Vail Trademarks, Inc. and Vail Resorts, Inc. v. Hillary Wilkerson
Claim Number: FA1711001757477
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 Hillary Wilkerson (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vailresorts-inc.com>, registered with Tucows Domains Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2017; the Forum received payment on November 7, 2017.
On November 7, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <vailresorts-inc.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 November 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@vailresorts-inc.com. Also on November 8, 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 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant registered the VAIL and VAIL RESORTS marks with the United States Patent and Trademark Office (“USPTO”) (e.g. VAIL—Reg. No. 1,521,276, registered Jan. 17, 1989; VAIL RESORTS—Reg. No. 2,695,373, registered Mar. 11, 2003).
Respondent’s <vailresorts-inc.com> domain name is identical or confusingly similar to Complainant’s mark as it includes Complainant’s VAIL and VAIL RESORTS marks in their entirety, a hyphen and the generic term “inc” as well as the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <vailresorts-inc.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its marks. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent utilizes the domain name in order to impersonate Complainant and place fraudulent orders for various goods with suppliers who believe Respondent is Complainant’s Chief Executive Officer.
Respondent registered and uses the <vailresorts-inc.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the VAIL and VAIL RESORTS marks prior to registration of the at-issue domain name. Respondent purposefully tries to capitalize on a minor typographical change—namely, the addition of the hyphen separating the terms “resorts” and “inc”—to defraud companies. Respondent passes off as Complainant’s CEO.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the VAIL and VAIL RESORTS marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name in order to impersonate Complainant and place fraudulent orders with suppliers who believe Respondent is Complainant’s Chief Executive Officer.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration of VAIL and VAIL RESORTS is sufficient to demonstrate its rights in each mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <vailresorts-inc.com> domain name contain Complainant’s VAIL and VAIL RESORTS trademarks in their entirety, the later less its space, with the term “-inc” added, all followed by the “.com” top level domain name. The difference between the at-issue domain name and each of Complainant’s trademarks is insufficient to distinguish one from the others for the purposes of Policy ¶ 4(a)(i). Therefore the Panel concludes that Respondent’s <vailresorts-inc.com> domain name is confusingly similar to Complainant’s VAIL trademark, as well as to Complainant’s VAIL RESORTS trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”)
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademarks in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Hillary Wilkerson.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Respondent uses the confusingly similar domain name to pass itself off as Complainant so that it might perpetuate fraud on third parties. It does so by hosting email at the at-issue domain name which nominally appears to originate from Complainant’s CEO. Posing as Complainant, Respondent then purchases merchandise from third party vendors. Using the at-issue domain name in this manner is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <vailresorts-inc.com> domain name was registered and used in bad faith. As discussed below, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar <vailresorts-inc.com> domain name to pass itself off as Complainant. Respondent has impersonated Complainant’s CEO via <vailresorts-inc.com> hosted email to order merchandise from third parties and then fraudulent charged the order to Complainant. Respondent’s attempt to pass itself off as Complainant demonstrates bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(b)(iv) and otherwise. See generally, Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”); see also, Juno Online Services, Inc. v. Carl Nelson (NAF FA0402000241972) (finding that registration and use of the domain name <billing-juno.com> for fraudulent purposes constitutes bad faith); see also, Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith)
Additionally, Respondent registered <vailresorts-inc.com> knowing that Complainant had trademark rights in the VAIL and VAIL RESORTS marks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s overt use of the domain name to impersonate Complainant. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <vailresorts-inc.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vailresorts-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 4, 2017
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