Vidyo, Inc. v. scott mccrea
Claim Number: FA1809001805715
Complainant is Vidyo, Inc. (“Complainant”), represented by Susan Goldsmith of McCarter& English, LLP, New Jersey, USA. Respondent is scott mccrea (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <businessvidyo.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2018; the Forum received payment on September 13, 2018.
On September 13, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <businessvidyo.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 2018 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@businessvidyo.com. Also on September 14, 2018, 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 October 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarized as follows:
Complainant is the owner of the trade mark VIDYO registered, inter alia, in the USA for video related services with first use recorded as 2008.
The Domain Name registered in 2018 is confusingly similar to Complainant’s trade mark containing it in its entirety and only adding the generic term ‘business’.
Respondent is not commonly known by the Domain Name and has not been authorized by Complainant to use Complainant’s mark. The Domain Name has not been used and has been registered for sale. Respondent has no rights or legitimate interests in the Domain Name.
Offering a domain name for sale for a sum in excess of out of pocket expenses is bad faith registration and use under the Policy. The Domain Name has been used to point to competing links to video companies showing Complainant is being targeted.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the trade mark VIDYO registered, inter alia, in the USA for video related services with first use recorded as 2008.
The Domain Name registered in 2018 points to a parking page with links to competing companies to Complainant and Respondent has recorded an intention to sell the Domain Name for $10,000.
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.”).
Identical or Confusingly Similar
The Domain Name consists of a sign confusingly similar to Complainant’s VIDYO mark (registered in the USA for video related services with first use recorded as 2008), the generic ‘business’ and the gTLD.com.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the complainant). The Panel agrees that the addition of the generic word ‘business’ does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.
The gTLD .com does not serve to distinguish the Domain Name from the VIDYO mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's RED HAT mark because the mere addition of the TLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorized the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent has used the site attached to the Domain Name for links offering competing services not connected with Complainant. He does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v Benjamin FA 944242 (Forum May 11, 2007) (finding that the respondent's use of a confusingly similar domain name to advertise real estate services which competed with the complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by Complainant. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to point to competing dealerships not connected with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those third party businesses and was therefore evidence of bad faith and use). Use to point to a site that has links relating to Complainant’s business shows that Respondent is aware of Complainant and its business.
The Domain Name has also been offered to sale for a sum in excess of out of pocket expenses contrary to Policy 4(b)(i).
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(i), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <businessvidyo.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 9, 2018
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