NATIONAL ARBITRATION FORUM
Vance International, Inc. v. Jason Abend
Claim Number: FA0704000970871
Complainant is Vance International, Inc. (“Complainant”), represented by John
H. Weber, of Baker & Hostetler LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vancesecurity.com>, <vancesecurity.net>, and <vancesecurity.org>, registered with Go Daddy Software, 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.
Robert A. Fashler as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 26, 2007.
On April 26, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <vancesecurity.com>, <vancesecurity.net>, and <vancesecurity.org> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 17, 2007 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 firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 17, 2007.
Complainant submitted a timely and complete Additional Submission on May 21, 2007.
Respondent submitted a timely and complete Additional Submission on May 25, 2007.
On May 23, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant asserts the following facts:
owns the following valid and subsisting
(A) VANCE (the “First-Registered Mark”), registered June 20, 1995, under number 1,900,999, for educational services, namely conducting seminars in the field of security and protection of persons and property; bodyguard services, security guard services and consulting services in the field of security needs assessment; investigative services; and
(B) VANCE (the “Second-Registered Mark”), registered February 27, 2007, under number 3,213,793, for business supervision, inquiries, and investigations; risk analysis and management; educational services, providing conferences and workshops in the field of continued legal education, forensics, crowd control tactics and crisis management; reviewing standards and practices to assure compliance with governmental regulations in the field of security and crisis management; security audits to determine compliance with business standards and practice, namely compliance with safety and security standards; detective investigations; investigations, namely, private investigation, background investigation and research services, surveillance, namely, investigation or surveillance on background profiles; background profiles, namely, background investigation and research services; and
Registration for the First-Registered Mark has acquired incontestable status
(iii) Complainant began using the VANCE Marks at least as early as May 1984, for educational services in the field of security, protection of persons and property, and bodyguard services.
(iv) The VANCE Marks have been, and are continuously being, used in extensive advertising and promotion of Complainant’s services.
(v) Complainant has expended and continues to expend millions of dollars annually to advertise, publicize and promote its services under the VANCE Marks throughout the United States and internationally.
(vi) Vance’s services under the VANCE Marks are available throughout the
has conducted security-related assignments in 117 countries around the world
and has established a business presence in each of
(viii) By reason of extensive advertising, promotion and sale of services under the VANCE Marks, the VANCE Marks are well known and famous.
(ix) According to the WHOIS database:
(A) Respondent is the registered owner of the domain names <vancesecurity.com>, <vancesecurity.net>, and <vancesecurity.org> (the “Disputed Domains”);
(B) <vancesecurity.com> was registered on June 19, 1997; and
(C) <vancesecurity.net> and <vancesecurity.org> were both registered on February 7, 2007.
(x) On January 12, 2007, Complainant attempted to deliver a cease and desist letter to Respondent at the address that Complainant’s counsel believed to be Respondent’s home, but the delivery was not successful.
(xi) On January 17, 2007, Complainant’s counsel re-sent the cease and desist letter by e-mail to Respondent at the e-mail address for Respondent that appears in the WHOIS database maintained by GoDaddy.com, Inc. Complainant’s counsel received confirmation that the e-mail was successfully delivered, but Respondent never responded to that delivery of the cease and desist letter.
(xii) On April 3, 2007, Complainant’s counsel re-sent the cease and desist letter by Certified Mail to Respondent at the street address listed in the WHOIS records for the Disputed Domain Names. The Certified Mail receipt indicated that the letter was received by Respondent on April 4, 2007.
(xiii) On April 9, 2007, Respondent telephoned Complainant’s counsel, Rebecca L. Roby, and left her a voice message. Later that day, Ms. Roby returned Respondent’s call. During the telephone conversation between Respondent and Ms. Roby, Respondent indicated that he was willing to sell <vancesecurity.com> to Complainant for $25,000. Respondent also told Ms. Roby that he had only recently acquired the <vancesecurity.com> domain name through SnapNames services and that he had no real interest in using the domain name. Respondent further stated that he planned to offer the domain name up for auction in June of 2007. Ms. Roby requested that Respondent send this information to her attention via e-mail.
(xiv) Also on April 9, 2007, Respondent sent Ms. Roby an e-mail in which Respondent stated “I am open to selling VanceSecurity.com to your client for $25,000USD paid upon successful transfer to your client’s domain name account.” The e-mail also stated that “I recieved [sic] this name via SnapNames in a regular pull I do on security related names so I have no vested interest in keeping it” and “if this name reaches the auction I mentioned in June, I believe it will fetch over $90,000 by a traffic amortizer – most likely one with an overseas incorporation.”
(xv) On April 11, 2007, Respondent called Ms. Roby and asked her whether
Complainant had decided whether Complainant would accept Respondent’s offer to purchase <vancesecurity.com>. Respondent advised Ms. Roby that he also owned the domain names <vancesecurity.net> and <vancesecurity.org> and that the purchase price of $25,000 would cover all three of the Disputed Domains.
(xvi) On April 24, 2007, Respondent sent Ms. Roby another e-mail informing her that Respondent’s offer to sell the Disputed Domain Names for $25,000 would expire on April 27, 2007, at 12 Noon EST, and that he intended to submit the Disputed Domains to auction with a reserve of $85,000.
(xvii) Respondent has caused <vancesecurity.com> to be associated with domain “parking” services provided by a business named SEDO. SEDO operates a website that is accessed via the Disputed Domain <vancesecurity.com>. That website provides links to numerous commercial websites that feature goods and services that are not sponsored or affiliated with Complainant but are related to Complainant’s field of business – security.
(xviii) The following notice appears at the <vancesecurity.com> website: “The domain name vancesecurity.com may be for sale by its owner!” When a visitor to the website clicks on the “for sale” link, they are taken to a page where they can enter a purchase price offer for the domain name and see statistics on how many hits have been received by the website.
(xix) According to information found on the SEDO website, “Domain Parking is a simple way to earn money from your domain’s natural traffic. If you have registered domain names, but they are not currently being used, then domain parking is a great way to put those domains to work earning you revenue. You can make money without even lifting a finger! The idle domain is used to display relevant advertisements – every time a consumer clicks on one of the advertisements you earn money.”
(xx) Both <vancesecurity.net> and <vancesecurity.org> are being parked through a parking service operated by GoDaddy.com, which provides links to websites that relate to goods and services that are not sponsored by or affiliated with Complainant but are related to Complainant’s field of business – security.
