Biostar Technology International, LLC and Biostar Technology s.r.o v. Charly Gilder / Vector NLS
Claim Number: FA2011001921099
Complainants are Biostar Technology International, LLC and Biostar Technology s.r.o (“Complainants”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Charly Gilder / Vector NLS (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vectornls.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.
Alan L. Limbury, as Panelist.
Complainants submitted a Complaint to the Forum electronically on November 18, 2020. The Forum received payment on November 18, 2020.
On November 18, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <vectornls.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 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2020 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@vectornls.com. Also on November 19, 2020, 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 December 15, 2020, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainants request that the domain name be transferred from Respondent to Complainant Biostar Technology International, LLC.
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.”
The same person, Ulysses Sheratov, is President and co-founder of both Complainants. Complainants are the joint registrants of the same figurative mark, [image omitted] registered with the European Union Intellectual Property Office (“EUIPO”). These circumstances satisfy the Panel that Complainants have a sufficient nexus for each of them to claim rights to the <vectornls.com> domain name and that they are therefore entitled to initiate this administrative proceeding together.
A. Complainants
Complainants own and develop software for biofeedback devices, which use electromagnetic noise generating fields to detect the various frequencies of the human body. Complainants’ products locate energy imbalances within the body, then stimulate a healing response. Both Complainants have rights in the mark [image omitted] through their joint registration of the mark with the EUIPO.
Complainant Biostar Technology International, LLC has rights in the mark VECTOR, which it registered with the United States Patent & Trademark Office (“USPTO”).
Respondent’s <vectornls.com> domain name is identical or confusingly similar to Complainants’ marks as it contains the entire term VECTOR and the descriptive term "nls," in this context meaning nonlinear systems, and the ".com" gTLD.
Respondent lacks rights or legitimate interests in the <vectornls.com> domain name. Respondent is not licensed, assigned, or authorized to use the VECTOR mark and is not commonly known by the domain name. Respondent does not use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the domain name for a scam website to pass itself off as Complainants while selling products of a competitor of Complainants through another website.
Respondent registered and uses the <vectornls.com> domain name in bad faith. Respondent is using the domain name to pass itself off as Complainant and sell the products of Complainants’ competitors. It is inconceivable the Respondent could have registered the domain name without actual and/or constructive knowledge of Complainants’ rights in the VECTOR and VECTOR EXPERT marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants have failed to establish all the elements entitling them to relief.
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."
Policy ¶ 4(a) requires that Complainants 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 Complainants have 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 Complainants’ 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainants have shown that they both have rights in the figurative mark [image omitted] (the “VECTOR EXPERT” mark) through their joint registration of the mark with the EUIPO, No. 018145786, registered on May 4, 2020.
Complainant Biostar Technology International, LLC has shown that it has rights in the stylized mark[VECTOR mark image omitted] , registered on May 26, 2020 with the USPTO, No. 6,062,768, in Class 9, for “Computer hardware and recorded software systems for use in measuring the frequency of energy emitted by the human body”, claiming both first use and first use in commerce on November 23, 2010.
The Panel finds Respondent’s <vectornls.com> domain name to be confusingly similar to each of Complainants’ marks as it contains the term VECTOR, which is the most prominent element of both marks, with the descriptive term "nls," in this context meaning nonlinear systems, which does not distinguish the domain name from either mark, and the inconsequential “.com" gTLD, which may be ignored.
Complainants have established this element.
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of Policy ¶4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent registered the <vectornls.com> domain name on November 23, 2011. It resolves to a website which makes it appear as if Respondent manufactures and sells VECTOR software or biofeedback machines using the VECTOR software, when it does not, instead selling competing software through a different website.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the <vectornls.com> domain name under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <vectornls.com> domain name under Policy ¶ 4(a)(ii).
Complainants have established this element.
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
Policy ¶ 4(b)(i), (ii) and (iii) all require a finding that Respondent had the VECTOR or VECTOR EXPERT mark in mind when registering the <vectornls.com> domain name. This issue is addressed below.
