Vivint, Inc. v. Online Management
Claim Number: FA1403001549084
Complainant is Vivint, Inc. (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <viventsolar.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his 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 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 <viventsolar.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@viventsolar.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 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Vivint, Inc. (“Complainant” or “Vivint”) is the owner of the VIVINT mark and various VIVINT-formative marks, including the VIVINT SOLAR mark. Complainant has been using the VIVINT trademarks in the United States and around the world since at least as early as January 2011 and has invested substantially in marketing the goods and services its sells under the VIVINT brand name. As a result, the VIVINT trademarks have become synonymous with quality home automation and security systems and services. Complainant has thus built up considerable goodwill in the minds of consumers in connection with the VIVINT trademarks. Consumers rely on Complainant’s VIVINT products and have come to associate the VIVINT brand name with quality goods and services.
The VIVINT mark and some of the VIVINT-formative marks have been registered with the U.S. Patent and Trademark Office under the following Registration Numbers:
· 4,166,498 for VIVINT, registered on July 3, 2012, and first used in commerce at least as early as February 1, 2011 with the installation and maintenance of building control and electromechanical security and automated systems, namely, HVAC systems, energy management systems, burglar, trouble, security and/or fire alarms, lighting systems, door locking systems that are controlled through an alarm system panel, CCTV and video cameras.
· 4,094,587 for VIVINT, registered on January 31, 2012 and first used in commerce at least as early as February 1, 2011 with beverageware.
· 4,459,451 for VIVINT registered on December 31, 2013 and first used in commerce at least as early as February 1, 2011 with door to door shopping in the field of burglar, trouble, security and /or fire alarms, building control, security and automation systems, HVAC automation and monitoring systems, energy management systems, lighting system controls, door locking systems, namely, those which are controlled and monitored through an alarm system panel or remotely through wireless communication, CCTV and video cameras.
· 4,392,693 for VIVINT, registered on August 27, 2013 and first used in commerce at least as early as February 1, 2011 with clothing, namely, uniforms, coats, shirts, sweaters, tee shirts, caps, jackets, sweat shirts, short sleeve shirts, long sleeve shirts.
· 4,392,692 for VIVINT, registered on August 27, 2013 and first used in commerce at least as early as February 1, 2011 with luggage; backpacks; bags, namely, all-purpose carrying bags.
· 4,388,507 for VIVINT, registered on August 20, 2013 and first used in commerce at least as early as February 1, 2011 with monitoring of building control and automation systems, namely, monitoring HVAC systems and monitoring of energy management systems; monitoring security systems; monitoring burglar, trouble, fire and security alarm systems; monitoring of door locking systems for security purposes, namely, providing intrusion and trouble alerts through wireless communication; Live monitoring for security purposes, namely, providing CCTV and video monitoring of facilities, viewable through a communications network.
· 4,153,443 for VIVINT., registered on June 5, 2012, and first used in commerce at least as early as February 1, 2011 with beverageware.
· 4,448,243 for VIVINT., registered on December 10, 2013, and first used in commerce at least as early as February 1, 2011 with installation and maintenance of building control and electromechanical security and automated systems, namely, HVAC systems, energy management systems, burglar, trouble, security and/or fire alarms, lighting systems, door locking systems that are controlled through an alarm system panel, CCTV and video cameras.
· 4,448,242 for VIVINT., registered on December 10, 2013, and first used in commerce at least as early as February 1, 2011 with clothing, namely, uniforms, coats, shirts, sweaters, tee shirts, caps, jackets, sweat shirts, short sleeve shirts, long sleeve shirts.
· 4,448,241 for VIVINT., registered on December 10, 2013, and first used in commerce at least as early as February 1, 2011 with luggage; backpacks; bags, namely, all-purpose carrying bags.
In addition to the noted registrations, Complainant’s VIVINT mark and VIVINT-formative marks are currently the subject of at least the following 49 trademark applications filed with the U.S. Patent and Trademark Office.
· 85/198875 for VIVINT, filed on December 15, 2010.
· 85/198872 for VIVINT, filed on December 15, 2010.