Complainant asserts that Complainant holds rights in the VANCE Marks, and that the Disputed Domains are confusingly similar to the VANCE Marks, because:
(i) The VANCE Marks are all registered in the United States Patent and Trademark Office (“USPTO”) in association with a variety of security-related services.
First-Registered Mark has become incontestable under
(iii) Complainant has been using the VANCE Marks in association with security-related services since 1984, long before the Disputed Domains were registered.
(iv) As a consequence of extensive use of the VANCE Marks in the promotion and advertising of Complainant’s services, the VANCE Marks have become well known and famous.
(v) The commercial impression generated by the Disputed Domains and the VANCE Marks is the same. Respondent’s addition of the word “security” to “vance” is insufficient to obviate the confusing similarity between the Disputed Domains and the VANCE Marks.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domains because:
(i) Respondent is offering to sell <vancesecurity.com> via SEDO’s parking service.
(ii) Complainant has neither licensed Respondent to use the VANCE Marks nor authorized Respondent to register the Disputed Domains.
(iiii) To the best of Complainant’s knowledge, Respondent is not known by the name “Vance Security” and is not associated with any business operating under that name.
(iv) Respondent has not made a legitimate noncommercial or fair use of the Disputed Domains because the web pages accessed via the Disputed Domains link to competitors of Complainant and Respondent appears to be receiving “click–through” fees when visitors to the <vancesecurity.com>, <vancesecurity.net>, and <vancesecurity.org> domain names use those links.
(v) Respondent has not used, and is not preparing to use, the Disputed Domains in connection with a bona fide offering of products or services as evidenced by Respondent’s desire to auction the Disputed Domains for over $85,000.
(vi) Respondent has expressly admitted that he has no interest in keeping the <vancesecurity.com> domain name.
Complainant asserts that Respondent registered and is using the Disputed Domains in bad faith because:
(i) Respondent is offering to sell <vancesecurity.com> through the domain name parking service provided by SEDO.
(ii) Respondent's has unequivocally expressed the intention of selling the Disputed Domains to the highest bidder by way of auction.
(iii) Respondent has offered to sell the Disputed Domains to Complainant for US$25,000, an amount that is well in excess of Respondent's out-of-pocket costs and the reasonable registration fees that would be associated with the Disputed Domains.
(iv) The Disputed Domains are being used to redirect Internet users to websites that offer services that compete with Complainant’s services, which demonstrates that Respondent registered the Disputed Domains in order to disrupt the business that Complainant carries on under the VANCE Marks.
(v) By using the Disputed Domains for websites that provide links to Complainant’s commercial competitors, and presumably earning click-through fees every time someone clicks on a competitor’s link, Respondent is exploiting the confusing similarity between the Disputed Domains and the VANCE Marks and thereby profiting from the goodwill associated with the VANCE Marks. The use of SEDO’s parking services has been found to be bad faith by a respondent in another UDRP proceeding.
B. Respondent’s Contentions
Respondent asserts that the Disputed Domains are not identical or confusingly similar to the VANCE Marks because:
(i) A domain name composed of common terms used by others who are not affiliated with Complainant cannot be confused with Complainant’s trademark. The Disputed Domains comprise common terms used by others in the security industry. In particular, the word "Vance" is well-known in the security industry because it has been used by Vance Air Force Base since 1949.
(ii) Complainant's VANCE Marks are descriptive and weak because “Vance” is a common surname.
(iii) Whether or not two marks are confusingly similar is context-specific. In the Internet context, consumers are aware that domain names for different websites are often similar because of the need for language economy. In the Internet context, very small differences matter.
(iv) Respondent's use of the word “security” in combination with “Vance” creates a different looking mark that, in the Internet context, removes any possibility of confusion, especially considering the widespread usage of “Vance” in the security industry.
(v) The word “Vance” has been commonly used in the security industry for at least 35 years prior to its use by Complainant.
Respondent asserts that Respondent has legitimate rights and interests in the Disputed Domains because:
(i) Respondent is the CEO of Blue Line Media, Inc. (“Blue Line”), which is a law enforcement communications company. Blue Line owns and operates LawEnforcementJobs.Com, which is an Internet-based law enforcement employment agency that has been in business since 1998 and has assisted over 3,000 different governmental and private organizations with their employment needs. The United States Air Force and the four branches of the military are customers of Blue Line.
(ii) Since 2004, Respondent has been actively expanding and restructuring its employment business, including the launch of two additional employment sites, namely <privatesecurity.com> and <enlist.com>. Respondent intends that those websites will provide employment services similar to <lawenforcementjobs.com>, but will be target specific. The <enlist.com> website will serve to recruit active duty military personnel and help such individuals transition into other security-related positions. The <privatesecurity.com> website will target the private security industry. It will also post security contracts and allow security firms to place bids on those contracts.
(iii) In connection with Respondent’s expansion and restructuring of its employment business, Respondent has: “(1) created a general business plan for the expansion and restructuring; (2) designed website templates for the expansion and restructuring; (3) created new database designs; (4) developed almost to completion, the job centre portions of the sites; (5) compiled security-related content for the sites; (6) signed strategic partners; (7) invested approximately $336,000.” Respondent is scheduled to launch the expanded career centre portion of the business as early as November 2007.
(iv) It is well known that military bases contract security services, and that Vance Air Force Base has been contracting services since 1960, and that Vance Air Force Base has a “Security Squandron.” Vance Air Force Base is both a consumer and provider of security services.
(v) The Disputed Domains have numerous legitimate uses for Respondent’s employment business. Specifically, the Disputed Domains “can be used” in relation to Vance Air Force Base to: “(1) allow Vance to advertise available security positions; (2) allow private security companies to bid on security contracts at Vance; (3) assist Vance or its security contractors in their recruitment of security personnel; and (4) assist active duty military personnel to transition from Vance into other security related-positions.” These uses are legitimate and valuable to Respondent.
(vi) The Disputed Domains were purchased for Respondent’s employment business from third parties via an auction process. Respondent decided to re-sell the Disputed Domains by auction to finance the significant investment required for Respondent’s business expansion.
(vii) Respondent’s decision to sell the Disputed Domains by auction does not negate Respondent’s original business motive for purchasing the Disputed Domains.
(viii) Respondent turned several descriptive/generic domain names, including <vancesecurity.com>, over to a domain name broker. The broker listed many of those names on Sedo.com to monitor their traffic statistics for valuation purposes.
