Vevo LLC v. Ming Tuff / Ming Tuff
Claim Number: FA1204001440981
Complainant is Vevo LLC (“Complainant”), represented by Michael Chiappetta of Fross, Zelnick, Lehrman & Zissu, P.C., New York, USA. Respondent is Ming Tuff / Ming Tuff (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vevo.xxx>, registered with 101domain, Inc. (R3195-XXX).
The undersigned certifies 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2012; the National Arbitration Forum received payment on April 25, 2012.
On April 26, 2012, 101domain, Inc. (R3195-XXX) confirmed by e-mail to the National Arbitration Forum that the <vevo.xxx> domain name is registered with 101domain, Inc. (R3195-XXX) and that Respondent is the current registrant of the name. 101domain, Inc. (R3195-XXX) has verified that Respondent is bound by the 101domain, Inc. (R3195-XXX) 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 May 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2012 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@VEVO.XXX. Also on May 1, 2012, 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 May 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner-operator of fully-licensed, high-quality online video programming under the VEVO trademark (the "VEVO Mark"). Complainant's wide-ranging VEVO platform as described herein is one of the Internet's most prominent and renowned sources for online video programming. Complainant is the owner of U.S. Registration No. 3,994,771 for the VEVO Mark in connection with a wide range of online music- and entertainment-related services, which has a priority date of January 14, 2009, and which issued on July 12, 2011.
FACTUAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
A. Complainant's Use of and Rights in the VEVO Trademark
Complainant is the owner-operator of fully-licensed, high-quality online video programming under the VEVO trademark (the "VEVO Mark"), which formally launched in the U.S. and Canada on December 8, 2009. Since then, the rise of the VEVO service and brand has been nothing short of "meteoric," as accurately described by the media.
Complainant's VEVO service has approximately 45,000 music videos in addition to original series, behind-the-scenes footage, live performances, and artist interviews. Complainant continually adds music video catalogs and programming to its VEVO platform through new partnerships with major record companies, dozens of independents and other premium content owners like CBS. The VEVO platform features the most extensive catalog of premium music content found anywhere on the web thanks to deals with such leading music companies as Universal Music Group, Sony Music Entertainment, EMI Music, ABKCO, Beggars Group, Big Machine Records, CBS Interactive Music Group, Concord Music Group, Hollywood Records, Lyric Street Records, Razor & Tie Entertainment, Ultra Records, Walt Disney Records, Wind-up Records, Caroline Distribution, Entertainment One Distribution, Fontana Distribution, INgrooves, IODA, RED, SAAVN and The Orchard, among many others.
Complainant's video programming under the VEVO mark is offered across a platform that spans the Internet, which platform includes Complainant's own website at www.vevo.com, VEVO on YouTube, VEVO Mobile (e.g., iPhone, iPad, Android, Windows Phone, Blackberry Playbook), VEVO-connected devices (e.g., Xbox, Google TV, Boxee), and its VEVO-branded embedded player, which can be found on an array of websites such as aol.com, lastfm.com, Univision.com, mtv.com, vhl.com and bet.com.
Among other accolades, Complainant's VEVO platform is ranked by comScore as the Number One Music platform on the web, was named by Billboard Magazine as one of the top startups of 2010, and received the prestigious Advertising Age Media Vanguard Award for Online Video Platform Launch of the Year in 2010. Indeed, VEVO's "meteoric rise" (Mediapost) has been applauded by major news publications such as Billboard, Forbes, the Los Angeles Times and The Financial Times. Forbes calls VEVO "one of the smartest business modeal in tech and entertainment." As Billboard noted, "VEVO has become the best example of how advertising plays into the future of the music business... Since its December 2009 launch, Vevo has picked up just under 600 advertisers ranging from American Express to Vitamin Water.
Complainant actively promotes its services under the VEVO mark in a wide variety of internet media, including, for instance, on the Facebook social media site at www.facebook.comNEVO, where Plaintiff has over 2.1 million "friends," and on Twitter under the @VEVO handle, where it has over 250,000 followers. Complainant's services under the VEVO mark have enjoyed phenomenal success- for example, Complainant's VEVO service has had over 3.3 billion worldwide video views online and received over 51 million unique visitors in the United States in January 2012 alone.
Complainant is the owner of U.S. Trademark Registration No. 3,994,771 (the "VEVO Registration"), which has a priority filing date of January 14, 2009, and which issued on July 12, 2011, for the VEVO mark covering the following services in International Class 41:
Providing online entertainment, namely, providing sound and video recordings in the field of music and music based entertainment; entertainment services, namely, providing online non-downloadable prerecorded musical sound and video recordings via a global computer network; entertainment in the nature of live concerts and performances by musical artists and groups; entertainment services, namely, personal appearances by musical groups, musical artists and celebrities; entertainment services in the nature of performances rendered by musical artists through audio and video recordings; entertainment services, namely, recorded performances by musical artists; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, and other multimedia materials featuring music and music-related entertainment; entertainment services, namely, providing prerecorded music and information in the field of music, all on-line via a global computer network.