· 85/198869 for VIVINT, filed on December 15, 2010.
· 85/198867 for VIVINT, filed on December 15, 2010.
· 85/198892 for VIVINT, filed on December 15, 2010.
· 85/198881 for VIVINT, filed on December 15, 2010.
· 85/198863 for VIVINT, filed on December 15, 2010.
· 85/434507 for VIVINT., filed on September 28, 2011.
· 85/434497 for VIVINT., filed on September 28, 2011.
· 85/434489 for VIVINT., filed on September 28, 2011.
· 85/434472 for VIVINT., filed on September 28, 2011.
· 85/434465 for VIVINT., filed on September 28, 2011.
· 85/434417 for VIVINT., filed on September 28, 2011.
· 85/434409 for VIVINT., filed on September 28, 2011.
· 85/434400 for VIVINT., filed on September 28, 2011.
· 85/434391 for VIVINT., filed on September 28, 2011.
· 85/434381 for VIVINT., filed on September 28, 2011.
· 85/434443 for VIVINT., filed on September 28, 2011.
· 85/429766 for VIVINT., filed on September 22, 2011.
· 85/429800 for VIVINT., filed on September 22, 2011.
· 85/429796 for VIVINT., filed on September 22, 2011.
· 85/429792 for VIVINT., filed on September 22, 2011.
· 85/429788 for VIVINT., filed on September 22, 2011.
· 85/429784 for VIVINT., filed on September 22, 2011.
· 85/429783 for VIVINT., filed on September 22, 2011.
· 85/429770 for VIVINT., filed on September 22, 2011.
· 85/429762 for VIVINT., filed on September 22, 2011.
· 85/429757 for VIVINT., filed on September 22, 2011.
· 85/429746 for VIVINT., filed on September 22, 2011.
· 85/429741 for VIVINT., filed on September 22, 2011.
· 85/429735 for VIVINT., filed on September 22, 2011.
· 85/427430 for VIVINT SOLAR, filed on September 20, 2011.
· 85/427427 for VIVINT SOLAR, filed on September 20, 2011.
· 85/427422 for VIVINT SOLAR, filed on September 20, 2011.
· 85/427420 for VIVINT SOLAR, filed on September 20, 2011.
· 85/427413 for VIVINT SOLAR, filed on September 20, 2011.
· 85/427404 for VIVINT SOLAR, filed on September 20, 2011.
· 85/427400 for VIVINT SOLAR, filed on September 20, 2011.
· 85/427393 for VIVINT SOLAR, filed on September 20, 2011.
· 85/427389 for VIVINT SOLAR, filed on September 20, 2011.
· 85/434177 for VIVINT.ENERGY, filed on September 28, 2011.
· 85/434168 for VIVINT.ENERGY, filed on September 28, 2011.
· 85/434163 for VIVINT.ENERGY, filed on September 28, 2011.
· 85/434160 for VIVINT.ENERGY, filed on September 28, 2011.
· 85/434154 for VIVINT.ENERGY, filed on September 28, 2011.
· 85/434151 for VIVINT.ENERGY, filed on September 28, 2011.
· 85/434148 for VIVINT.ENERGY, filed on September 28, 2011.
· 85/434146 for VIVINT.ENERGY, filed on September 28, 2011.
· 85/434139 for VIVINT.ENERGY, filed on September 28, 2011.
In addition, Complainant has acquired common law trademark rights in the VIVINT mark and VIVINT-formative marks by virtue of their use in commerce. That Complainant has rights in the VIVINT mark is thus not in question. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”).
[5.] FACTUAL AND LEGAL GROUNDS
[a.] BACKGROUND FACTS
Complainant Vivint is an innovative home automation and security alarm company that offers high quality home security and automation solutions. Vivint’s products and services are designed to provide homeowners with enhanced home security options, maximized convenience, and energy efficiency.