(ix) When considering the statement that Respondent made to Complainant’s lawyer that Respondent has no vested interest in keeping the Disputed Domains, “the emphasis should be placed on ‘vested.’” Respondent clearly has an interest in Respondent’s Domain Names, as they relate directly to the business Respondent is currently in and they relate directly to Respondent’s restructured business, which is why Respondent purchased Respondent’s Domain Names.
(x) The $85,000 price requested by Respondent is the valuation provided to Respondent by an industry leading domain name broker, based on the number of visitors to the site. The asking price also reflects the value of defence contracts.
(xi) “Respondent owns hundreds of descriptive or generic domain names related to security, the military, and employment; the sale of Respondent’s Domain Names will not significantly impact Respondents business plan.”
(xii) Respondent has never received or attempted to receive any compensation or referral fees for any of Respondent's Domain Names, including those parked using commercially available parking services. Respondent is not aware if Respondent’s former domain name broker has received any money from the parking activities.
(xiii) Respondent made no misleading attempts to divert consumers from Complainant’s website or to tarnish the VANCE Marks. Respondents business is placing law enforcement and security personnel in corresponding positions. Respondent is not in the business of click-through revenue generating.
(xiv) Respondent’s sale of the Disputed Domains would be a bona fide offering of goods and services because the Disputed Domains contain common terms used in the security industry.
Respondent asserts that Respondent did not register and is not using the Disputed Domains in bad faith because:
(i) Respondent purchased the Disputed Domains at an auction primarily with the intention of using them in Respondent's business.
(ii) Respondent did not purchase the Disputed Domains to sell, rent, or otherwise transfer them to Complainant.
(iii) It was Complainant’s counsel, who first asked Respondent on April 2, 2007, in a telephone conversation, if Respondent would be willing to sell the domain name <vancesecurity.com>, and Respondent’s offer to sell the domain name was in response to that request.
(iv) Respondent has not earned or attempted to earn any click-through fees from the Disputed Domains.
C. Complainant’s Additional Submissions
Complainant additionally asserts:
(i) The Disputed Domains are confusingly similar to the VANCE Marks, in which Complainant has rights because:
(A) The surname origin of the VANCE Marks is not relevant in light of Complainant’s incontestable registration of the First-Registered Mark.
(B) The strength or weakness of the VANCE Marks has little or no relevance because Respondent has adopted virtually the same mark in the Disputed Domains for competing services.
(C) The addition of the word “security” does not lessen the confusing similarity of the Disputed Domains. This is because the word “security” merely describes Complainant’s security guard services, which are listed in Respondent’s incontestable registration for the First-Registered Mark.
(D) An incontestable trademark registration cannot be challenged on the basis that it is descriptive, or because there are third-party uses of the same trademark, or because the trademark consists of a surname that is inherently non-distinctive.
(F) Respondent’s allegations that VANCE is a common surname, or that there exists a facility known as Vance Air Force Base, does not rebut the presumptions that arise from the incontestable status of the registration for the First-Registered Mark.
(G) A UDRP proceeding is not the proper forum to decide issues such as genericness in the face of an incontestable trademark registration.
(H) Under the U.S. Trademark Act, a certificate of registration on the Principal Register is prima facie evidence of the validity of the mark and the registrant’s exclusive right to use the mark in commerce in, on, or in connection with the goods specified in the registration.
(ii) Respondent has no rights or legitimate interests in the Disputed Domains because:
(A) It is irrelevant that Respondent is involved with the law enforcement communication and employment services industry because Respondent does not use any business names or domain names that include the word “Vance” in connection with those activities.
(B) The word “Vance” has no connection or relation to any of the business names or domain names that are actually being used by Respondent or that Respondent is actively preparing to use.
(C) It is not necessary for Respondent to use the term VANCE to operate a successful business in the fields of law enforcement communication and employment services.
(D) There is no evidence that Respondent is known by any of the Disputed Domains or any other personal name, business name or domain name that includes the word “Vance.”
(E) While Respondent may be doing business or preparing to do business in the same field as Complainant, that does not give Respondent any right to carry on such a business using domain names that incorporate the VANCE Marks.
(F) The fact that some of Respondent’s customers might come from Vance Air Force Base does not give Respondent any right to register, own, or use domain names that incorporate the term VANCE.
(G) Respondent’s submissions do not reveal any legitimate business reason for registering the Disputed Domains and using them to link to websites operated by Complainant’s competitors.
(H) Respondent’s willingness to sell the Disputed Domains for an unreasonable amount in response to Complainant’s cease and desist letter is evidence that Respondent lacks rights and legitimate interests in the Disputed Domains.
(I) Parking the Disputed Domains with other businesses, and allowing those businesses to utilize the Disputed Domains, whether or not Respondent knew how that is being done, does not create any rights or legitimate interest in the Disputed Domains.
(iii) Respondent's registration and use of the Disputed Domains is in bad faith because:
(A) Respondent misconstrues and misstates the facts regarding the telephone conversation that took place between Complainant’s counsel and Respondent on April 9, 2007. Complainant’s counsel requested Respondent to make a reasonable offer after Respondent had indicated a willingness to sell the Disputed Domains to Complainant.
(B) Although Respondent claims to have acquired the Disputed Domains for use in his business, Respondent has failed to provide any evidence of how he proposes to use the Disputed Domains in that business.
(C) Upon receiving Complainant’s cease and desist communication, Respondent’s first reaction was to offer to sell the Disputed Domains for an unreasonable amount or to auction them off. Respondent made no attempt to demonstrate why Respondent registered the names or needed to keep them for use in his business. Respondent did not raise the possibility of a co-existence arrangement or a license. These events reveal Respondent’s true intentions, namely, “to generate revenue by holding the Disputed Domain Names hostage until he had an opportunity to sell them for an unreasonable fee of $25,000 to Complainant or by selling them at auction for $85,000.”
(D) Even if Respondent did not know that the companies with whom it had parked the Disputed Domains were using them to link to competitors of Complainant, that is still evidence of bad faith.
D. Respondent’s Additional Submissions
Respondent additionally asserts:
(i) The Disputed Domains are not confusingly similar to any trademarks in which Complainant has rights because:
(A) The incontestability of a trademark registration has little bearing on domain name disputes, particularly when a domain name is composed of commonly used terms.
(B) “The record is replete with evidence of Vance Air Force Base…and the common and historic uses of Vance in the security industry.”