As for Policy ¶ 4(b)(iv), the use to which the <vectornls.com> domain name is being put by Respondent is clearly bad faith use of the kind set out in Policy ¶4(b)(iv). Such use is evidence of both bad faith registration and bad faith use. However, as stated in Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250:
“use of the kind described in 4(b)(iv) is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But this evidence is not necessarily conclusive. Furthermore, the panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved.”
Complainants contend that given: 1) the timing of Respondent’s registration date of the domain name (1 year after Complainant’s first use as stated in its US Trademark Registration); 2) Respondent’s use of the domain name to mimic that it sells VECTOR products when it does not; 3) Respondent filing for trademark registration of VECTOR NLS BIOFEEDBACK noting a first use of 2016 (six years after Complainants’ US Trademark Registration first use in commerce date); 4) the similarity between the stylized mark subject to Complainants’ trademark registrations and term VECTOR in Respondent’s domain name, it is inconceivable the Respondent could have registered the domain name without actual and/or constructive knowledge of Complainants’ rights in the VECTOR and VECTOR EXPERT marks. Princeline.com, Inc. v Ryan G Foo / PPA Media Services, FA1684157 (Forum Aug. 18, 2016). Complainants say that simply put, the evidence shows Respondent registered the disputed domain name with actual knowledge of, and solely because of, Complainants’ trademark rights.
The Panel notes that Princeline.com, Inc. v Ryan G Foo / PPA Media Services, FA1684157 (Forum Aug. 18, 2016) was a case in which the domain name was registered ten years after the registration of the complainant’s trademark. In the present case Respondent registered the <vectornls.com> domain name on November 23, 2011, one year after the claimed date of first use of Complainants’ VECTOR mark. The critical issue thus arises as to whether Complainants had acquired common law trademark rights in the word “vector” by the time Respondent registered the domain name, such that Respondent is likely to have been aware of that mark.
“Vector” is a dictionary word. In mathematics it means a quantity possessing both magnitude and direction, represented by an arrow the direction of which indicates the direction of the quantity and the length of which is proportional to the magnitude. In biology it means an agent that acts as a carrier or transporter.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.3:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. (Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
In his declaration (Amended Complaint Annex E), Mr. Sheratov says Complainants have been selling their products throughout the world for the past 15 years. Mr. Sheratov does not claim that the VECTOR trademark has been in use for 15 years, since the claimed date of first use of the VECTOR mark is November 23, 2010. Nor does he make any assertion of unregistered or common law rights.
The only evidence from which an inference can be drawn of acquired distinctiveness of either of Complainants’ trademarks prior to the applications filed in 2019 which led to their registration in 2020 is the evidence that on July 26, 2018, Complainant Biostar Technology International, LLC filed a successful application to cancel the registration of United States trademark VECTOR NLS BIOFEEDBACK, Registration No. 4979760, registered on June 14, 2016 in the name of D.K.G. Nature’s Cure, Inc., which Complainants say is another name of Respondent. The Panel accepts that, by July 26, 2018, the VECTOR mark had become distinctive of Complainants’ software. However, there is no evidence of acquired distinctiveness at the time of registration of the <vectornls.com> domain name in 2011.
Under these circumstances the Panel cannot be satisfied that Respondent had one or other of Complainants or one or other of their marks in mind when registering the <vectornls.com> domain name.
The WIPO Jurisprudential Overview 3.0, paragraph 3.8 answers the question “Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?” as follows:
“Subject to scenarios described in 3.8.2. below [domain names registered in anticipation of trademark rights], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
Here there is no basis for a finding that Respondent registered the domain name in anticipation of Complainants’ trademark rights.
In Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085 the learned panelist said:
“Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”. In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would “extend the Policy to cover cases clearly intended to be outside its scope.” Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met.”
In the circumstances of this case, the Panel finds that the descriptive character of the word “vector” and the absence of any evidence or assertion of acquired distinctiveness at the time of registration of the <vectornls.com> domain name outweigh the evidence of bad faith registration constituted by the bad faith use to which the domain name is being put by Respondent.
Hence the Panel finds that Complainants have not shown that the domain name was registered in bad faith and have failed to establish this element.
Complainants having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vectornls.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: December 21, 2020
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