Complainant Vivint was formerly named APX Alarm Security Solutions, Inc. (“APX”). In late Fall 2010, APX launched a rebranding campaign which included adoption of the VIVINT mark. APX began transitioning to its new name and offering goods and services under its new VIVINT mark in December 2010. Vivint is currently one of the largest home security and automation companies in the world and it uses the VIVINT mark to promote its brand via traditional advertising outlets and through its website, www.vivint.com. Through these sales and marketing efforts, Vivint has built up considerable goodwill in connection with the VIVINT mark.
Respondent, Registration Private, Online Management (“Respondent”), registered the domain name “viventsolar.com” on November 17, 2013 (the “Domain Name”). The Domain Name currently resolves to a parked page (the “Website”) that feature no content besides advertisements and links sponsored by the registrar and an offer to sell the Domain Name. Respondent thus uses the Domain Name simply to divert Internet traffic away from Complainant via Respondent’s Website, and, in the process, disrupt Complainant’s business. Furthermore, Respondent is not affiliated with Complainant and Complainant has not licensed or otherwise authorized Respondent to use the VIVINT mark, or any of its other trademarks, in the Domain Name at issue, or for any other purpose.
Complainant thus contends that: (1) Respondent has registered the Domain Name, which is identical to and/or confusingly similar to the VIVINT mark in which Complainant has rights, (2) Respondent has no rights or legitimate interests in the Domain Name, and (3) Respondent has registered and is using the Domain Name in bad faith.
[b.] THE DOMAIN NAME IS IDENTICAL TO AND/OR CONFUSINGLY SIMILAR TO MARKS IN WHICH COMPLAINANT HAS RIGHTS.
Complainant has rights in the VIVINT and VIVINT-formative marks as confirmed by multiple federal trademark registrations. Complainant has also applied for numerous additional federal registrations for its VIVINT and VIVINT-formative marks, including the VIVINT SOLAR mark, which applications remain pending at this time. The ICANN dispute policy is broad in scope, such that pending applications and diligent attempts to protect new marks, along with launching or selling of product will support a domain name complaint even without ownership of a registered trademark. See MedaBiotics Laboratories, LLC v. NOLDC, Inc., FA 346252 (Nat. Arb. Forum Dec. 7, 2004) (finding that unregistered or common law trademark or service marks suffice to support a complaint under the ICANN policy). Complainant thus meets the requirement of Policy ¶4(a)(i) that it have rights in the marks at issue.
Respondent’s “viventsolar.com” domain name contains Complainant’s VIVINT and VIVINT SOLAR marks in their entireties, albeit with a common, phonetically similar or identical misspelling (i.e., “vivent”) of Complainant’s VIVINT mark. It has been held numerous times that phonetic similarity between a disputed domain name and a mark is sufficient to satisfy Policy ¶4(a)(i). See, for example, CEC Entm’t Concepts, L.P. v. Boston, FA 441941 (Nat. Arb. Forum May 10, 2005) (“Phonetic identity alone is sufficient to allow a finding [that] the trademark and the domain name [are] identical.”). Similarly, it has been held that a common misspelling of a mark in a domain name does not sufficiently distinguish the disputed domain name from the mark under Policy ¶4(a)(i)). See Pleasant Hill Farm, Inc. v. Keyword Marketing, Inc., FA0706001007970 (Nat. Arb. Forum July 25, 2007); See also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000). Furthermore, as a general proposition, where a domain name incorporates a mark in its entirety, adding a gTLD and/or a generic or descriptive word does not negate a likelihood of confusion finding. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding the addition of a gTLD does not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i))); See also American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i))).
In light of the foregoing, this Panel should find that ICANN Policy ¶4(a)(i) has been satisfied because the Domain Name is identical and/or confusingly similar to Complainant’s VIVINT and VIVINT SOLAR marks.
[c.] RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN THE DOMAIN NAME.
Respondent has no rights or legitimate interests in the Domain Name. First, Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the VIVINT mark or any of Complainant’s other marks. Accordingly, Respondent is not authorized by Complainant to register the Domain Name, nor is it authorized to utilize active or inactive websites at any domain incorporating Complainant’s VIVINT marks.
