Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-
Claim Number: FA1502001603444
Complainant is Twitter, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Kiribati Media / Kiribati 200 Media Limited- (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vineos.co>, registered with HELLO.CO.
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 Forum electronically on February 5, 2015; the Forum received payment on February 5, 2015.
On February 5, 2015, HELLO.CO confirmed by e-mail to the Forum that the <vineos.co> domain name is registered with HELLO.CO and that Respondent is the current registrant of the name. HELLO.CO has verified that Respondent is bound by the HELLO.CO registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2015 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@vineos.co. Also on February 6, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Founded in 2007, and headquartered in San Francisco, California, Twitter offers a public platform where any user can create a Tweet and any user can follow other users. Each Tweet is limited to 140 characters of text, but can also contain rich media, including photos, videos and applications. As of 2013, Twitter was available in more than 35 languages and had more than 240 million monthly active users. As of 2013, Tweets had appeared on over eight million third-party websites. In the fourth quarter of 2013, there were approximately 67 billion online impressions of Tweets on Twitter properties.
Twitter uses and has registered various well-known marks in conjunction with its business, including VINE. Available since at least January 24, 2013, Vine is a mobile application available via the URL http://vine.co, and on the iOS, Android and Windows operating systems, that enables users to create and distribute short looping videos of up to six seconds in length. Vine users create and distribute their videos to their followers on Vine, with the option of Tweeting them to their Twitter followers on Twitter, or sharing them on social networks. Users on Vine can follow other users, re-broadcast to their followers by sharing other’s videos, comment on videos and embed videos on websites. According to Alexa, Vine is among the 1,000 most popular web sites globally.
The VINE trademark is registered in the United States and elsewhere around the world. See e.g. U.S. Registration No.’s 4,589,497, 4,463,660 and 4,633,017. “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Nat. Arb. Forum Apr. 23, 2007)(“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
Twitter uses the V and VINE Logos to promote its VINE service (the “Vine Logos”):
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ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to the VINE trademark.
The disputed domain name incorporates the VINE mark in its entirety, adding only the letters “O” and “S” and the ccTLD .co. “OS” is a generic abbreviation for “operating system.” See Exhibit E.
Adding indistinctive letters/abbreviations to Complainant’s well-known VINE trademark is not sufficient to distinguish the disputed domain name. See e.g. Australia and New Zealand Banking Group Limited v. Tran, FA1005001323935 (Nat Arb. Forum June 21, 2010) (“The Panel finds that neither deleting a space nor adding two letters to the end of a mark does anything to distinguish a domain name from that mark”); Google Inc. v. Brito, FA0912001297484 (Nat. Arb. Forum Jan 25, 2010) (finding <googleos.info> confusingly similar to GOOGLE noting that, “the addition of two letters to Complainant’s mark is insufficient to adequately distinguish the disputed domain name from the mark and the addition of a gTLD is irrelevant to a Policy ¶4(a)(i) analysis”); and Google Inc. v. Thevarajah, FA0911001295342 (Nat. Arb. Forum Dec. 31, 2009) (finding <googleos.org> confusingly similar to GOOGLE); Yahoo! Inc. v. GuoJianguang, FA1404001556647 (Nat. Arb. Forum June 5, 2014) (finding <yahooos.com> confusingly similar to YAHOO!). Likewise, addition of .co fails to distinguish the domain name. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007)(noting that “the addition of a ccTLD is irrelevant to the Policy ¶4(a)(i) analysis, as a top-level domain is required of all domain names”). In fact since Complainant’s main web site for VINE also uses .co, this only makes confusion more likely.
Accordingly, Paragraph 4(a)(i) of the UDRP, requiring that the domain name at issue be "identical or confusingly similar to a trademark or service mark in which the complainant has rights" is satisfied.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain name; and Respondent has never been legitimately known as or referred to as VINE or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
WHOIS identifies Respondent as Kiribati Media / Kiribati 200 Media Limited. Respondent is not commonly known by Complainant’s VINE mark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s VINE mark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for the disputed domain displays looping videos from Complainant’s web site.
