Ross-Tech, LLC v. Jacquet Philippe
Claim Number: FA1411001589408
Complainant is Ross-Tech, LLC (“Complainant”), represented by Frank Mazzeo, Pennsylvania. Respondent is Jacquet Philippe (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vcds-shop.com>, registered with RegistryGate GmbH.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2014; the National Arbitration Forum received payment on November 11, 2014. The Complaint was submitted in both English and German.
On November 14, 2014, RegistryGate GmbH confirmed by e-mail to the National Arbitration Forum that the <vcds-shop.com> domain name is registered with RegistryGate GmbH and that Respondent is the current registrant of the name. RegistryGate GmbH has verified that Respondent is bound by the RegistryGate GmbH 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 November 20, 2014, the Forum served the German language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@vcds-shop.com. Also on November 20, 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 December 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Panel Note: Language of the Proceedings
The Registration Agreement is written in German, thereby making German the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant is the owner of the VCDS mark through trademark registration, including with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,537,609, registered Nov. 25, 2008). Complainant uses the VCDS mark in connection with computer software platforms for automotive diagnostics. The <vcds-shop.com> domain name contains the VCDS mark in full.
Respondent is not authorized by Complainant to use or sell any goods under the VCDS mark. The disputed domain name resolves to a website that offers goods that are copies of the software developed and sold by Complainant. Respondent does not have permission to sell or advertise these goods. Respondent’s website states, “We offer VCDS Softwares multilanguage with cables ( HEX USB CAN Interface ), latest versions and free updates.” The resolving page also contains Complainant’s VCDS logo. Respondent has made a blatant attempt to trade on Complainant’s mark and associated goodwill.
Respondent has engaged in bad faith use and registration. The goods offered through the subject domain name are copies of the software developed and sold by Complainant. Respondent does not have permission to sell or advertise Complainant’s goods. Respondent has registered the disputed domain name to disrupt Complainant’s business. Further, Respondent is attempting to mislead users into associating Complainant with the <vcds-shop.com> domain name, and Respondent seeks to impermissibly profit from this confusion. Respondent registered the disputed domain name with actual knowledge of Complainant, as shown by the use of the disputed domain name to sell and/or advertise goods bearing the VCDS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Ross-Tech, LLC, is the owner of the VCDS mark through trademark registration, including with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,537,609, registered Nov. 25, 2008). Complainant uses the VCDS mark in connection with computer software platforms for automotive diagnostics.
Complainant has incorporated a specific design into its VCDS mark since as early as 2008. Complainant has a pending US trademark application for the word and design mark. Respondent uses the same mark on the resolving website for the <vcds-shop.com> domain name to offer similar goods as Complainant. Respondent, Jacquet Philippe, registered the domain name on August 13, 2012.
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(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 has rights in the VCDS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
The <vcds-shop.com> domain name is confusingly similar to the VCDS mark under Policy ¶ 4(a)(i). The disputed domain name differs from the mark by the inclusion of a hyphen, the generic term “shop,” and the generic top-level domain (“gTLD”) “.com.” Such alterations fail to distinguish a domain name from an incorporated mark. See Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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).
Respondent is not authorized by Complainant to use or sell any goods under the VCDS mark. The WHOIS record lists “Jacquet Philippe” as registrant. Respondent is not commonly known by the <vcds-shop.com> name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The <vcds-shop.com> domain name resolves to a website that offers goods similar to Complainant’s goods. Respondent’s website states, “We offer VCDS Softwares multilanguage with cables ( HEX USB CAN Interface ), latest versions and free updates.” The resolving page also contains Complainant’s VCDS logo. Respondent’s use of the <vcds-shop.com> domain name to feign affiliation with Complainant and advertise Complainant’s goods without authorization amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Respondent has registered the <vcds-shop.com> domain name to disrupt Complainant’s business. Respondent’s resolving website offers copies of the software developed and sold by Complainant without Complainant’s permission. Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Respondent is attempting to mislead users into associating Complainant with the <vcds-shop.com> domain name, and Respondent seeks to impermissibly profit from this confusion. Respondent’s efforts to pass itself off as Complainant in hopes of selling Complainant’s goods or similar goods shows Policy ¶ 4(b)(iv) bad faith. See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent registered the disputed domain name with actual knowledge of Complainant; and, therefore, in Policy ¶ 4(a)(iii) bad faith. See, e.g., Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (The Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products shows actual knowledge of the mark and Complainant's rights).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vcds-shop.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 31, 2014
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