Vail Trademarks, Inc. and Vail Resorts, Inc. v. Mark Gasta / vailressorts
Claim Number: FA1710001755339
Complainant is Vail Trademarks, Inc. and Vail Resorts, Inc. (“Complainant”), represented by Marc Levy of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Mark Gasta / vailressorts (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vailressorts.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 24, 2017; the Forum received payment on October 24, 2017.
On October 25, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <vailressorts.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 October 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@vailressorts.com. Also on October 26, 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 November 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is a renowned and famous resort company, offering luxury, destination-based travel at iconic locations, including several premier resort locations in Colorado, California, Nevada and Utah, and other international locations, including the Whistler-Blackcomb resort in Canada and the Perisher resort in Australia. Its resorts have received numerous awards and accolades over several decades, and have consistently been ranked among the best ski resorts in the world. Complainant has been using its marks VAIL and VAIL RESORTS in connection with recreational, resort, hotel, and retail services, among other goods and services, for several decades. Complainant registered the VAIL and VAIL RESORTS marks in the United States in, respectively, 1989 and 2003.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark because the domain name <vailressorts.com> is a misspelling of Complainant’s VAIL RESORTS mark combined with the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never received any permission or license from Complainants to use the VAIL or VAIL RESORTS marks. Respondent is not using and has not used the disputed domain name in connection with a bona fide offering of goods or services. Rather, Respondent is passing off as Complainant through an email scheme to perpetrate fraud/theft, and parks the disputed domain. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and continues to use the disputed domain name in bad faith. Respondent is purposefully trying to capitalize on a common typographical error which constitutes typosquatting. Further, Respondent’s registration and use of the domain name to perpetrate fraud by fraudulently passing itself off as Complainants is evidence of bad faith registration and use. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks VAIL and VAIL RESORTS and uses them to market recreational, resort, hotel, and retail services.
Complainant’s rights in its marks date back to, respectively, 1989 and 2003.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name is parked, and used to pass off as Complainant through an email scheme to perpetrate fraud/theft.
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(f), 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 (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.”).
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Vail Trademarks, Inc., and Vail Resorts, Inc.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Vail Trademarks, Inc. is a corporation of the state of Colorado and is the owner of numerous registrations for the trademarks VAIL, VAIL RESORTS and many others, the use of which it licenses to its related corporation Vail Resorts, Inc., a corporation of the state of Delaware. Vail Trademarks, Inc. and Vail Resorts, Inc. collectively hold exclusive rights in the United States and throughout various other countries in the mark VAIL, VAIL RESORTS.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, therefore it will treat them all as a single entity in this proceeding. Nonetheless, throughout this decision, the Complainants will be collectively referred to as “Complainant”.
The disputed domain name is confusingly similar to Complainant’s mark because the domain name <vailressorts.com> is a misspelling of Complainant’s VAIL RESORTS mark combined with the gTLD “.com.” Incorporating an entire mark, misspellings, and the addition of a gTLD do not meaningfully distinguish a disputed domain name from a complainant’s mark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark in the sense of Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Where a response is lacking, Panels can look to the WHOIS information of record and may consider all evidence brought forth by a complainant in regards to any relationship between the complainant and a respondent. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The Panel notes that the WHOIS lists Respondent as “Mark Gasta.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name.
Further, Respondent fails to use the disputed domain name in connection with any bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent is attempting to pass itself off as Complainant by impersonating a former executive of Complainant in order to place fraudulent orders for various goods which ultimately leave Complainant to pay the bill. Further, Respondent parks the disputed domain name. Passing off as a complainant and parking a domain name is not considered to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). See also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use, and that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is attempting to pass itself off as Complainant and to impersonate a former employee of Complainant for fraudulent purposes. Passing off as a complainant can evince bad faith when a respondent impersonates a former employee of complainant. See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith as per Policy ¶ 4(a)(iii).
Further, Respondent is engaging in typosquatting by misspelling Complainants’ mark: the disputed domain name misspells Complainant’s VAIL RESORTS mark as “vailressorts.” Misspelling a mark in a domain name can evince bad faith registration under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Accordingly, the Panel finds that Respondent’s use of the disputed domain name to typosquat is in bad faith pursuant to 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 <vailressorts.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 20, 2017
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