Respondent has previously promoted this site using a logo and site icon that imitate Complainant’s Vine Logos and color scheme:
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Respondent uses its competing video looping site to promote pop up ads, adult materials and links to third party web sites for commercial gain. Note that the landing page for these links promises to “monetize your traffic”. Furthermore, Respondent’s site generates malware warnings, both real and fake.
Respondent’s use of a domain name confusingly similar to VINE to offer competing looping video services is not a legitimate use. See Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (Nat. Arb. Forum June 7, 2012) (finding that “sell[ing] products and services in direct competition with those that Complainant offers” is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Florists' Transworld Delivery v. Malek, FA0604000676433 (Nat. Arb. Forum June 6, 2006) (finding no rights or legitimate interests where the disputed domain was “used in connection with a business that directly competes with Complainant’s business”); and Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, January 7, 2002)(finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website).
Furthermore, using a domain containing Complainant’s VINE trademark as a means to lure visitors to potentially malicious sites or to deliver malware is not a legitimate use. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sep 23, 2010)(“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); Dell v. tawnya grilth c/o dellpc.us, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011)(finding that use of the disputed domain name to offer downloads of software that contain malware is not a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv)); and Grappone TS, Inc. v. Zhu, FA 1424557 (Nat. Arb. Forum Feb. 29, 2012)(finding that use of a disputed domain name to host a website that contains viruses is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)).
Furthermore, using another’s trademark to promote adult materials is 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 names pursuant to Policy ¶4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (finding that “diversion to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶4(c)(i) and (iii).”); and Yahoo! Inc. v. Zuccarini, FA 183997 (Nat. Arb. Forum Oct. 20, 2003)(“Respondent's use of the disputed domain names to redirect Internet users to [adult] websites, where the names were selected specifically for the purpose of trading on the goodwill of Complainant's marks, cannot qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the names under the Policy”).
Finally, Respondent’s imitation of Complainant’s logos and trade dress is calculated and likely to mislead the public as to the source of Respondent’s site and constitutes passing off. This is not a fair, nominative or otherwise legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010)(“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is not 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)”); Microsoft Corp. and Skype v. M-Style / Morgun, FA1303001491620 (Nat. Arb. Forum May 10, 2013)(“Respondent’s decision to make heavy usage of the SKYPE mark in promoting its domain name’s web content illustrates neither a Policy ¶4(c)(i) bona fide offering of goods and services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use”); and Microsoft Corp. v. Lafont, FA1009001349611 (Nat. Arb. Forum Nov. 9, 2010)(finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶4(a)(ii)).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s VINE trademark was familiar to consumers worldwide. It is clear from the fact that Respondent’s site displays looping videos from Complainant’s site that Respondent was not only familiar with Complainant and Complainant’s VINE trademark at the time of registration of the domain name, but intentionally adopted a domain name incorporating this mark in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)(finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); and Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012)(“Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶4(a)(iii)”).
Furthermore, by using Complainant’s VINE trademark to attract and monetize traffic, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004)(“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)(finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); and Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007)(finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”).
Moreover, promoting competing looping video services using the VINE trademark diverts and disrupts Complainant’s business and falls under Policy ¶4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006)(use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶4(b)(iii)); Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011)(featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)); Nortel Networks Ltd. v. BuyMeBuyMe.com Inc., FA0604000671847 (Nat. Arb. Forum May 16, 2006)(deriving revenue from links to competitors is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)); and Fossil, Inc. v. Fong, FA 1116234 (Nat. Arb. Forum, January 10, 2007)(holding that respondent registered and used the domain name in bad faith by diverting computer users to a website featuring links to Complainant’s competitors).