(C) Even if incontestability was relevant, it would not be relevant in this case because the First-Registered Mark, which is incontestable, is registered in different classes than the services sold by Respondent’s business.
(D) Respondent is not asking the Panel to comment on the validity of Complainant’s mark because the appropriate test is only whether the Disputed Domains contain common terms that are used by others who are unrelated to Complainant.
(E) In the Internet context, small differences matter when evaluating confusion. The Disputed Domains contain “two common terms, vance, which is a United States Air Force Base, and security. These two terms are so common and so related to each other, regardless of Complainant mark, that they can create no confusion with Complainant’s mark.”
(F) “When domain names contain terms commonly used by others, confusion is almost impossible to find. In the current dispute, Respondent has clearly shown that Vance is used by others in the security industry and has been used by others in the security industry since 1949.”
(ii) Respondent has rights or legitimate interest in the Disputed Domains because:
(A) Before Respondent received any notice of the dispute, Respondent had made demonstrable preparations to use the Disputed Domains as stated in the Response.
(B) As stated in the Response, the Disputed Domains “can be used” by Respondent in various ways in dealing with Vance Air Force Base.
(C) “Respondent’s goodwill is, and will primarily be, in Respondent’s portal sites, e.g. PrivateSecurity.com and Enlist.com, which link to descriptive sites. Linking from Respondent’s portal to Respondent’s descriptive sites is Respondent’s legitimate interest.”
(D) $25,000 is, in fact, a reasonable fair market value for the Disputed Domains having regard to sales that are occurring on the open market.
(E) Simply selling a domain name in which Respondent has a legitimate interest does not destroy Respondent’s legitimate interest or show bad faith. It is well settled that acquiring domain names simply for the purpose of reselling them is a legitimate interest when the domain names are, as is the case with the Disputed Domains, made up of common terms.
(F) Respondent has not received revenue from parking the Disputed Domains, has not attempted to receive revenue from parking the Disputed Domains, and has not attempted to compensate anyone with revenue from parking the Disputed Domains.
(iii) Respondent registered and is using the Disputed Domains in good faith because:
(A) Respondent first contacted Complainant’s counsel for the purpose of contesting Complainant’s claim to any rights in the Disputed Domains, and not for the purpose of selling the Disputed Domains to Complainant.
(B) Complainant was the first to inquire with Respondent about selling the Disputed Domains. “It was Complainant’s counsel who asked if Respondent would be willing to sell; it was Complainant’s counsel who asked Respondent to put together an offer in writing; it was Complainant’s counsel who asked Respondent to mail that offer to Complainants counsel; and now it is Complainant’s counsel who is attempting to use that offer of evidence of bad faith.”
(C) Respondent did not demonstrate to Complainant why Respondent registered the Disputed Domains or why Respondent needed to keep using them in his business because Respondent did not wish to “divulge internal business practices to overreaching mark-holders.”
The Panel finds that Complainant has established all three elements required under Paragraph 4(a) of the Policy for each of the Disputed Domains and consequently the Disputed Domains should be transferred from Respondent to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;
(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.
Identical and/or Confusingly Similar
The first element that Complainant must establish is that the Disputed Domains are “identical or confusingly similar to a trademark or service mark in which Complainant has rights.”
Each of the three Disputed Domains comprise the common root “vancesecurity” and differ only in their gTLD suffix. As a difference in the gTLD suffix is merely functional, the Panel finds that the analysis under this head of the Policy is the same for all of the Disputed Domains.
The Panel finds that Complainant has rights in the VANCE Marks
The Panel does have one serious concern about the manner in which the registration for the First‑Registered Mark has been presented in this proceeding. If one looks closely at the Certificate of Registration for the First-Registered Mark (Complaint, Ex. 4), one can see that the trademark was amended in November of 2005. A further inspection of the certificate reveals that the word “International” was included in the trademark before the time of amendment. Hence, it is clear that the trademark was originally registered as VANCE INTERNATIONAL and was amended to VANCE in November of 2005.
Those facts are material and should have been revealed by Complainant. Instead, Complainant refers to the registration for the First-Registered Mark as if it always related exclusively to the word VANCE. As it turns out, whether or not the trademark covered by the registration is VANCE or VANCE INTERNATIONAL does not affect the Panel’s analysis under any heading of the Policy.
Complainant has also adduced some evidence of use of the VANCE Marks. Such evidence is relevant to the question of whether or not the VANCE Marks have acquired additional distinctiveness and strength through use since they were registered. Exhibits 5 and 6 of the Complaint appear to be copies of pages excerpted from Complainant’s website that provide a general overview of Complainant and its business. That material is, essentially, unauthenticated hearsay evidence. Assuming that this evidence is reliable, it demonstrates a very significant business operated in association with the trademark VANCE since 1984, which provides a wide variety of security-related services supplied throughout the world. That material indicates that Complainant has over 3,700 employees, operates in 117 countries, and has approximately 134 clients listed in the Fortune 500. While this evidence has not been formally authenticated, the Complaint contains a general certification that all information that it contains is, to the best of Complainant’s knowledge, complete and accurate.
The balance of Complainant’s evidence on the use and reputation of the VANCE Marks also is relatively “thin,” comprising, for the most part, unsubstantiated assertions, such as “By reason of extensive advertising, promotion and sale of services under the VANCE Marks, Complainant’s VANCE Marks are well-known and famous.”
The Panel would have preferred to see some more detailed proof establishing the nature and volume of Complainant’s business, and the manner in which Complainant promotes that business in association with the VANCE Marks, such as sales volumes, revenues, and advertising expenses over several years. Nonetheless, Respondent, who presents himself as being highly knowledgeable about the security industry, has not challenged any of Complainant’s evidence of use, advertising, reputation, or distinctiveness. The Panel draws the inference that Respondent admits that the VANCE Marks have been actively used since 1984 and have become highly distinctive.
The Panel finds that Complainant has rights in the VANCE Marks and that the VANCE Marks are well known in relation to security-related services.
Complainant must also establish that the Disputed Domains are “confusingly similar” to the VANCE Marks. Respondent submits that the Disputed Domains comprise a combination of two common terms, namely, the surname “Vance” and the descriptive word “security.” Respondent says that these words are commonly used by third parties who are not connected with Complainant in any way. For those reasons, Respondent says that the public would not confuse the Disputed Domains with the VANCE Marks.