Further, Respondent could not possibly contend that it is commonly known by or identified with the Domain Name. VIVINT is an invented word that has no meaning other than to serve as a trademark for the home automation and security goods and services Complainant provides. It is not a common dictionary term having inherent value as a search term arising from its commonality. Rather, its only value is that which Complainant has imparted to it in the form of good will through extensive use to promote its goods and services. Moreover, Respondent’s name, Registration Private, Online Management, is not even remotely similar to the Domain Name. See ICANN Policy ¶4(c)(ii); Seiko Epson Corp. v. Price-less Inkjet Cartridge Co., FA 096849 (Nat. Arb. Forum May 2, 2001), citing, inter alia, Compagnie de Saint Gobain v. Com-Union Corp., D200-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or for permission from Complainant to use the trademarked name); Gallup, Inc. v. Amish Country Store, FA 096209 (Nat. Arb. Forum Jan. 23, 2001) (same).
In addition, Respondent has not made a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii) of the Domain Name. Rather, the Respondent’s Domain Name resolves to a parked page that features no content besides advertisements and links sponsored by the registrar and an offer to sell the Domain Name. [see Annex E.] Merely registering a domain name without further use thereof, as the Respondent has done here, is insufficient to constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or to establish rights or legitimate interests for purposes of Policy ¶4(a)(ii). See Morgan Stanley v. Guerilla Freedom Fighter c/o Bethesda Properties LLC, FA0708001061232 (Nat. Arb. Forum Oct. 2, 2007); Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000); Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001). Respondent is offering to sell the Domain Name for the excessive price of $5,999, far above Respondent’s out of pocket expenses associated with securing the Domain Name. Offering to sell the Domain Name, especially for such a price far above Respondent’s out of pocket expenses, is clearly not “without intent for commercial gain,” so Policy ¶4(c)(iii) provides no cover for Respondent. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
Complainant respectfully submits that it has met its initial burden under ICANN Policy ¶4(a)(ii), having established that Respondent is not commonly known by the name VIVINT, is not engaged in a bona fide commercial use or a non-commercial fair use of Complainant’s mark, and that Complainant has not in any manner authorized Respondent to use its mark. Citigroup Inc. v. Citilend Mortgage Company, FA1233601 (Nat. Arb. Forum Dec. 1, 2008); Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003). This Panel should therefore find that ICANN Policy ¶4(a)(ii) has been satisfied because the Respondent has no rights or legitimate interests in the Domain Name at issue.
[d.] RESPONDENT HAS REGISTERED AND IS USING THE DOMAIN NAME IN BAD FAITH.
Respondent registered and is using the Domain Name in bad faith. In the six months since Respondent registered the Domain Name, 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. Respondent’s failure to make a legitimate use of the Domain Name indicates Respondent’s bad faith under Policy ¶4(a)(iii). See Morgan Stanley v. Guerilla Freedom Fighter c/o Bethesda Properties LLC, FA0708001061232 (Nat. Arb. Forum Oct. 2, 2007) (finding that “Respondent’s failure to use the <deanwitter.mobi> domain name, which is identical to Complainant’s DEAN WITTER mark, for any purpose besides the “parked” page that currently resolves from the disputed domain name indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶(a)(iii)”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
As noted herein, Respondent is offering on its Website to sell the Domain Name. Upon inquiry, Complainant was informed that the asking price for the Domain Name is $5,999. Registering and using a domain name with the intent to sell the domain name, especially for excessive profits, is evidence of bad faith and violates Policy ¶4(b)(iv). See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”); Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the Respondent offered to sell the Domain Name to the Complainant for $10,000 when Respondent was contacted by Complainant); Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Furthermore, as noted herein, the VIVINT mark is fanciful and arbitrary. The fanciful and arbitrary nature of the VIVINT mark essentially eliminates the possibility that Respondent and Complainant independently chose identical or such confusingly similar marks. In other words, it is almost certain that Respondent was well aware of Complainant’s VIVINT and VIVINT SOLAR marks before registering the Domain Name. Respondent’s (i) apparent knowledge of Complainant’s VIVINT and VIVINT SOLAR marks prior to registering the Domain Name in combination with Respondent’s failure to use of the Domain Name and offer to sell the Domain Name for such an excessive price suggests that Respondent’s purpose in registering the Domain Name was to disrupt Complainant’s business or reap some financial gain. Respondent’s apparent purpose in registering the Domain Name is a further indication of Respondent’s bad faith in registering and using the Domain Name. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Accordingly, Complainant respectfully submits that this Panel should find that ICANN Policy ¶4(a)(iii) is satisfied because Respondent has registered and is using the Domain Name in bad faith under ICANN Policy ¶4(b).
