Vivint, Inc. v. Kevin Wall
Claim Number: FA1403001549085
Complainant is Vivint, Inc. (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Kevin Wall (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vivantsolar.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2014; the National Arbitration Forum received payment on March 17, 2014.
On March 18, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <vivantsolar.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2014 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@vivantsolar.com. Also on March 19, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Vivint, Inc., is the owner of the VIVINT mark, which has become synonymous with quality home automation and security systems and services.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VIVINT mark (e.g., Reg. No. 4,166,498, registered January 31, 2012).
iii. Respondent’s <vivantsolar.com> domain name contains a common misspelling of Complainant’s VIVINT mark. Furthermore, adding a generic top-level domain (“gTLD”) does not negate a likelihood of confusion findin
iv. Respondent has no rights or legitimate interests in the domain name.
v. Respondent is not commonly known by the disputed domain name.
vi. Respondent’s domain name resolves to a parked page that features no content besides advertisements and links sponsored by the registrar.
vii. Respondent’s domain name contains an offer to sell the domain name.
viii. Respondent has registered and is using the domain name in bad faith.
ix. Respondent is offering on its website to sell the domain name.
x. Respondent’s purpose in registering the domain name was to disrupt Complainant’s business.
xi. Respondent has made no use of the domain name except to allow the registrar to display parked pages that feature no content besides advertisements and links sponsored by the registrar.
xii. Respondent was well-aware of Complainant’s VIVINT mark before registering the domain name.
xiii. Respondent registered the <vivantsolar.com> domain name on January 6, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the VIVINT mark. Respondent’s domain name is confusingly similar to Complainant’s VIVINT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <vivantsolar.com> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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.”).
Complainant is the owner of the VIVINT mark, which Complainant states has become synonymous with quality home automation and security systems and services. Complainant alleges owns a trademark registration with the USPTO for the VIVINT mark (e.g., Reg. No. 4,166,498, registered January 31, 2012). Although Respondent appears to reside within the Cayman Islands, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel finds that Complainant’s registration of the VIVINT mark with the USPTO demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <vivantsolar.com> domain name contains a common misspelling of Complainant’s VIVINT mark. Respondent’s misspelling of the VIVINT mark does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Respondent adds the descriptive term “solar” to Complainant’s mark. Respondent’s inclusion of a descriptive term does not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Furthermore, Respondent’s adding of a gTLD does not negate a likelihood of confusion finding. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel finds that Respondent’s <vivantsolar.com> domain name is confusingly similar to Complainant’s VIVINT mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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 on to 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.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the <vivantsolar.com> domain name. Complainant argues that Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the VIVINT mark or any of Complainant’s marks. Complainant claims that Respondent is not authorized by Complainant to register the domain name. The WHOIS record lists “Online Management” as the registrant of the disputed domain name. The Panel concludes that Respondent is not commonly known under the <vivantsolar.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s <vivantsolar.com> domain name resolves to a parked page that features no content besides advertisements and links sponsored by the registrar. Respondent’s domain name leads to a page that provides competing links titled “Cost of Solar Panels,” “Solar Panels for Homes,” “Solar Panels PV,” and others. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Accordingly, the Panel holds that Respondent is not using the <vivantsolar.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s <vivantsolar.com> domain name contains an offer to sell the domain name. Respondent’s domain name states “The domain name <vivantsolar.com> is for sale.” Complainant claims that Respondent was asking $14,999 for the domain name. A respondent’s offer to sell a disputed domain name shows that it lacks rights and legitimate interests in the domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Thus, the Panel holds that Respondent does not have rights or legitimate interests in the <vivantsolar.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
As explained above, Respondent is offering on its website to sell the <vivantsolar.com> domain name. Thus, the Panel determines that Respondent has registered and is using the <vivantsolar.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant alleges that Respondent’s purpose in registering the <vivantsolar.com> domain name was to disrupt Complainant’s business. Respondent’s domain name leads to a webpage that provides competing hyperlinks. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel found that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii). Therefore, the determines that Respondent’s use of the <vivantsolar.com> domain name to provide competing links demonstrates bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has made no use of the <vivantsolar.com> domain name except to allow the registrar to display parked pages that feature no content besides advertisements and links sponsored by the registrar. Respondent’s domain name leads to a webpage that contains links such as “Solar Panel Rebates,” “Solar Roof Mounts,” “Cost of Solar,” and others. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel held that “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Consequently, the Panel finds that Respondent has registered and is using the <vivantsolar.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent was well-aware of Complainant’s VIVINT mark before registering the <vivantsolar.com> domain name. The Panel finds that, based on the record establishing the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
The Panel finds Complainant has 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 <vivantsolar.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 18, 2014
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