More specifically, Respondent submits that “Vance” is a common surname that has been commonly used by others in the “security” industry prior to its use by Complainant. As a consequence, Respondent says, the combination of “Vance” and “security” amount to nothing more than two common terms that are used by others who are not affiliated with Complainant, and, therefore, cannot be confused with the VANCE Marks. Although Respondent asserts that the word “Vance” is commonly used in the security industry, the only example that Respondent provides of such alleged use is Vance Air Force Base.
Respondent relies on two cases, Smooth Corp. v. InNetWeTrust.com, FA 809773 (Nat. Arb. Forum Nov. 14, 2006) and Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002), for the proposition that a domain name that comprises generic terms is not likely to mislead consumers, notwithstanding a complainant's trademark registration of a similar mark. In Smooth Corp., the disputed domain comprised the terms “floor” and “coverings.” The panel in that case found that both words were generic and that the combination of the two words was unlikely to be confused with the complainant's mark IFLOOR.COM. Similarly, in Bank of Am. Corp., the disputed domain comprised the generic terms “nations” and “banking,” and the Panel in that case found it unlikely that the two words in combination would be confused with the complainant's mark NATIONSBANK.
In the present case, the Panel agrees with Respondent that “security,” alone, is descriptive and that “Vance” is a relatively common surname. However, that is hardly the end of the analysis. It is a fundamental principle of trademark law, at least in common law jurisdictions, that surnames and other common terms can acquire significant secondary meaning over time through use. Complainant has established that the VANCE Marks have attained at least a minimal level of distinctiveness such that the USPTO permitted their registration on the Principal Register. Additionally, 20 years of use and advertising following registration can increase the distinctiveness and strength of a trademark enormously. A good example is the word MCDONALDS. It, too, is a mere surname. However, it is also one of the strongest and most recognized brands in the world in relation to fast food restaurants services. That is because the trademark MCDONALDS has acquired significant secondary meaning as a consequence of extensive use and advertising.
It is axiomatic that registered trademarks are presumed to be valid at law. Because they are registered, the VANCE Marks cannot be considered merely to be descriptive common terms, at least in relation to the products and services covered by the registrations. This legal status is further entrenched when a trademark registration becomes incontestable, which is the case for the First-Registered Mark. Complainant has also provided evidence from which it can be inferred that the VANCE Marks have acquired secondary meaning beyond the minimal level required to achieve registration on the Principal Register. Such evidence has not been contradicted by Respondent. The Panel finds that the VANCE Marks are not merely common terms when used in connection with security-related products and services.
Respondent places great reliance on the existence of Vance Air Force
Base and says that the base is involved in the security industry. That characterization is a semantic
distortion. Vance Air Force Base is part
Respondent asserts that the existence of Vance Air Force Base
somehow turns the word VANCE into a common term that may be used by anyone. That position is untenable. If there was a McDonalds Air Force Base, it
would unquestionably have significant food-service operations, it would
purchase large quantities of food, and it might well contract out for food
services provided by others. However,
those facts would not provide any legal justification for Respondent to
register and use the domain names <mcdonaldsrestaurant.com>, <mcdonaldsfoodservice.com>,
or <mcdonaldshamburger.com>. Those
domain names would unquestionably infringe the famous MCDONALDS
trademarks. If there was a McDonalds Air
Force Base, its activities in the realm of food service would not be relevant
in assessing whether the domain name <mcdonaldsrestaurant.com> was
confusingly similar to the trademark MACDONALDS. Similarly, the Panel finds that the existence
of Vance Air Force Base and its role in the
Respondent asserts that “the record is replete with evidence of…the common and historic uses of Vance in the security industry.” However, aside from Respondent’s evidence about Vance Air Force Base, Respondent has not provided a shred of evidence demonstrating that any person other than Complainant is using “Vance” in association with security-related services.
Respondent also asserts that the Disputed Domains are not confusingly similar to the VANCE Marks because the addition of the word “security” prevents any possibility of confusion. In fact, the Panel finds that the combination of “security” and “Vance” has the opposite effect. That is, by combining “security” with “Vance,” Respondent has very significantly increased the likelihood of confusion with the VANCE Marks.
The VANCE Marks are registered and used for a wide variety of security-related products and services. The VANCE Marks are well known in association with security-related products and services. However, it is reasonable to assume that the surname Vance is used in connection with a number of businesses, products, and services outside the field of security. Hence if Respondent had registered <vance.com>, <vanceemploymentservices.com>, or <vanceautomobiles.com>, Complainant might have had more difficulty establishing confusing similarity. But Respondent chose domain names that combine “Vance” with the word “security,” which takes the Disputed Domains out of the realm of innocent use. Together, these two words specifically target Complainant’s business. Adding the suffix “security” to the surname “Vance” is the equivalent of adding the suffix “restaurant” to “McDonalds.”
The Panel would have arrived at the same conclusion regarding confusing similarity even if the First-Registered Mark had not been amended. VANCE is merely an abbreviation of VANCE INTERNATIONAL, and it has been held that “the abbreviation of a complainant's mark does not negate the creation of confusing similarity between the resulting domain name and the mark.” See Ulster Bank Ltd. and The Royal Bank of Scotland Group plc v. Garrick, FA 819532 (Nat. Arb. Forum Nov. 24, 2006) (finding that the domain <ulbint.com> was an abbreviation of the complainant's ULSTER BANK mark and consequently was confusingly similar with that mark). More importantly, VANCE is the more distinctive component of VANCE INTERNATIONAL, and VANCE has been used by Complainant extensively since 1984, and VANCE has become well known in association with security-related products.
Finally, the Panel finds that the gTLDs .com, .net, and .org are purely functional and, therefore, the addition of the word “security” has no impact on the analysis of confusing similarity.
The Panel finds that Complainant has satisfied its burden under Paragraph 4(a)(i) of the Policy.
Rights and Legitimate Interests
The second element that Complainant must prove is that Respondent has no rights or legitimate interests in respect of the Disputed Domains. It is relatively difficult for any complainant to prove that a respondent has no rights or legitimate interests in a domain name. For the most part, the relevant evidence is known to and within the control of the respondent. Accordingly, the burden on a complainant with respect to paragraph 4(a)(ii) of the Policy must be relatively light. Nonetheless, a complainant must still produce some evidence tending to show that a respondent has no rights or legitimate interests in a domain name. See Richmond Assocs., LLC v. hilltopmall, D2005‑1198 (WIPO Feb. 17, 2006); see also Koninklijke Philips Electronics N.V. v. Manageware, D2001‑0796 (WIPO Oct. 25, 2001).