Furthermore, Respondent is disrupting Complainant’s business by causing the public to associate Complainant with Respondent’s malware warnings and potentially malicious website. In fact, Respondent’s website’s strong association with Complainant’s VINE trademark provides an air of false legitimacy which may fool consumers into authorizing malware downloads. This is further evidence of bad faith use and registration under the Policy. See Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sept. 23, 2010)(finding bad faith registration and use of a contested domain name under Policy ¶4(b)(iv) where the domain name resolved to a website that distributed malware); Microsoft Corp. v. ABK et al., FA1211001473573 (Nat. Arb. Forum Jan 21, 2013)(“Respondent is also disrupting Complainant’s business by causing the public to associate Complainant’s [sic] with Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information”); Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004)(use of the disputed domain name for fraudulent purposes constituted bad faith); and Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006)(finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark).
Furthermore Respondent’s web site promotes adult content using Complainant’s VINE trademark, which is further evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Microsoft Corp. v. Private Registrant, FA1105001390487 (Nat. Arb. Forum June 20, 2011)(“the Panel finds that Respondent’s use of [<microsoftporn.com>] to redirect Internet users to a site offering adult oriented material constitutes bad faith registration and use under Policy ¶4(a)(iii)”); Amazon.com, Inc. v. Dauphin, FA0402000235822 (Nat. Arb. Forum April 5, 2004)(“Respondent registered and used the <adultamazon.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because the domain name takes advantage of the goodwill associated with Complainant’s mark and redirects unsuspecting Internet users to an adult-oriented website unaffiliated with Complainant”); Target Brand, Inc. v. Niazov and Targetporn JSC, FA0412000381229 (Nat. Arb. Forum Jan. 25, 2005)(“Respondent’s use of a domain name confusingly similar to Complainant’s famous mark to direct Internet users to a website featuring pornographic material is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(a)(iii)”); Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003)(finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name); and National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”).
Furthermore, by using a domain name confusingly similar to Complainant’s well-known VINE trademark along with similar logos and trade dress/color scheme, Respondent creates the false impression of a site and business that originates with or is sponsored by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA0609000809749 (Nat. Arb. Forum Nov. 13, 2006)(finding bad faith where the respondent’s web site gave the false impression of being affiliated with the complainant). See also MidFirst Bank v. Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); and Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001)(finding that respondent’s use of the disputed domain name misrepresent itself as a complainant supported a finding of bad faith).
Respondent’s landing page includes a fine print disclaimer of association with Complainant, but it can only be seen after scrolling through multiple screens. The disclaimer appears on page 9. This cannot cure Respondent’s deliberate efforts to confuse the public using Complainant’s VINE trademark. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000)(finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000)(finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); and Target Brands, Inc. v. Henderson, FA1109001408381 (Nat. Arb. Forum Oct 24, 2011)(“The Panel notices that Respondent has included a disclaimer on the resolving website. However the Panel determines that the disclaimer fails to mitigate a finding of bad faith or prove that Respondent registers and uses the <targetrewards.com> domain name in good faith under Policy ¶4(a)(iii)”).
Complainant contacted the registrant for the disputed domain on September 2, 2014. Shortly thereafter, the registrant initiated a registrar change or transfer, following which WHOIS was updated to the current registrant. Given the timing, this appears to be a sham transfer, or other attempt to frustrate the UDRP process, and this is further evidence of bad faith. See BOSU Fitness, LLC v. Kolombo Networks, FA0906001266587 (Nat. Arb. Forum July 22, 2009)(finding that switching WHOIS information in anticipation of a UDRP complaint “constitutes ‘cyberflying’ and is further evidence of bad faith registration and use under Policy ¶4(a)(iii)”). See also Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25, 2004) (respondent’s efforts to disguise its true identity is an example of bad faith conduct); and Marian Keyes v. Old Barn Studios Ltd., D2002-0687 (WIPO Sept. 23, 2002)(finding bad faith registration and use where “Respondent has tried to conceal the name of the true owner of the disputed domain name.”).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
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 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 owns the VINE mark through its registration with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 4,463,660, registered Jan. 7, 2014, filed August 26, 2012). Complainant uses the VINE mark in connection with its business, which provides software for creating, sharing, and positing video content. Complainant’s valid registration of the VINE mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶4(a)(i) dating back at least to the August 26, 2012 filing date with the USPTO. 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)); Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶4(a)(i) dates back to Complainant’s filing date.”).
