Valley Veterinary Clinic Ltd. d/b/a Valley Vet Supply v. Maddisyn Fernandes / Fernandes Privacy Holdings
Claim Number: FA1705001732184
Complainant is Valley Veterinary Clinic Ltd. d/b/a Valley Vet Supply (“Complainant”), represented by Kathleen Cooney-Porter of Muncy, Geissler, Olds & Lowe, P.C., Virginia, USA. Respondent is Maddisyn Fernandes / Fernandes Privacy Holdings (“Respondent”), Bolivia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is<valleyvetsupply.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2017; the Forum received payment on May 17, 2017.
On May 22, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <valleyvetsupply.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 May 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2017 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@valleyvetsupply.com. Also on May 30, 2017, 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 June 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the V VALLEY VET SUPPLY mark to offer and sell veterinary supplies, equine supplies, clothing, saddlery and related products through mail order and telephone shop-at-home services.
Complainant holds a registration for the V VALLEY VET SUPPLY service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,208,007, registered December 8, 1998, renewed September 11, 2008.
Respondent registered the domain name <valleyvetsupply.com> on or about August 8, 2000.
The domain name is confusingly similar to Complainant’s V VALLEY VET SUPPLY mark.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent has not been commonly known by the domain name.
Complainant has not granted Respondent a license or other permission to use the VALLEY VET SUPPLY mark for any purpose.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Respondent uses the domain name to deploy ransomware on the computers of Internet customers of Complainant.
Respondent uses the domain name to attempt to acquire commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation or endorsement of Respondent’s resolving website.
Respondent has established a pattern of bad faith registration and use of domain names.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the V VALLEY VET SUPPLY service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registrations for a mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
This is so without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Bolivia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <valleyvetsupply.com> is confusingly similar to Complainant’s V VALLEY VET SUPPLY mark as it contains the mark in its entirety, save for the initial “V,” and less the spaces between the terms of the mark, but with the addition of generic Top Level Domain (“gTLD”), “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See,, for example, Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015):
Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends that Respondent has not been commonly known by the <valleyvetsupply.com> domain name, and that Complainant has not authorized Respondent to use the V VALLEY VET SUPPLY mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Maddisyn Fernandes / Fernandes Privacy Holdings,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. v. Song Bin, FA1408001574905 (Forum September 17, 2014) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name, as demonstrated by the relevant WHOIS information and the fact that a UDRP complainant had not authorized that respondent to use its mark). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <valleyvetsupply.com> domain name to acquire commercial gain by installing ransomware on the computers of unsuspecting Internet users. This employment of the domain name is 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) so as to confirm in Respondent rights to or legitimate interests in the domain name as provided in those sub
sections of the Policy. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The Complaint shows that Respondent has registered and used a number of other domain names in bad faith, as reflected in several UDRP proceedings decided against it. See State Farm Mutual Automobile Insurance Company v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA1711988 (Forum February 14, 2017) (transferring gstatefarm.com); Consolidated Property Holdings, Inc. v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA1713632 (Forum March 17, 2017) (transferring biglotsfurniture.com); and R.R. Donnelley & Sons Company v. Maddisyn Fernandes / Fernandes Privacy Holdings, FA1716422 (Forum March 20, 2017) (transferring insiderrd.net). In each such instance, Respondent’s registration and use of a challenged domain name deprived a UDRP complainant of the opportunity to employ a similar domain name derived from its valid mark. Under Policy ¶ 4(b)(ii), this pattern can be taken as evidence of Respondent’s bad faith in registering and using the <valleyvetsupply.com> domain name in the instant case. See, for example, Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004):
Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).
We are also persuaded by the evidence that Respondent’s registration and use of the <valleyvetsupply.com> domain name, which we have found is confusingly similar to Complainant’s V VALLEY VET SUPPLY service mark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving web site. Under Policy ¶ 4(b)(iv), this stands as further proof of Respondent’s bad faith in registering and using the domain name as alleged in the Complaint. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO September 21, 2000) (finding, under Policy ¶ 4(b)(iv), that a respondent’s expected use of a disputed domain name, which was confusingly similar to the mark of a UDRP complainant, would likely mislead Internet users to believe that the domain name was connected with that complainant, thus justifying a conclusion of bad faith registration and use on the part of that respondent).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <valleyvetsupply.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 29, 2017
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