B. Respondent's Registration of the Infringing Domain Name
On December 6, 2011, long after the VEVO service achieved phenomenal success, and two years after Complainant's priority filing date for its VEVO Registration, Respondent registered the Infringing Domain Name VEVO.XXX, which name is identical to Complainant's above-described VEVO trademark. Respondent is not using the Infringing Domain Name for an active website. Rather, when a user inputs the Infringing Domain Name into a web browser, all that appears is a holding page from 101 Domains (the registrar for the Infringing Domain Name) stating as follows:
We are proud to announce a future site for: VEVO.XXX
4
LEGAL GROUNDS
AND ARGUMENT
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.
Policy 4(a). As set forth below, all three factors support transfer of the Infringing Domain Name to Complainant.
A. The Infringing Domain Name is Identical to Complainant's V EVO Trademark
Complainant's rights to the VEVO trademark are shown through its Registration and its extensive use of the mark in commerce. See State Farm Mutual Automobile Ins. Co. v. dude Jug, FA 1311737 (Nat. Arb. Forum April 16, 2010) (registration of a mark establishes rights in that mark for the purposes of a UDRP proceeding).
Respondent registered the Infringing Domain Name almost three years after Complainant applied to register the VEVO mark, two years after Complainant launched its VEVO music video and entertainment service in the U.S. and Canada, and, nearly five months after Complainant's Registration issued. The Infringing Domain Name is identical and confusingly similar to Complainant's registered VEVO trademark, consisting of nothing more than Complainant's registered trademark, plus the ".XXX" sponsored top-level domain ("sTLD") extension. The sTLD indicator designation in a domain name cannot be taken into consideration when judging confusing similarity. Richard Branson v. Sean Truman, FA 1423689 (Nat. Arb. Forum Feb. 14, 2012) ("[T]he addition of gTLDs such as '.com' or '.net,' and here the sTLD '.xxx,' are irrelevant in differentiating a domain from a complainant's mark for the purposes of Policy 4(a)(i)."); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum March 21, 2005) ("[T]he addition of '.us' to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy.").
A domain name that wholly incorporates a registered trademark is considered to be identical to the registered mark. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (the domain name at issue mirrored the Complainant's mark, "rendering the domain name at issue confusingly similar to Complainant's service mark"); Raisio pic v. Joohee, Case No. D2005-1041, §6.A (WIPO Dec. 14, 2005); Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, Case No. D2003-0661, §6.1 (WIPO Oct. 21, 2003).
Thus, it is clear that the Infringing Domain Name is identical or confusingly similar to Complainant's validly registered trademark, satisfying the first factor of Policy 4(a).
B. Respondent Has No Legitimate Interest In the Infringing Domain Name
Under Policy 4(a)(ii), the threshold for Complainant's prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name is "low." Richard Branson v. Sean Truman, FA 1423689 (Nat. Arb. Forum Feb. 14, 2012) (citing Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
Respondent is identified in the WHOIS report as Ming Tuff, and so Respondent does not purport to be commonly known by the VEVO mark. Moreover, Complainant never authorized Respondent to incorporate the VEVO mark in a domain name and Respondent is not sponsored by or affiliated with Complainant in any way. This alone satisfies Complainant's prima facie burden of proof, shifting to Respondent the burden of demonstrating a legitimate interest in the VEVO mark. Richard Branson v. Sean Truman, FA 1423689 (Nat. Arb. Forum Feb. 14, 2012).
Further, Respondent is not using the Infringing Domain Name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Infringing Domain Name. Such passive holding of the Infringing Domain Name itself an alternate basis for concluding that Respondent lacks a legitimate interest in the Infringing Domain Name. HEB Grocery Company, L.P. v. Eric Gonzales, FA 1421851 (Nat. Arb. Forum Feb. 7, 2012); see also See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) ("The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy 4(c)(iii)."); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)).