This Panel does not accept the proposition that a complainant can fulfill its burden under this element merely by confirming that is has not granted a license to a respondent. So, that assertion by Complainant is not dispositive. However, the record does contain substantial additional evidence supporting Complainant’s contentions.
The only active use that Respondent has ever made of the Disputed Domains is to “park” them at websites operated by Sedo.com and GoDaddy.com. Those two entities provide parking services to owners of domain names who are not otherwise using their domain names. Under these parking arrangements, the Disputed Domains resolve to websites hosted by the domain parking service providers. The websites contain links to businesses that compete directly with Complainant’s services.
It has long been held that when a domain name is confusingly similar to a complainant’s trademark, to use it in this manner is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to Paragraph 4(c) of the Policy, whether or not Respondent directly receives click-through referral revenue. See State Farm Mut. Auto. Ins. Co. v. Haan, FA 948470 (Nat. Arb. Forum May 9, 2007); see also Charles Letts & Co Limited v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006); see also Auralog s.a. v. Innovedo, FA 0703000945049 (Nat. Arb. Forum May 14, 2007).
As well, Respondent has, on several occasions, warned Complainant that Respondent was about to auction the Disputed Domains. Again, UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains. See AOL LLC v. McLean, FA 944263 (Nat. Arb. Forum Apr. 26, 2007); see also Enter. Rent-A-Car Co. v. Rojas, FA 912346 (Nat. Arb. Forum Mar. 23, 2007) (“By offering to sell the disputed domain name registrations for monetary compensation, Respondent does not have any rights or legitimate interests in the disputed domain name.”). Moreover, it is clear from the evidence that Respondent’s only motive for telling Complainant that Respondent was planning to sell the Disputed Domains at an auction was to put pressure on Complainant and thereby compel Complainant to purchase the Disputed Domains from Respondent at a price far in excess of Respondent’s costs directly related to the Disputed Domains. Respondent had only one interest in the Disputed Domains and it was certainly not legitimate.
Respondent declares that he has purchased and owns hundreds of “descriptive” or “generic” domain names related to security, the military, and employment for use with his business (see Declaration of Jason Abend at para. 8). Respondent says that he conducts a “regular pull” on security-related names, presumably meaning that he regularly makes bulk purchases of domain names through domain name auctions and similar mechanisms. Such behaviour is consistent with a domain name trading business rather than an employment or security business.
Although Respondent claims to hold hundreds of domain names, he has not provided any evidence of an intention to use more than two of those domain names in connection with his business. The two domain names are <privatesecurity.com> and <enlist.com>. However, Respondent’s intention to use <privatesecurity.com> and <enlist.com> has absolutely no relevance to this proceeding other than to demonstrate that Respondent has not developed any specific plans to use any of the remaining “hundreds of domain names” in his portfolio, including the Disputed Domains.
Respondent goes to great lengths to describe his business plans generally, but none of those plans have any direct connection to the Disputed Domains. Those plans are irrelevant.
Respondent attempts to portray his acquisition and use of the Disputed Domains as part of a business strategy involving Vance Air Force Base. Respondent identifies several ways in which Disputed Domains “can be used in relation to the air force base.” Of course, the manner in which the Disputed Domains might be used in relation to Vance Air Force Base is irrelevant in this proceeding unless Respondent actively uses or has made demonstrable preparations to use the Disputed Domains in that manner. Respondent has not provided any evidence demonstrating that it is using, has ever used, or has made demonstrable preparations to use, the Disputed Domains in connection with a business strategy involving Vance Air Force Base. Merely having a thought that such a use might be possible does not come close to demonstrating any rights or legitimate interests in the Disputed Domains. The assertions made by Respondent in relation to Vance Air Force Base do not advance Respondent’s case at all.
Respondent has attempted to sell the Disputed Domains to Complainant for US$25,000, which, unquestionably, is greatly in excess of Respondent’s out-of-pocket costs relating to the Disputed Domains. An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests. See The Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (where an offer to sell for $549 was found indicative of a lack of legitimate rights or interests in the domain); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (where an offer to sell for $10,000 was found indicative of a lack of legitimate rights or interests in the domain).
Respondent asserts that the proposed selling price for the Disputed Domains is a true reflection of the fair market value of the Disputed Domains. That position is a non sequitur. If Respondent is seeking fair market value of approximately $25,000, then he is plainly admitting that his goal is to sell the Disputed Domains to Complainant for a significant profit far in excess of Respondent’s out-of-pocket costs directly related to the domain name. In the factual context of this case, that goal is consistent only with bad faith and not with rights or legitimate interests.
Respondent argues that it was Complainant who initiated the discussion about selling the Disputed Domains, and that, pursuant to National Business Furniture v. Smith, FA 112590 (Nat. Arb. Forum July 8, 2002), the fact that Respondent was willing to sell the Disputed Domains does not indicate that Respondent rights and legitimate interests. The Panel does not accept this submission.
Respondent's allegation is inconsistent with the documentary evidence. Complainant’s Exhibit 9 contains a copy of the cease and desist letter that initiated discussions between Complainant and Respondent. That letter clearly indicates that Complainant’s first contact with Respondent was exclusively for the purpose of ending Respondent’s misappropriation of the VANCE Marks. The communication was unequivocal and did not contain the slightest hint that Complainant was offering to purchase the domain name. This is sufficient to distinguish the current case from National Business Furniture, in which that Panel found that “the Complainant made the initial contact to the Respondent to buy the domain name” (emphasis added). The Panel finds that the current case is akin to Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000), in which the complainant's representative contacted the respondent about a disputed domain and was met with an offer by the respondent to sell the domain for $10,000. The Panel in Moynahan found that such an offer nonetheless constituted bad faith on the part of the respondent, even though it was the complainant who made initial contact.
The telephone conversation occurred as a consequence of Respondent contacting Complainant’s counsel after it had received the cease and desist letter. The exact details of the initial conversation between Respondent and Complainant’s lawyer are not entirely clear. Both parties could have done more to clarify exactly who said what to whom and in what sequence. To complicate matters, this evidence is simply one person’s word against the other’s. However, having regard to all the submissions and evidence presented by both parties, the Panel finds that Complainant’s evidence is significantly more credible than that of Respondent.
