Vivint, Inc. v. GreenLeaf Solar
Claim Number: FA1410001585796
Complainant is Vivint, Inc. (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is GreenLeaf Solar (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vivintsolarlongisland.com> (the “Disputed Domain Name”), registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2014; the National Arbitration Forum received payment on October 20, 2014.
On October 21, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <vivintsolarlongisland.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 October 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@vivintsolarlongisland.com. Also on October 22, 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.
A brief e-mail apparently sent on behalf of the Respondent was received by the Forum on November 5, 2014.
On November 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg 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 issues 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
In its Complaint, Complainant contends, in relevant part, as follows:
· Complainant is “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.”
· Complainant is the owner of 10 trademark registrations and 49 trademark applications that consist of or contain the mark VIVINT at the U.S. Patent and Trademark Office (the “VIVINT Trademark”), including U.S. Reg. No. 4,166,498 for the mark VIVINT (first used in commerce on February 1, 2011; registered on July 3, 2012) for use in connection with “[i]nstallation 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.” Complainant has provided supporting documentation for the VIVINT Trademark, including copies of certificates of registration.
· The Disputed Domain Name was created on September 19, 2014, and “resolves to a parked page… that feature[s] no content besides advertisements and links sponsored by the registrar.”
· The Disputed Domain Name is identical or confusingly similar to the VIVINT Trademark because “the addition in this case of the geographically descriptive term “Long Island” and the gTLD “.com” to the marks VIVINT and VIVINT SOLAR in Respondent’s Domain Name cannot serve to distinguish it from Complainant’s VIVINT and VIVINT SOLAR marks under Policy ¶ 4(a)(i).”
· Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the VIVINT mark or any of Complainant’s other marks”; “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”; and “[m]erely 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).”
· The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent’s failure to make a legitimate use of the Domain Name indicates Respondent’s bad faith under Policy ¶ 4(a)(iii)”; and “[t]he 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.”
B. Respondent
A brief e-mail apparently sent on behalf of the Respondent was received by the Forum on November 5, 2014. The e-mail states: “We have received your dispute and would like to inform you that the mentioned Domain name vivintsolarlongisland.com is not being used and is not active.”
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s VIVINT Trademark, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was 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 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.
Based upon the trademark registrations cited by Complainant described above, it is apparent that Complainant has rights in the VIVINT Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the VIVINT Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “vivintsolarlongisland”), as it is well-established that the top-level domain name (i.e., “.com”) may be disregarded for this purpose.
Obviously, the Disputed Domain Name contains the VIVINT Trademark in its entirety. As a previous panel held, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903.
Inclusion of the word “solar” in the Disputed Domain Name does not eliminate any confusing similarity given that this word is associated with the VIVINT Trademark. Indeed, the addition of certain words, as here can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademark[]” where the other word is associated with the trademark. Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124. See also Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (“[t]he Disputed Domain Name contains the key name and mark of the Complainant gateway and the central element of the Complainant’s… [m]arks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Finally, inclusion of the words “longisland” (that is, “Long Island” – the name of an island in the U.S. state of New York) in the Disputed Domain Name also does not eliminate any confusing similarity because “[s]everal [p]anels have underlined that the use of a Complainant’s trademark in connection with a geographic term does not prevent confusing similarities.” Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986.
Accordingly, the Panel finds that Complainant has proven the first element of the UDRP.
Complainant has argued that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent is neither a licensee of Complainant nor is it otherwise authorized to use the VIVINT mark or any of Complainant’s other marks”; “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”; and “[m]erely 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).”
Under the UDRP, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. Here, the e-mail sent to the Forum apparently on behalf of Respondent does not substantively address the merits of Complainant’s legal arguments and has offered no “appropriate allegations or evidence.”
Accordingly, the Panel is satisfied that Complainant has proven the second element of the UDRP.
Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. UDRP Policy ¶ 4(b).
Complainant does not specify which, if any, of these four factors establishes bad faith here, but in any event the four factors are non-exhaustive. See, e.g., DreamWorks Animation L.L.C. v. African American Film Network, WIPO Case No. D2013-1482 (““the four criteria set forth in the Policy paragraph 4(b) are nonexclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith”) (internal punctuation and citations omitted).
Here, the panel agrees with the decision cited by Complainant regarding bad faith: Morgan Stanley v Guerilla Freedom Fighter c/o Bethesda Properties LLC, FA 1061232, “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).” Further, because the registrar parking page associated with the Disputed Domain Name contains no links related to Complainant or the VIVINT Trademark, Respondent could be considered to be engaged in “passive holding” of the Disputed Domain Name, which has long been considered to constitute bad faith under certain circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, given what Complainant describes as its “fanciful and arbitrary” trademark, and in the absence of any explanation from Respondent, the Panel considers Respondent’s actions to constitute “passive holding” arising to bad faith.
Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vivintsolarlongisland.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: November 25, 2014
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