks in commerce since 2007 in connection with the production and marketing of a range of consumer products including vehicle wheels, skateboards and related goods, and gear. Complainant receives between $1 million and $2.5 million in revenue annually.

 

Complainant has common law rights in the VOSSEN mark because since 2007 this mark has become uniquely associated with the vehicle wheel and gear products marketed under that name. Complainant has spent considerable time and money in developing the goodwill associated with the VOSSEN mark. Complainant similarly has common law rights in the VOSSEN PRECISION SERIES mark because since 2007 this mark has become uniquely associated with Complainant’s “lightweight one-piece forged wheel product,” and Complainant has spent considerable time and money in developing the goodwill associated with this product and mark. In addition, Complainant owns trademark applications for with the United States Patent and Trademark Office (“USPTO”) for its VOSSEN and VOSSEN PRECISION SERIES marks. Both applications were filed on February 7, 2013 and claim commercial use dating back to December 31, 2007.  

 

Respondent, Varun Wadehra, registered the disputed domain names on the following dates:

a.    On October 27, 2012, Respondent registered the <vossenprecisionseries.com> domain name. 

b.    On October 29, 2012, Respondent registered the <vpswheels.com>, <vossenstore.com>, <teamvossen.com> and <vossencv3.com> domain names. 

c.    On November 15, 2012, Respondent registered the <vpswheel.com>, <vpsforgedwheels.com>, <vpsforged.com>, <vossenprecisionserieswheels.com>, and <vossenconcave.com> domain names.  

d.    On February 27, 2013, Respondent registered the <vossenapparel.com>, <vossengear.com>, <vossenskate.com>, <vossenskateboard.com>, and <vossensakeboards.com> domain names.  

e.    On June 16, 2013, Respondent registered the <vossenskatedecks.com> and <vossenskatedeck.com> domain names. 

 

Respondent is the CEO of Wheelrep, LLC, a competitor of Complainant in the vehicle wheels industry. Respondent has failed to make any active use of the disputed domain names. Instead, Respondent registered the disputed domain names in order to sell them for an amount in excess of Respondent’s out-of-pocket costs.

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant alleges it has common law rights in the VOSSEN and VOSSEN PRECISION SERIES marks. Policy ¶ 4(a)(i) does not require a complainant to register a mark with a government agency in order to sufficiently establish its right in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Rather, a complainant may demonstrate that it has developed consumer recognition and established common law rights in its mark. Therefore, the Panel must determine whether Complainant has common law rights in its VOSSEN and VOSSEN PRECISION SERIES marks.

Complainant alleges that it gained common law rights in the VOSSEN and VOSSEN PRECISION SERIES marks through continuous use of the marks in interstate commerce since 2007. Specifically, Complainant alleges that its VOSSEN mark has developed a secondary meaning identifying Complainant’s various vehicle wheel and gear products marketed under the mark. Similarly, Complainant alleges that its VOSSEN PRECISION SERIES mark has developed a secondary meaning identifying Complainant’s “lightweight one-piece forged wheel product.” To support its contentions of secondary meaning, Complainant points out that it has spent considerable time and money in the advertising and development of these marks, and that through the sale of the products marketed under both the VOSSEN and VOSSEN PRECISION SERIES marks Complainant makes between $1 million and $2.5 million in revenue annually. Complainant further points out that it is the owner of a trademark application with the USPTO for each mark, which tends to support Complainant’s contention that it has developed common law rights in the marks. Both of the applications were filed on February 7, 2013 and claim commercial use dating back to December 31, 2007.

 

Previous panels have held that secondary meaning indicating a complainant’s common law rights in a mark is established when, in the minds of the public, the mark indicates the complainant as the source of a product. AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Previous panels have suggested that a complainant can establish secondary meaning through evidence of the complainant’s advertising efforts, its continuous use of the mark in connection with its products or services, and the amount of sales the complainant gains from its use of the mark. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). In this case, Complainant has alleged that its use and advertising of the VOSSEN and VOSSEN PRECISION SERIES marks has been continuous since 2007, and it has also put forward evidence of its sales revenue generated by these marks. Therefore, the Panel concludes that Complainant’s marks have developed a secondary meaning in the minds of the public, identifying Complainant as the source of products marketed under the VOSSEN and VOSSEN PRECISION SERIES marks.