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 must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 and VIVINT SOLAR marks, which have become synonymous with quality home automation and security systems. Complainant owns trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the VIVINT mark (e.g., Reg. No. 4,166,498, registered January 31, 2012). Even though Respondent appears to reside within the Cayman Islands, Policy ¶4(a)(i) does not require Complainant to register its mark in the country where 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). All Complainant must do is show Complainant has some rights somewhere. Therefore, 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 claims Respondent’s <viventsolar.com> domain name contains a common misspelling of Complainant’s VIVINT mark. Respondent’s misspelling of the VIVINT mark does not adequately 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 also adds the descriptive term “solar” to Complainant’s mark. Adding a descriptive term does not adequately 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). Likewise, adding a gTLD does not adequately distinguish the disputed domain name from the mark under Policy ¶4(a)(i), especially since a gTLD or ccTLD is required syntax for a domain name. 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). Respondent’s <viventsolar.com> domain name is confusingly similar to Complainant’s VIVINT 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 claims Respondent is not commonly known by the <viventsolar.com> domain name. Respondent is neither a licensee of Complainant nor is Respondent otherwise authorized to use the VIVINT mark or any of Complainant’s marks. 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. It seems apparent Respondent is not commonly known by the <viventsolar.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).
Respondent’s <viventsolar.com> domain name resolves to a parked page with no content aside from advertisements and links. Respondent’s disputed domain name leads to a page providing competing links titled “Solar Energy Deals,” “Solar Electricity,” “Home Solar Energy Information,” 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. Respondent is not using the <viventsolar.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).
Respondent’s <viventsolar.com> domain name contains an offer to sell the domain name. Respondent’s domain name resolves to a page that states “This domain is for sale,” along the top of the page. A respondent’s offer to sell the disputed domain name shows its lack of 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). Respondent does not have rights or legitimate interests in the <viventsolar.com> domain name under Policy ¶4(a)(ii).
Finally, Respondent registered the domain name using a privacy service. This means the beneficial owner does not publicly associate its name with the disputed domain name. In the commercial context, this means the undisclosed owner has not acquired any rights to the disputed domain name. The nominee who owns the disputed domain name of record disclaims any control over the dispute domain name, which means it also cannot acquire any rights to the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent is offering to sell the <viventsolar.com> domain name. Respondent’s disputed domain name links to a webpage that states “This domain is for sale,” along the top of the page. Respondent was asking $5,999 for the domain name, which seems to be clearly in excess of Respondent’s actual out of pocket costs. Respondent has registered and is using the <viventsolar.com> domain name in bad faith pursuant to Policy ¶4(b)(i) because Respondent has offered to sell the disputed domain name,. 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 claims Respondent’s registered the <viventsolar.com> domain name to disrupt Complainant’s business. Respondent’s disputed 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). Respondent’s use of the <viventsolar.com> domain name to provide competing links demonstrates bad faith use and registration under Policy ¶4(b)(iii).
Respondent has apparently made no use of the <viventsolar.com> domain name except to display parking pages featuring no content besides advertisements and links. Respondent’s disputed domain name leads to a webpage that contains links such as “Solar Power Residential,” “Home Solar Systems,” “Residential Home Security,” 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).” Therefore, Respondent has registered and is using the <viventsolar.com> domain name in bad faith under Policy ¶4(b)(iv).
As noted previously, Respondent registered the dispute domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. This ground alone justifies a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <viventsolar.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, April 23, 2014
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