Vita-Mix Management Corporation v. Nguyen Thanh Binh
Claim Number: FA1704001725712
Complainant is Vita-Mix Management Corporation (“Complainant”), represented by Matthew J. Cavanagh of McDonald Hopkins LLC, Ohio, USA. Respondent is Nguyen Thanh Binh (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vitamixvietnam.com>, registered with Onlinenic, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2017; the Forum received payment on April 12, 2017.
On April 10, 2017, Onlinenic, Inc. confirmed by e-mail to the Forum that the <vitamixvietnam.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2017 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@vitamixvietnam.com. Also on April 19, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is in the business of selling blenders, as well as other goods and services, and has registered the distinctive VITA-MIX mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of that business. See Compl., at Attached Annex A (Reg. No. 2,021,896 registered Dec. 10, 1996). Respondent’s <vitamixvietnam.com> is confusingly similar to Complainant’s VITA-MIX mark because it wholly incorporates the mark—minus the hyphen—and merely adds the geographic description “vietnam” and a generic top-level domain name (“gTLD”), “.com”. Since the disputed domain name is confusingly similar to a mark in which Complainant has established rights, Policy ¶ 4(a)(i) is satisfied.
Respondent has no rights or legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). First, Respondent cannot be commonly known by the disputed domain name since the marketplace associates the VITA-MIX marks with Complainant and no other person or entity. Second, Respondent does not use the disputed domain name for a bona fide offering of goods and services or for a legitimate non-commercial or fair use. On Respondent’s website, Respondent sells either counterfeit “knock-offs” of Complainant’s blenders or Complainant’s actual blenders without authorization from Complainant. Furthermore, Respondent displays the VITA-MIX mark on its website. See Compl., at Attached Annex C. Respondent is using the VITA-MIX mark in order to confuse customers that are looking to purchase Complainant’s products and obtain sales from those confused customers. Since Respondent is not commonly known by the disputed domain name and is not using it for a bona fide offering of goods and services or legitimate non-commercial or fair use, Policy ¶ 4(a)(ii) is satisfied.
Finally, Respondent has registered and used the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). Respondent is using the disputed domain name to mislead customers to a website that sells products that disrupt and compete with Complainant’s business under Policy ¶ 4(b)(iii). Furthermore, if Respondent is selling Complainant’s blenders, it is doing so without permission and in an attempt to pass itself off as Complainant for commercial gain and such action also supports a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <vitamixvietnam.com>, was registered on March 4, 2016.
The Panel finds that the dispute domain name is confusingly similar to Complainant’s valid and subsisting trademark; that the Respondent has no rights or legitimate interests in or to the disputed domain name; and that the Respondent has engaged in bad faith use and registration of the dispute domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain name, <vitamixvietnam.com> is confusingly similar to the Complainant’s valid and subsisting trademark VITA-MIX. Complainant has adequately pled it rights and interests in and to that trademark. Respondent has no license or permission to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent arrives at the disputed domain name by merely deleting a hyphen and adding a geographically descriptive word, “Vietnam.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. The WHOIS information name “Nguyen Thanh Binh” as the registrant. As such, Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the VITA-MIX mark, nor is Respondent legally affiliated with Complainant in any way. As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
In addition, Respondent is not using the disputed domain name either for a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Panel finds that Respondent’s website attempts to mimic Complainant’s <vitamix.com> website by using the VITA-MIX mark in order to sell either Complainant’s actual products or counterfeit products that imitate Complainant’s products. Compl., at Attached Annex C. The Panel further finds that Respondent’s use of the disputed domain to sell products related to Complainant without authorization does not demonstrate a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
Furthermore, Respondent is attempting to pass itself off as Complainant for the purpose of misdirecting customers and obtaining sales. The Panel finds that the confusing similarity between the disputed domain name and the VITA-MIX mark, combined with the similarity between Respondent’s website and Complainant’s website, suggests that Respondent is attempting to pass itself off as Complainant. Compare Compl., at Attached Annex B, with Compl., at Attached Annex C. As such, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services nor a legitimate non-commercial fair use.
The Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent is apparently using the disputed domain name to disrupt commercial traffic to Complainant’s website and divert potential customers to Respondent’s confusingly similar website for commercial gain. The Panel finds that Respondent’s website attempts to mimic Complainant’s <vitamix.com> website by using VITA-MIX marks in order to sell either Complainant’s actual products or counterfeit products that imitate Complainant’s products. See Compl., at Annex C. The Panel also finds that listed prices for Vita-mix products on the earliest pages of Respondent’s website, as well as a claim to be the “Exclusive distributor in Vietnam products Vitamix”, show that Respondent has attempted to sell Vitamix products or counterfeit Vitamix products online. See Compl. at Annex E. The Panel finds that Respondent’s actions have disrupted Complainant’s business interests and, therefore, further finds that Respondent has registered and used the disputed domain name in bad faith.
The Panel further finds that, given the totality of the circumstances, Respondent had actual knowledge of the VITA-MIX mark prior to registering the disputed domain name.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <vitamixvietnam.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 20, 2017
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