Complainant claims the <vineos.co> domain name is confusingly similar to the VINE mark. The domain name incorporates Complainant’s mark in full, adds the letters “os” (which is a generic abbreviation for “operating system”), and adds the top level domain “.co” to the domain name. Simply adding two characters to an otherwise incorporated mark does not normally adequately distinguish the disputed domain name from the mark. See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”). There is nothing special about this case as compared to the “normal” case. The addition of a TLD, such as the country-code top-level domain “.co”, is ignored for the purposes of determining confusing similarity. See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD have a distinctive function”). The modifications to the VINE mark do not adequately distinguish the disputed domain name from the incorporated mark. The domain name is confusingly similar 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 has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor by Complainant’s VINE mark. The WHOIS information lists “Kiribati Media / Kiribati 200 Media Limited” as the registrant of record. There is no obvious connection between the registrant’s name and the domain name. Respondent is not licensed to use Complainant’s mark. Based upon this record, there is no evidentiary basis to find Respondent is commonly known by the disputed <vineos.co> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant claims Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website displaying competing video content, malware warnings, and links to third-party websites for commercial gain. Such a use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website); see also Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)). This is functionally equivalent to a landing page where the owner gets a click through fee whenever a visitor clicks on a link. Respondent’s disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶4(a)(ii).
Complainant claims Respondent’s website features adult-oriented material, which is further evidence that Respondent lacks legitimate interests in respect of the domain name. Generally speaking featuring adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Yahoo! Inc. v. Zuccarini, FA 183997 (Nat. Arb. Forum Oct. 20, 2003) (“Respondent's use of the disputed domain names to redirect Internet users to [adult-oriented] websites . . . cannot qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the names under the Policy.”).
Complainant claims Respondent’s disclaimer on its resolving website does little to prevent consumer confusion. The fine print disclaimer on page nine does not cure Respondent’s deliberate efforts to confuse the public using by using Complainant’s VINE mark and a similar logo. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”). Respondent’s use of a disclaimer does not cure Respondent’s demonstrated lack or rights under Policy ¶4(a)(ii),
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in bad faith registration and use of the <vineos.co> domain name pursuant to Policy ¶4(a)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business and therefore qualifies as bad faith under Policy ¶4(b)(iii). Respondent’s website is used to promote competing looping video services using the VINE trademark, which diverts and disrupts Complainant’s business. Competitive use of this nature constitutes bad faith registration and use under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent’s website features advertisements and third-party links, which demonstrate Respondent seeks to commercially benefit from the likelihood of confusion with Complainant’s mark. This conduct shows bad faith registration and use pursuant to Policy ¶4(b)(iv). Respondent’s offering of competing advertisements and third-party links, presumably for commercial gain, qualifies as bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”). Complainant claims that, by using a domain name confusingly similar to Complainant’s well-known mark along with similar logos, Respondent attempts to pass itself off as Complainant’s own site. “Passing off” activities indicate bad faith registration. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Based upon the evidence as a whole, Respondent has registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv).
Respondent is using the disputed domain name in connection with malware, further demonstrating Respondent’s bad faith. Complainant has included a screen grab of the resolving page featuring a malware warning. Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith).
Respondent’s website features adult-oriented material, which further illustrates Respondent’s bad faith registration and use under Policy ¶4(a)(iii). Past panels have agreed diverting Internet users to adult-oriented websites indicates bad faith registration and use. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). Respondent’s use of the disputed domain name to feature adult-oriented advertisements is further evidence of bad faith under Policy ¶4(a)(iii).
Respondent has placed a fine print disclaimer on its resolving website, but it can only be seen after scrolling through nine pages. The disclaimer buried that far into the “small print” is not effective, except as an admission of liability under Policy ¶4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶4(a)(iii)”).
Respondent registered the disputed domain name with full knowledge of Complainant’s rights to the VINE mark, which establishes bad faith registration and use under Policy ¶4(a)(iii). When Respondent registered the disputed domain name, Complainant’s VINE trademark was familiar to consumers worldwide. