Vtech Holdings Limited v. V-Tech China
Co., Ltd. c/o Gennifer Chee
Claim
Number: FA0507000522830
Complainant, VTech Holdings Limited (“Complainant”),
is represented by Howard E. Silverman of Greenberg Traurig, LLP,
77 West Wacker Drive, Suite 2500, Chicago, IL, 60601. Respondent is V-Tech China
Co., Ltd. c/o Gennifer Chee (“Respondent”), 11B,
Lianfu Building, #2 Lianqian Xi Road, Xiamen Fujian, China, 361004.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <vtechchina.com>, registered with Onlinenic,
Inc.
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge she has no known conflict in serving as Panelist in
this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically July 22,
2005; the National Arbitration Forum received a hard copy of the Complaint July
22, 2005. The Complaint was submitted
in both Chinese and English.
On
August 1, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the <vtechchina.com> domain name is registered with Onlinenic,
Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. verified that Respondent is
bound by the Onlinenic, Inc. registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
August 4, 2005, a Chinese language Notification of Complaint and Commencement
of Administrative Proceeding (the “Commencement Notification”), setting a
deadline of August 24, 2005, by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@vtechchina.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 29, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration 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.”
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration Forum's Supplemental Rules and any rules and principles of law that
the Panel deems applicable, without the benefit of any response from
Respondent.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Chinese language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <vtechchina.com>, is confusingly similar to
Complainant’s VTECH mark.
2. Respondent has no rights to or legitimate
interests in the <vtechchina.com> domain name.
3. Respondent registered and used the <vtechchina.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Vtech Holdings Ltd., is one of the largest suppliers of corded and cordless
phones in North America and is a leading supplier of electronic learning
products in North America and Europe.
Complainant holds numerous registrations for its VTECH mark with the
United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No.
2,782,574 issued November 11, 2005; Reg. No. 2,743,925 issued July 29, 2003)
and many countries throughout the world.
Complainant,
through a wholly owned subsidiary, owns the <vtech-china.com> and the
<vtechchina.com.cn> domain names.
Complainant offers its goods and services through both domain names.
Respondent
registered the <vtechchina.com> domain name March 22, 2002. The disputed domain name resolves to a
website featuring links promoting goods and services directly related to those
offered by Complainant, including the design, manufacture, and sale of liquid
crystal display (LCD) components and modules.
At the top of the website, Respondent placed a prominent logo entitled
“VTech China Co., Ltd.” Moreover, the
link labeled “Company Profile” resolves to a website upon which Respondent
placed a logo resembling Complainant’s VTECH mark and its design.
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."
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(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant’s
registrations for its VTECH mark with the USPTO are sufficient to establish
Complainant’s rights in the mark. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant
urges that Respondent’s <vtechchina.com> domain name is
confusingly similar to Complainant’s VTECH mark. In fact, Respondent’s domain name wholly incorporates
Complainant’s mark and adds the geographically descriptive term “China.” The Panel holds that adding a geographic
term to Complainant’s mark is insufficient to distinguish the disputed domain
name from Complainant’s mark. See
VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding
confusing similarity between the complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where the
respondent added the word “India” to the complainant’s mark); see also
Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that the domain name,
<walmartcanada.com> is confusingly similar to the complainant’s famous
mark).
The Panel
concludes that Complainant satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent has no rights to or legitimate interests in the <vtechchina.com>
domain name. Complainant’s assertion
establishes a prima facie case and shifts the burden to Respondent. To meet its burden, Respondent must provide
the Panel with evidence that it does have rights or legitimate interests in the
disputed domain name. See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain Name
requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted onto the shoulders of Respondent. In those circumstances, the common approach
is for respondents to seek to bring themselves within one of the examples of
paragraph 4(c) or put forward some other reason why they can fairly be said to
have a relevant right or legitimate interests in respect of the domain name in
question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent is not commonly known by the disputed domain name. Without a response from Respondent, the
Panel accepts as true Complainant’s allegation that Respondent is not commonly
known by the disputed domain name. See
Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). Although
Respondent’s WHOIS information states that Respondent is known as V-Tech China
Co., Respondent has not provided any affirmative evidence to suggest that it
ever was known commonly by the disputed domain name. Thus, the Panel concludes that because Respondent is not commonly
known by the disputed domain name, Respondent did not establish rights or
legitimate interests under Policy ¶ 4(c)(ii).
See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”); see also Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding respondent has no rights in a domain name when respondent is not known
by the mark).
Complainant
provides evidence that Respondent’s website benefits from the confusing
similarity of the <vtechchina.com> domain name by featuring links
promoting goods and services directly related to those offered by Complainant
and receiving pay-per-click fees from Internet users clicking on these
links. Complainant argues that
Respondent’s links directly compete with Complainant. Because Respondent did not respond, the Panel treats
Complainant’s arguments as true. See
Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004)
(finding that because Respondent failed to submit a Response, “Complainant’s
submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”). Thus, the Panel concludes that Respondent is not using the
disputed domain name in connection with a bona fide offering of goods or
services for purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See
DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb.
Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding
that the respondent's “use of the domain name (and Complainant’s mark)
to sell products in competition with Complainant demonstrates neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair use
of the name”).
Accordingly, the
Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the disputed domain name to divert Internet
users to a website that features links to goods and services similar to
Complainant’s and to profit from diverting such Internet users to various
websites. The Panel holds that
Respondent is creating a likelihood of confusion for its own commercial gain. The Panel concludes that such use evidences
bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark).
Moreover,
Complainant argues that Respondent’s prominent displays of logos similar to
Complainant’s on Respondent’s websites suggest that Respondent is trying to
pass itself off as Complainant. The
Panel holds that Respondent’s attempt to pass itself off as Complainant
evidences bad faith use and registration under Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet
D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously
connected with well-known products,” its very use by someone with no connection
to these products can evidence opportunistic bad faith); see also Monsanto
Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that
the respondent's use of <monsantos.com> to misrepresent itself as the
complainant and to provide misleading information to the public
supported a finding of bad faith); see
also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the disputed domain name was registered and
used in bad faith where the respondent hosted a website that “duplicated
Complainant’s mark and logo, giving every appearance of being associated or
affiliated with Complainant’s business . . . to perpetrate
a fraud upon individual shareholders who respected the goodwill surrounding the
AIG mark”).
The Panel concludes
that Complainant satisfied 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 <vtechchina.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 9, 2005
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