 

Complainant next alleges that the each of the seventeen disputed domain names is confusingly similar to its VOSSEN or VOSSEN PRECISION SERIES mark. First, Complainant alleges that the <teamvossen.com>, <vossenskate.com>, <vossenskateboard.com>, <vossenskateboards.com>, <vossenskatedecks.com>, <vossenskatedeck.com>, <vossenstore.com>, <vossenapparel.com>, <vossengear.com>, <vossencv3.com>, and <vossenconcave.com> domain names are confusingly similar to Complainant’s VOSSEN mark, because each of these disputed domain names fully incorporates the VOSSEN mark and merely adds either a generic term or a descriptive term. The <teamvossen.com>, <vossenskate.com>, <vossenskateboard.com>, <vossenskateboards.com>, <vossenskatedecks.com>, <vossenskatedeck.com>, <vossenstore.com>, and <vossengear.com> domain names incorporate Complainant’s VOSSEN mark while adding the generic term “team,” “skate,” “skateboard,” “skateboards,” “skatedecks,” “skatedeck,” “store,” “apparel,” or “gear,” respectively. Similarly, the <vossencv3.com> and <vossenconcave.com> domain names fully incorporate Complainant’s VOSSEN mark while adding the descriptive term “cv3” or “concave.” Complainant contends these terms are descriptive terms insofar as they refer to Complainant’s vehicle wheels products designated as “cv3” and “concave.” These eleven disputed domain names also add the gTLD “.com.” However, the addition of a gTLD such as “.com” is considered irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See, e.g., 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). Also, in Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel held that the respondent’s <amextravel.com> domain name was confusingly similar to Complainant’s AMEX mark, because the mere addition of a generic or descriptive word to a mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). Each of the <teamvossen.com>, <vossenskate.com>, <vossenskateboard.com>, <vossenskateboards.com>, <vossenskatedecks.com>, <vossenskatedeck.com>, <vossenstore.com>, <vossenapparel.com>, <vossengear.com>, <vossencv3.com>, and <vossenconcave.com> domain names fully incorporate Complainant’s VOSSEN mark while adding a single generic or descriptive term. Therefore, the Panel finds that Complainant has established that these eleven disputed domain names are confusingly similar to Complainant’s VOSSEN mark pursuant to Policy ¶ 4(a)(i).

 

Complainant next alleges that the disputed <vossenprecisionseries.com>, <vossenprecisionwheels.com>, <vpswheel.com>, <vpswheels.com>, <vpsforgedwheels.com>, and <vpsforged.com> domain names are confusingly similar to Complainant’s VOSSEN PRECISION SERIES mark. Complainant alleges that the <vossenprecisionseries.com> domain name is identical to its VOSSEN PRECISION SERIES mark. Complainant alleges that the disputed <vossenprecisionwheels.com> domain name is confusingly similar to its VOSSEN PRECISION SERIES mark because it merely replaces the word “series” with the generic term “wheels.” Finally, Complainant alleges that the <vpswheel.com>, <vpswheels.com>, <vpsforged.com>, and <vpsforgedwheels.com> domain names are confusingly similar to its VOSSEN PRECISION SERIES mark because each of these domain names incorporate the term “vps,” an abbreviation of the VOSSEN PRECISION SERIES mark used by Complainant as a media identifier, while adding the generic terms “wheel,” “wheels,” “forged,” or “forged wheels.” Each of the <vossenprecisionseries.com>, <vossenprecisionwheels.com>, <vpswheel.com>, <vpswheels.com>, <vpsforgedwheels.com>, and <vpsforged.com> domain names also adds the gTLD “.com” and eliminates the spaces found in the VOSSEN PRECISION SERIES mark. The addition of a gTLD and the elimination of spaces found in a mark are considered irrelevant for the purpose of a confusingly similarity analysis under Policy ¶ 4(a)(i). See, e.g., Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

 

The Panel finds that the disputed <vossenprecisionseries.com> domain name is identical to Complainant’s VOSSEN PRECISION SERIES mark under Policy ¶ 4(a)(i). The Panel finds that the <vossenprecisionwheels.com> domain name is confusingly similar to the VOSSEN PRECISION SERIES mark under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (found the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).

 

An abbreviation of a complainant’s trademark that has been adopted as a way of designating the complainant’s product is equally protected as the trademark itself. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”). However, Complainant has failed to show that the “vps” abbreviation of its VOSSEN PRECISION SERIES mark has been adopted to identify Complainant’s products.  Therefore, the Panel concludes that the “vps” abbreviation is not entitled to the same protection as the VOSSEN PRECISION SERIES mark. Thus, the Panel finds that the <vpswheel.com>, <vpswheels.com>, <vpsforged.com>, and <vpsforgedwheels.com>, domain names are not confusingly similar to Complainant’s VOSSEN PRECISION SERIES mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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).

 

Complainant first alleges that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). Complainant points out that the WHOIS information identifies the registrant of the disputed domain names as “Varun Wadehra.” Complainant further argues that Respondent has not been authorized to use Complainant’s VOSSEN or VOSSEN PERFORMANCE SERIES marks in a domain name and that Respondent is not associated with Complainant. On the contrary, Complainant alleges that Respondent is the CEO of Wheelrep, LLC, a competitor of Complainant in the vehicle wheels industry. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent’s use of the disputed domain names cannot be protected as 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), because the disputed domains resolve to inactive websites. Complainant contends that Respondent has thus failed to make any active commercial use of the domain names whatsoever. A respondent’s inactive holding of a domain name shows that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(c)(i) or ¶4(c)(iii). See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

Complainant further alleges that Respondent lacks legitimate rights or interests in the disputed domain names under Policy ¶ 4(a)(ii) because Respondent registered the disputed domain names in order to sell them for an amount in excess of Respondent’s own out-of-pocket costs. Specifically, Complainant alleges that each of the disputed domain names is currently up for auction for a price of $69.99, which is in excess of $11.99, Respondent’s likely original cost. Moreover, during the period between May 16, 2013 and June 25, 2013, the disputed <vossenprecisionseries.com> and <teamvossen.com> domain names were listed for sale at a price of $50,000 each. Respondent’s offering a confusingly similar domain name for sale in an amount in excess of respondent’s out-of-pocket-costs tends to show that respondent lacks rights or legitimate interests in the disputed domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”). Therefore, the Panel finds that Respondent lacks legitimate rights or interests in the confusingly similar disputed domain names under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that by offering each of the disputed domain names for sale, Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(i). In Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), the Panel found that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the disputed domain name. The Panel finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(i).

 

Complainant contends that Respondent has demonstrated bad faith under Policy ¶ 4(b)(ii), because by registering seventeen domain names that are confusingly similar to Complainant’s VOSSEN and VOSSEN PRECISION SERIES marks, Respondent has engaged in a pattern of bad faith registration. In EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005), the panel held that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii). In the instant proceeding, Respondent registered thirteen domain names that are confusingly similar to Complainant’s VOSSEN and VOSSEN PRECISION SERIES marks. Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii).

 

Complainant further alleges that Respondent’s failure to make an active use of the disputed domain names, all of which take advantage of Complainant’s VOSSEN and VOSSEN PRECISION SERIES marks, is evidence of Respondent’s bad faith under Policy ¶ 4(b)(iv). In Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000), the panel found bad faith where the respondent made no use of the domain name in question and there were no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose. The Panel finds that Respondent has registered and used the confusingly similar disputed domain names in bad faith under Policy ¶ 4(b)(iv).

 

Finally, Complainant argues that Respondent’s actual notice of Complainant’s rights in the VOSSEN and VOSSEN PRECISION SERIES marks shows Respondent registered the confusingly similar disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). Previous panels have held that a respondent’s actual knowledge of a complainant’s mark can indicate respondent’s bad faith under Policy ¶ 4(a)(iii), and that such actual notice can be inferred based on the circumstances. Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.  Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed.  Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Accordingly, Respondent’s actual knowledge of Complainant’s rights is evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to the <vossenprecisionseries.com>, <teamvossen.com>, <vossenprecisionwheels.com>, <vossenskate.com>, <vossenskateboard.com>, <vossenskateboards.com>, <vossenskatedecks.com>, <vossenskatedeck.com>, <vossenstore.com>, <vossencv3.com>, <vossenconcave.com>, <vossenapparel.com>, and <vossengear.com> domain names.

 

Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED as to the <vpswheel.com>, <vpswheels.com>, <vpsforgedwheels.com>, and <vpsforged.com> domain names.

 

Accordingly, it is Ordered that the <vossenprecisionseries.com>, <teamvossen.com>, <vossenprecisionwheels.com>, <vossenskate.com>, <vossenskateboard.com>, <vossenskateboards.com>, <vossenskatedecks.com>, <vossenskatedeck.com>, <vossenstore.com>, <vossencv3.com>, <vossenconcave.com>, <vossenapparel.com>, and <vossengear.com> domain names be TRANSFERRED from Respondent to Complainant. It is Further Ordered that the <vpswheel.com>, <vpswheels.com>, <vpsforgedwheels.com>, and <vpsforged.com> domain names REMAIN WITH Respondent.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 17, 2013

 

 

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