Finally, Respondent could not conceivably have a legitimate interest in the Infringing Domain Name. Under the Charter Eligibility Dispute Resolution Policy (CEDRP) governing the .xxx sTLD, to be eligible to register any .XXX domain name, Respondent must be a member of the relevant "sponsored community" permitted to register a .XXX domain names, namely one who provides "Adult Online Entertainment" (e.g., pornography), or one who represents or provides services to those provide such entertainment. CEDRP ,-r 2(a) (allowing for transfer of the domain name from Respondent when a .XXX TLD domain name "has not been registered in compliance with the Sponsored Community eligibility criteria...."). Here, there is no evidence that Respondent meets this requirement, which itself provides independent grounds for finding no legitimate interest. Richard Branson v. Sean Truman, FA 1423689 (Nat. Arb. Forum Feb. 14, 2012 (finding respondent had no connections to the sex or pornography industries and therefore could not possibly be a member of the "sponsored community" such that its interest could be legitimate); HEB Grocery Company, L.P. v. Eric Gonzales, FA 1421851 (Nat. Arb. Forum Feb. 7, 2012) (Respondent could not "conceivably" have a legitimate interest in .XXX domain name because he lacks involvement in the adult entertainment industry). But even if Respondent were involved with the adult-entertainment industry and were planning to use the Infringing Domain Name for an adult-oriented website, it is well-established that using another's trademark as a domain name for such a website is not a legitimate interest. Verizon Trademark Services LLC v. n/a and Ruslan Biletsky, FA 1383599 (Nat. Arb. Forum (May 12, 2011) (use of <verizontone.com> for adult entertainment site "does not constitute a bona fide offering of goods or services or a legitimate or noncommercial fair use of the disputed domain name); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent's use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult oriented website did not equate to a bona fide offering of goods or services under Policy 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy 4(c)(iii))).
For all of the foregoing reasons, Respondent does not have rights or a legitimate interest in the Infringing Domain Name, nor could it possibly have a legitimate interest in the Infringing Domain Name. Thus, Complainant has satisfied the second factor of Policy 4(a).
C. Respondent's Registration and Use of infringing Domain Name Is In Bad Faith
Considering that VEVO is an arbitrary, coined term, it is highly improbable that Respondent selected the Infringing Domain Name by coincidence, without an intent to trade off the substantial goodwill Complainant has developed in the VEVO trademark. Further undermining any possible allegation of good faith by Complainant is the fact that Complainant is in the business of lnternet-based videos, and the .XXX sTLD is reserved for adult-entertainment websites (i.e., adult video websites). It is apparent that Respondent registered the Infringing Domain Name with the intent of profiting from the established association between the VEVO mark and video programming. Consumers would inevitably assume that any adult video website posted by Respondent at the Infringing Domain Name is Complainant's foray into the adult video field, which would be extremely damaging to Complainant's reputation and to the VEVO brand.
But the panel need not speculate concerning Respondent's intent, as Respondent's registration and failure to use the Infringing Domain Name is alone evidence of bad faith registration and use under the Policy 4(a)(iii). HEB Grocery Company, L.P. v. Eric Gonzales, FA 1421851 (Nat. Arb. Forum Feb. 7, 2012); see also Am. Broad Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent's failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DC/ S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent's [failure to make an active use] of the domain name satisfies the requirement of 4(a)(iii) of the Policy).
Further, the same rationale discussed above with respect to the "legitimate interest" factor applies to the "bad faith" factor as well. HEB Grocery Company, L.P. v. Eric Gonzales, FA 1421851 (Nat. Arb. Forum Feb. 7, 2012) (noting that the panel's "findings regarding Respondent's lack of rights or legitimate interests in the disputed domain under the RES and CEDRP also support a finding of bad faith registration and use under the UDRP"); Richard Branson v. Sean Truman, FA 1201001423689 (Nat. Arb. Forum Feb. 14, 2012) (Respondent's defiance of the applicable .XXX sTLD registration eligibility requirements further demonstrates Respondent's bad faith). On the one hand, .XXX domain names cannot be registered or used for purposes other than adult-oriented content. On the other hand, panels routinely conclude that using a confusingly similar domain name to resolve to adult-oriented material constitutes bad faith registration and use pursuant to Policy 4(b)(iv). Verizon Trademark Services LLC v. nla and Ruslan Biletsky, FA 1383599 (Nat. Arb. Forum (May 12, 2011); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent's use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy 4(b)(iv)).
For the foregoing reasons, Respondent necessarily registered and is using the Infringing Domain Name in bad faith under 4(a)(iii) of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
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 claims it has rights in the VEVO mark. Complainant uses the VEVO mark in connection with the operation of fully-licensed, high-quality online video programming, including music and other entertainment-related services. Complainant provides evidence to the Panel of its USPTO registration for the VEVO mark (Reg. No. 3,994,771 registered July 12, 2011). Panels have found that the registration of a mark with a federal trademark authority is sufficient evidence of rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Therefore, the Panel finds Complainant has rights in the VEVO mark pursuant to Policy ¶4(a)(i).