In any event, actions speak louder than words. During the telephone conversation, Respondent attempted to pressure Complainant into buying the Disputed Domains for $25,000 by warning that the Disputed Domains would soon be auctioned off. Respondent reiterated this statement in the follow-up e-mail he sent to Complainant’s counsel on April 9, 2007, as follows:
If this name reaches the auction I mentioned in June, I believe it would fetch me over $90,000 by a traffic [sic] amortorizer – most likely one with an overseas corporation.
Applying that kind of high-pressure sales tactic is hardly consistent with Respondent’s professed reason for having made the call, namely, to contest Complainant’s claims.
The behaviour of Respondent after the first telephone conversation with Complainant’s lawyer further demonstrates Respondent’s bad faith. Respondent followed up with Complainant’s lawyer several times. Each time, Respondent continued to apply pressure by threatening to sell the Disputed Domains to others by way of auction. He also threatened to withdraw the offer. Regardless of who said what to whom in the first telephone conversation, Respondent’s intention from beginning to end shines through very clearly. The only interest displayed by Respondent in these communications was to sell the Disputed Domains to Complainant for a substantial profit.
Finally, and perhaps most importantly, Respondent has expressly admitted that he has no legitimate interest in the Disputed Domains. In an e-mail from Respondent to Complainant's counsel dated April 9, 2007, Respondent wrote:
I received this name [vancesecurity.com] via SnapNames in a regular pull I do on security related names so I have no vested interest in keeping it.
It is well established that UDRP Panels can rely on admissions made by respondents in deciding against them. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (using the respondent's admissions to the complainant, made in writing and over the phone, that it had “no intentions in using the domain names … for purposes of trading goods or services” to find that the respondent had no legitimate rights or interests); see also Broadcom Corp. v. Arya Web Servs., FA 523720 (Nat. Arb. Forum Sept. 8 2005) (using the respondent's admission that “we have nothing to do with this domain” as evidence that the respondent had no legitimate rights or interests in the domain).
In his submissions, Respondent attempted to explain away his admission, as follows:
The emphasis should be placed on “vested.” Respondent clearly has an interest in Respondent's Domain Names, they relate directly to the business Respondent is currently in and they relate directly to Respondent's restructured business, which is why Respondent purchased Respondent's Domain Names. As noted above, however, Respondent has invested a significant amount of time and money in the expansion and restructuring of Respondent's business and is willing to sell valuable business assets to fund the growth and expansion of Respondent's business.
The Panel fails to see how any of that explanation negates Respondent's admission.
The Panel finds that Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
The final element that Complainant must establish under the Policy is that the Disputed Domains have been registered and are being used in bad faith.
On the whole, Respondent’s submissions project a palpable aura of bad faith. For example, Respondent makes repeated reference to Vance Air Force Base, strongly suggesting that he intended to use the Disputed Domains as a means of referring to Vance Air Force Base. Respondent attempted to bolster that proposition by citing the ways in which Respondent might legitimately use the Disputed Domains in connection with services that it provides in relation to the air force base. However, if one looks carefully at Respondent’s submissions, it is clear that Respondent has never used the Disputed Domains, and that Respondent has never made demonstrable preparations to commence using the Disputed Domains, in any manner, let alone in a business involving Vance Air Force Base.
But what if Respondent had actually acquired the Disputed Domains with the clear intention of using them in commerce to demonstrate a commercial connection with Vance Air Force Base? If that, in fact, had been Respondent’s motive for acquiring the Disputed Domains, it would have demonstrated a bad faith intention towards Vance Air Force Base. In essence, Respondent is saying “I had no intention of misappropriating Complainant’s trademark because I intended to misappropriate the trademark of Vance Air Force Base.” Such a defence does not demonstrate good faith.
In any event, if Respondent genuinely intended to reference Vance Air Force Base in a domain name, it would have chosen something more like <vanceafb.com> or <vancedefence.com>. Instead, Respondent chose a trio of domain names each of which contains “vancesecurity” at the second level. So, why did Respondent chose “vancesecurity” rather than “vanceafb?”
Respondent professes to have substantial knowledge about the
“security industry.” Exhibit 5 of the
Response is an excerpt from Respondent’s website at <lawenforement.com>. Under the heading “ABOUT US,” Respondent’s
website says that Respondent’s business was “founded in 1998 by a former
Special Agent and Recruiter with the
Accordingly, the Panel concludes that at the time that Respondent
acquired the Disputed Domains, he was fully aware of Complainant and the VANCE
Marks. Acquisition of the Disputed
Domains with actual knowledge of the VANCE Marks indicates bad faith registration
and use, especially as the Disputed Domains comprise the term “security,” which
precisely targets the business carried on by Complainant in connection with the
VANCE Marks. See State Farm Mut. Auto. Ins. Co. v.
However, Respondent asserts that it did not register the Disputed Domains, but, rather, purchased them through auctions. If those assertions are correct, then, some third party registered the Disputed Domains, but that does not end the analysis. The bad faith element of the Policy is set out in paragraph 4(a)(iii). The wording of that paragraph makes reference to “registration and use” in bad faith. However, paragraph 4(b) provides that evidence establishing the occurrence of certain specific events will be considered to be evidence of “registration and use” of a domain name in bad faith. Subparagraphs 4(b)(i) and (iv) are applicable to the facts of this case. They read:
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel finds that both subparagraphs apply to Respondent’s conduct. Paragraph 4(b)(i) of the Policy requires only that a domain name owner “register or acquire” a domain name primarily for certain specified bad faith purposes. This provision applies even when the domain name owner did not register the domain name and is not using it actively.
Respondent’s personal background and business activities are such that Respondent must have been aware of Complainant’s business and the VANCE Marks at the time that he acquired all three Disputed Domains. In his submissions, Respondent never denies knowledge of Complainant and never disputes Complainant’s assertions about its use of the VANCE Marks or their reputation and goodwill. Furthermore, Respondent offered to sell the Disputed Domains to Complainant for US$25,000, an amount greatly in excess of Respondent’s out-of-pocket expenses for the Disputed Domains.
The evidence demonstrates that Respondent is highly opportunistic in respect of domain names and acquires them primarily for the purpose of re-sale rather than for use in his other businesses. That is why Respondent conducts “a regular pull…on security-related names,” why Respondent owns “hundreds of descriptive or generic domain names,” and why Respondent is actively attempting to auction off a number of the domain names that he owns.
