Vidyo, Inc. v. Ellen Christensen
Claim Number: FA1902001830636
Complainant is Vidyo, Inc. (“Complainant”), represented by Susan Goldsmith of McCarter& English, LLP, New Jersey, USA. Respondent is Ellen Christensen (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vldyo.com>, registered with Google 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 Forum electronically on February 20, 2019; the Forum received payment on February 20, 2019.
On February 21, 2019, Google LLC confirmed by e-mail to the Forum that the <vldyo.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 February 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2019 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@vldyo.com. Also on February 22, 2019, 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 March 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant has been an international provider of video digital interactive communications and a pioneer of video collaboration technology since 2005. Complainant has rights in the VIDYO mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,573,727, registered Feb. 10, 2009) and the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA845,136, registered Mar. 4, 2013).
2. Respondent’s <vldyo.com>[i] domain name is identical or confusingly similar to Complainant’s mark as it intentionally misspells the mark by replacing the letter “i” with the visually similar letter “l” to intentionally mislead consumers.
3. Respondent has no rights or legitimate interests in the <vldyo.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant licensed or consented to Respondent’s use of the VIDYO mark.
4. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as an employee of Complainant to deceive Complainant’s customers.
5. Respondent registered and uses the <vldyo.com> domain name in bad faith. Respondent attempts to pass off as an employee in an attempt to defraud Complainant and customers.
6. Further, Respondent’s use of the domain name to pass off as Complainant demonstrates Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the VIDYO mark. Respondent’s domain name is confusingly similar to Complainant’s VIDYO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <vldyo.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(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.”).
Complainant has rights in the VIDYO mark through its registration with the USPTO and CIPO. Registration of a mark with multiple trademark agencies is sufficient to establish rights in the mark. See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Complainant has provided the Panel with copies of its registration with the USPTO (e.g. Reg. No. 3,573,727, registered Feb. 10, 2009) and CIPO (e.g. Reg. No. TMA845,136, registered Oct. 6, 2011. Thus, Complainant has rights in the VIDYO mark per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <vldyo.com> domain name is identical or confusingly similar to Complainant’s mark as Respondent replaces the “i” in Complainant’s mark with the visually similar letter “l.” The domain name also adds the “.com” generic top-level domain (“gTLD”). Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). The Panel holds that the <vldyo.com> domain name is confusingly similar to the VIDYO 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 <vldyo.com> 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 (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 argues Respondent lacks rights or legitimate interest in the <vldyo.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the VIDYO mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <vldyo.com> domain name lists the registrant as “Ellen Christensen,” and there is no other evidence to suggest that Respondent was authorized to use the VIDYO mark. Therefore, Respondent is not commonly known by the <vldyo.com> domain name per Policy ¶ 4(c)(ii).
Next, Complainant contends Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <vldyo.com> domain name. Specifically, Complainant has provided evidence that Respondent uses an email address associated with domain name to attempt to pass off as Complainant in furtherance of a phishing scheme. This use is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides the Panel the Declaration of Stephen Lehman alleging that Respondent uses an email address to pass off as one of Complainant’s employees to attempt to defraud Complainant and customers of money due from customers to Complainant with copies of the email. Therefore, the Panel holds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <vldyo.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent uses an email address associated with the <vldyo.com> domain name to attempt to pass off as an employee of Complainant’s business to divert payments to Complainant from customers. Using a domain name which incorporates the mark of another to pass off as an employee of a complainant via email demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant provides the Panel the Declaration of Stephen Lehman alleging, without contradiction in the record, that Respondent uses an email address to pass off as one of Complainant’s employees to attempt to defraud Complainant and customers of money due from customers to Complainant. Therefore, the Panel holds that Respondent registered and uses the <vldyo.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, Complainant argues Respondent had actual knowledge of Complainant’s rights in the VIDYO mark at the time of registration of the<vldyo.com> domain name. Actual knowledge of Complainant’s mark prior to registering a confusingly similar domain name can show bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant’s contends that Respondent’s use of the <vldyo.com> domain name to pass off as Complainant demonstrates Respondent’s actual knowledge of Complainant’s rights in the VIDYO mark. The Panel holds that Respondent had actual knowledge of the VIDYO mark at the time of registering the <vldyo.com> domain name, thus constituting bad faith registration under Policy ¶ 4(a)(iii).
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 <vldyo.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 1, 2019
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