VideoLink, Inc. v. Xantech Corporation
Claim Number: FA1503001608735
Complainant is VideoLink, Inc. (“Complainant”), represented by James R. Menker of Holley & Menker, P.A., Florida, USA. Respondent is Xantech Corporation (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <videolink.com>, registered with NETWORK SOLUTIONS, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2015; the Forum received payment on March 9, 2015.
On March 10, 2015, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the Forum that the <videolink.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the names. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 March 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2015 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@videolink.com. Also on March 11, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
On April 21, 2015, the Panel granted Complainant up to and including May 8, 2015, in which to establish its common law rights in the VIDEOLINK mark as of the date of the registration of the domain name. On May 8, 2015, Complainant made its Additional Submission.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant owns the VIDEOLINK mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,577,222, first used in commerce Aug. 6, 1999, filed Feb. 5, 2000, registered June 11, 2002).
2. Complainant uses the VIDEOLINK mark in connection with on-line video and audio conferencing services.
3. The <videolink.com> domain name is identical to the VIDEOLINK mark. The domain name contains Complainant’s mark in full and adds a generic top-level domain (“gTLD”) “.com” to the disputed domain name.
4. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as Respondent has abandoned its previous “video link” phrase over ten years ago.
5. Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website with no content, merely a statement noting, “This site is under construction and coming soon.” Further, Respondent has offered to sell the disputed domain name.
6. Respondent has engaged in bad faith registration and use of the <videolink.com> domain name. Respondent has offered to sell the disputed domain name in excess of out-of-pocket expenses. Respondent uses the disputed domain to resolve to a blank or inactive page. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
7. The <videolink.com> domain name was registered on June 19, 1995 and renewed on June 11, 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submission
At the request of the Panel pursuant to Rule 12, Complainant provided an Additional Submission contending that the UDRP analysis should occur not when Respondent originally registered the domain name but when Respondent renewed the domain name in June 2010.
Complainant holds trademark rights for the VIDEOLINK mark. Respondent’s domain name is confusingly similar to Complainant’s VIDEOLINK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <videolink.com> domain name, and that Respondent registered and uses the domain name 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."
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 owns the VIDEOLINK mark through registration with the USPTO (e.g., Reg. 2,577,222, first used in commerce Aug. 6, 1999, filed Feb. 5, 2000, registered June 11, 2002). Complainant uses the VIDEOLINK mark in connection with on-line video and audio conferencing services.
Although the Complainant did not have rights in the mark in 1995 when the domain name was originally registered, the relevant date for determining Complainant’s rights is when Respondent renewed the domain name in June 2010. Big 5 Corp. v. Eye/Aim. Com / Roy Fang, FA 1513704 (Nat. Arb. Forum Oct. 11, 2013) (“[A] domain name not only must be registered as per the requirements of Paragraph 2 of the Policy, but also its renewals must comply with the same standards. Thus, the requirements of the Policy can be studied not only regarding a domain name registration but also when it is renewed.”). Because Complainant’s mark was registered in 2002, Complainant had rights in the VIDEOLINK mark as of the date the domain name was renewed eight years later. The Panel determines that Complainant has established rights in the VIDEOLINK mark under Policy 4(a)(i).
Complainant points out that the <videolink.com> domain name is identical to the VIDEOLINK mark. The domain name contains Complainant’s mark in full and adds a gTLD “.com” to the disputed domain name. It has been consistently held that gTLDs such as “.com” are irrelevant to the confusing similarity 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). This Panel holds that the disputed domain name is identical to Complainant’s VIDEOLINK mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights and Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The WHOIS information simply lists “Xantech Corporation” as the registrant of the disputed domain name. Given the lack of evidence to show that the Respondent is commonly known by the domain name, the Panel concludes to the contrary 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 argues that Respondent’s lack of rights or legitimate interests in the disputed domain name is evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website with no content, merely a statement noting, “this site is under construction and coming soon.” The failure to make an active use of a resolving website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel thus concludes that Respondent’s inactive use of the disputed domain name does not convey rights or legitimate interests in a domain name under Policy ¶ ¶ 4(c)(i) or 4(c)(iii).
Further, Complainant argues that Respondent’s lack of rights and legitimate interests in the disputed domain name is supported by the evidence that Respondent previously offered to sell its rights to the domain name to Complainant in excess of out-of-pocket costs. Complainant further argues that a representative of Respondent informed Complainant that it would not consider selling the <videolink.com> domain name for “anything less than five figures.” A respondent demonstrates a lack of rights or legitimate interests when it requests compensation beyond out-of-pocket costs. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). The Panel finds Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
As noted above, Complainant argues that Respondent has offered to sell the disputed domain name in excess of out-of-pocket expenses. A respondent demonstrates bad faith when it requests compensation beyond out-of-pocket costs. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). This is evidence of bad faith registration under Policy ¶ 4(b)(i).
Complainant asserts that Respondent uses the disputed domain to resolve to a blank or inactive page. Complainant alleges that Respondent has been inactively holding the disputed domain name for at least fifteen years. Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii). The Panel finds that Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <videolink.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce Meyerson, Panelist
Dated: May 12, 2015
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