Based on the foregoing analysis, the Panel finds that Respondent
acquired the Disputed Domains believing that they were confusing with the VANCE
Marks primarily for the purpose of selling them to Complainant. See
Tufts Univ. v. Obradovic, FA 881136 (Nat. Arb. Forum Feb. 19, 2007); see also Little Six, Inc. v. Domain For
Respondent’s conduct relating to <vancesecurity.net> and <vancesecurity.org> provides additional evidence of bad faith. Those domain names were both registered on February 7, 2007. Three weeks earlier, on January 17, 2007, Complainant had sent its cease and desist letter to Respondent for the second time by e-mail using the e-mail address listed for Respondent in the registration for all three of the Disputed Domains, namely email@example.com. That is the same e-mail address that appears on two communications sent by Respondent to Complainant’s lawyer (Complaint, Ex. 10 & 11). The Response provides the same e-mail address in the contact information provided for Respondent. Although Complainant’s counsel received electronic confirmation that the e-mail was successfully delivered to Respondent, Respondent asserts that he never received that e-mail. However, the timing of these two registrations is highly suspicious, to say the least. The Panel does not accept Respondent’s assertion that he did not receive Complainant’s e-mail of February 7, 2007. Accordingly, the Panel finds that Respondent acquired the Disputed Domains <vancesecurity.net> and <vancesecurity.org> after receiving Complainant’s cease and desist letter with the bad faith intention of selling those Disputed Domains to Complainant together with <vancesecurity.com>.
The Panel also finds that Respondent’s conduct comes within the ambit of subparagraph 4(b)(iv) of the Policy. Specifically, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the VANCE Marks as to the source, sponsorship, affiliation, or endorsement of the websites accessed via the Disputed Domains.
Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to Respondent. Respondent has given those service providers permission to use the Disputed Domains. That is a license, pure and simple. The license of a domain name is entirely analogous to a trademark license in respect of which use by the licensee inures to the benefit of the licensor-owner. See McCarthy on Trademarks and Unfair Competition, 4th ed. (Thomson West: 1992, last updated March 2007) at §18:52. In any event, Respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that Respondent is aware of the general nature of the services provided by those organizations and the business model that they employ.
Even if the license and authorization given to the domain parking services provider was actually communicated by a domain name broker, that broker would have been acting in an agency capacity on behalf of Respondent. Unless that broker acted beyond the agreed scope of authority, the broker’s actions and intentions are imputed to Respondent.
Respondent is adamant that he is not receiving click-through referral fees generated from the websites at which the Disputed Domains are “parked.” However, for a number of reasons, the Panel finds that it is irrelevant whether or not Respondent is personally receiving any of those click-through referral fees. The key fact here is that Respondent, in collaboration with the domain parking service providers, is exploiting Complainant's goodwill. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (“Respondent is profiting from the goodwill associated with Complainant's ZEE CINEMA mark by redirecting Internet users seeking Complainant's goods and services to Respondent's own website for commercial gain.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (“Respondent is therefore using a confusingly similar domain name in order to attract Internet users to its website for its own commercial benefit.”).
In this case, the websites are operated according to a business model intended to commercially exploit the goodwill and reputation connected with the VANCE Marks. The Disputed Domains attract Internet users who recognize the Disputed Domains and identify them with the VANCE Marks. Respondent expects that the websites will attract third parties interested in purchasing the domain names. Those third parties may want to re-sell them (preferably to Complainant) or to operate websites that draw traffic from users who are confused by the Disputed Domains. Or, like Respondent, they may choose to do both. Of course, the biggest profit is likely to be earned only if Complainant sees what is going on and feels it must purchase the Disputed Domains. For that reason, the websites are intended to draw the attention of Complainant above all. To ensure that Complainant does find out, and to give Complainant added incentive to buy the Disputed Domains, the websites provide links to the websites of competing businesses and the site operated by SEDO offers to sell <vancesecurity.com> to the highest bidder.
The Panel has no doubt that these parking arrangements are structured for the purpose of attracting, for commercial gain, Internet users by creating a likelihood of confusion with the VANCE Marks, whether or not Respondent receives a penny of the click-through revenues.
The Panel rejects Respondent’s attempt to absolve itself from liability by asserting that it has turned over the Disputed Domains to domain brokers and domain parking service providers and is therefore not responsible for the content and function of the sites. Such an argument is effectively one of wilful ignorance, and must be rejected. In this regard, see the following quotation from Auralog s.a. v. Innovedo, FA 945049 (Nat. Arb. Forum May 14, 2007), which this Panel finds apposite and adopts:
With regard to parking websites offering similar services and products in direct competition with Complainant’s business, Respondent argues that it had no control or responsibility for that because it is the service provider GoDaddy.com who independently did that. This Panel finds this argument is without merit. Rather, this Panel concludes that the combination of Respondent’s passive holding of the domain name, transparent attempt to sell the domain name, and indifference to GoDaddy.com’s parking Complainant’s competitors’ websites sufficient to establish the bad faith registration and use of the domain name. See Ideal Products, LLC v. Manila Industries, Inc., FA 819490 (Nat. Arb. Forum Nov. 30, 2006) (“Respondent cannot duck its responsibility for the site by saying that others choose the content. Passive holding of a domain name is neither evidence of or against bad faith, and must be evaluated in light of all of the circumstances relating to the domain name.”).
Even if click-through referral fees generated by the Disputed Domains are not being directly received by Respondent, the fees are being earned by parties that Respondent has licensed or otherwise authorized to use the Disputed Domains. The service providers who operate the websites are only able to earn those fees as a consequence of the license/authorization granted by Respondent. It is highly unlikely that Respondent has granted such licences/authorization for charitable reasons or for intellectual stimulation. If Respondent is allowing its domain name broker or its domain parking service provider to earn revenues from the Disputed Domains, Respondent is doing so for a business reason. So, what commercial benefit is Respondent receiving in return? Without the Disputed Domains, there would be no revenues. One way to understand the arrangement is to consider the click-through fees as revenues earned by Respondent that are re-directed to the broker or the service provider as compensation for commercial services and benefits they are providing to Respondent. The benefit received by Respondent from those parties is the parking arrangement described above. The Panel is of the view that any click-through fees earned in connection with the websites accessed via the Disputed Domains are properly considered to be a commercial gain of the type contemplated in subparagraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has satisfied Paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vancesecurity.com>, <vancesecurity.net>, and <vancesecurity.org> domain names be TRANSFERRED from Respondent to Complainant.
A. Fashler, Panelist
Dated: June 8, 2007
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