VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC
Claim Number: FA1506001625115
Complainant is VNY Model Management, Inc. (“Complainant”), represented by Tony Klemptner of Traverse Legal, PLC, Michigan, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vnymodels.com>, registered with Fabulous.com Pty 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 19, 2015; the Forum received payment on June 19, 2015.
On June 22, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <vnymodels.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 July 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@vnymodels.com. Also on July 8, 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 August 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
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
Factual Background: On or about December 6, 2010, the Registrar for the <vnymodels.com> domain name changed to Fabulous.com Pty Ltd. and the Registrant changed to privacy protected status.
Complainant uses the VNY MODEL MANAGEMENT mark in connection with its business as a modeling agency. Complainant has registered the VNY MODEL MANAGEMENT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,504,258, registered Sep. 23, 2008), establishing rights in the mark. Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark as it merely omits the term “management” and pluralizes “model,” while adding the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not a licensee of Complainant, nor is Respondent commonly known by the <vnymodels.com> domain name. In addition, Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, the resolving website is merely a parking page which presumably nets Respondent commercial gain via pay-per-click links.
Respondent registered and used the <vnymodels.com> domain name in bad faith. Respondent has previously been found to have cybersquatted in a prior UDRP decision and therefore may be considered to have evinced a pattern of bad faith under Policy ¶ 4(b)(ii). See Valero Energy Corporation and Valero Marketing and Supply Company v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID : 62520014085963, D2015-0787 (WIPO June 16, 2015). Next, while Respondent presumably profits from its infringing use of the <vnymodels.com> domain name, Policy ¶ 4(b)(iv) bad faith is apparent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is VNY Model Management, Inc. of New York, NY, USA. Complainant is the owner of the domestic registration for the mark VNY Model Management which it has used continuously since May 2005 in connection with its offering of services as a modeling agency.
Respondent is Lisa Katz / Domain Protection LLC of Dallas, TX, USA. Respondent’s registrar’s address is listed as Queensland, Australia. The Panel notes that the disputed domain name was created on or about June 16, 2005.
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 uses the VNY MODEL MANAGEMENT mark in connection with its business as a modeling agency. Complainant indicates it has registered the VNY MODEL MANAGEMENT mark with the USPTO (Reg. No. 3,504,258, registered Sep. 23, 2008). Complainant asserts its rights under Policy ¶ 4(a)(i) pursuant to this registration. Prior panels have agreed in the past with this argument. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel here finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark. The Panel notes that it merely omits the term “management” and pluralizes “model,” while adding the gTLD “.com.” Previous panels have found the omission of terms to be an insignificant alteration. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Pluralization has also failed to distinguish domain names from a mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Past panels have also found gTLD additions irrelevant to such an analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel here finds that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant argues Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant asserts Respondent is not a licensee of Complainant, nor is Respondent commonly known by the <vnymodels.com> domain name. Where a complainant has made such representations in light of a respondent’s failure to submit a response, prior panels have denied a respondent rights under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel here finds that Respondent has failed to provide any evidence that it is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant asserts that Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services or for a legitimate noncommercial or fair use. The Panel notes that the resolving website is a parking page which presumably nets Respondent commercial gain via pay-per-click links that include; “Models,” “Fashion Models,” and “Models Agencies”. The Panel finds that Respondent’s page fails to support a finding of any rights under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent registered and used the <vnymodels.com> domain name in bad faith under Policy ¶ 4(a)(iii). Complainant notes that Respondent has previously been found to have cybersquatted in a prior UDRP decision and therefore may be considered to have evinced a pattern of bad faith under Policy ¶ 4(b)(ii). See Valero Energy Corporation and Valero Marketing and Supply Company v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID : 62520014085963, D2015-0787 (WIPO June 16, 2015). Further, while Respondent presumably profits from its infringing use of the <vnymodels.com> domain name, Complainant argues that Policy ¶ 4(b)(iv) bad faith is apparent based on the website offering links to Complainant’s competitors in an effort to disrupt Complainant’s business. Prior panels have found such use to constitute bad faith. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel here finds that Respondent has attempted to commercially profit from Internet user confusion which indicates bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <vnymodels.com> domain name be TRANSFERRED from Respondent to Complainant.
_
Darryl C. Wilson, Panelist
Dated: August 17, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page