Complainant also contends the <vevo.xxx> domain name is identical to the VEVO mark. Complainant claims Respondent simply took Complainant’s mark and added the sponsored top-level domain (“sTLD”) “.xxx” to create the <vevo.xxx> domain name. This Panel finds the addition of a sTLD is irrelevant for the purposes of a Policy ¶4(a)(i) analysis. See HEB Grocery Co., L.P. v. Gonzales, FA 1421851 (Nat. Arb. Forum February 7, 2012) (finding that the addition of the top-level domain “.xxx” did not bar the panel from finding that the <heb.xxx> domain name was identical to the HEB mark); see also The Toronto-Dominion Bank v. eLove Media LLC., / Ming Li, FA 1429679 (Nat. Arb. Forum March 22, 2012) (finding that the respondent’s failure to make changes beyond the removal of spaces between words in the complainant’s mark and the addition of the top-level domain “.xxx” rendered the disputed domain name identical to the complainant’s mark under Policy ¶4(a)(i)). Therefore, the Panel finds Respondent’s <vevo.xxx> domain name is identical to the VEVO mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent is not commonly known by the disputed domain name. Complainant also claims Respondent has not been authorized to use the VEVO mark and is not affiliated with, or sponsored by, Complainant in any way. The WHOIS record for the <vevo.xxx> domain name lists “Ming Tuff / Ming Tuff” as the domain name registrant. Panels have previously held the WHOIS record and additional relevant information is illustrative of whether or not a respondent is commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds Respondent is not commonly known by the <vevo.xxx> domain name pursuant to Policy ¶4(c)(ii).
Complainant next claims Respondent’s non-use of the disputed domain name demonstrates a lack of rights and legitimate interests. Complainant points out Respondent’s <vevo.xxx> domain name currently resolves to a website which is inactive. Since the domain name is apparently not being used, Respondent can hardly claim to have acquired rights by actually using the domain name. The panels in Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), and George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), found that the non-use of a disputed domain name did not give a respondent rights and legitimate interests under Policy ¶¶4(c)(i) and 4(c)(iii). This Panel agrees Respondent’s holding of an inactive website is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
Complainant argues under the CEDRP regarding Respondent’s bad faith registration and use. CEDRP ¶8 allows the Panel to use the CEDRP under Policy ¶4(a)(ii), so the Panel will consider Complainant’s arguments under Policy ¶4(a)(ii) as well. Complainant contends Respondent does not qualify as an eligible registrant of the disputed domain name under CEDRP ¶2(a). Complainant claims Respondent must actually use the <vevo.xxx> domain name for adult-oriented content to be eligible and the disputed domain name is currently inactive. The Panel agrees with Complainant and finds Respondent does not satisfy CEDRP ¶2(a). Respondent lacks rights and legitimate interests in the <vevo.xxx> domain name pursuant to Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s bad faith is evidenced by Respondent’s intention to take commercial advantage of Internet users by trading off of Complainant’s goodwill and creating confusion as to the source of the disputed domain name. Complainant argues the <vevo.xxx> domain name must be used in connection with adult-oriented websites in order to use the “.xxx” sTLD. This means Respondent’s use of an identical domain name is solely meant to take advantage of the goodwill associated with the VEVO mark. The Panel notes there is no current commercial use to the <vevo.xxx> domain name—a required element of Policy ¶4(a)(iv). However, in Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000), the panel found that waiting until a disputed domain name is being used and generating commercial gain is not necessary when use will inevitably satisfy the showing of Policy ¶4(b)(iv). In this case, the domain name is identical to Complainant’s fanciful, registered trademark. This Panel agrees and finds Respondent registered and failed to use the <vevo.xxx> domain name in bad faith pursuant to Policy ¶4(b)(iv) because it intended to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name based on confusion created by Respondent.
Complainant claims Respondent registered and is using the disputed domain name in bad faith. Complainant alleges the <vevo.xxx> domain name resolves to an inactive website. Panels have previously held the registration and non-use of a disputed domain name can still evidence bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). This Panel agrees under the circumstances of this case and finds Respondent’s registration and non-use of the <vevo.xxx> domain name are a product of bad faith pursuant to Policy ¶4(a)(iii).
Complainant argues Respondent is not a part of the sponsored community for the “.xxx” top-level domain and does not meet the eligibility requirements of CEDRP ¶2(a). Complainant points out the <vevo.xxx> domain name is currently being inactively held by Respondent. Complainant claims Respondent does not qualify as an eligible registrant of the disputed domain name but still chose to register the disputed domain name. The Panel agrees under the facts of this case and finds Respondent does not meet the eligibility requirements of CEDRP ¶2(a). This leads the Panel to conclude Respondent did register and use the disputed domain name in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vevo.xxx > domain name be TRANSFERRED from Respondent to Complainant
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, May 29, 2012
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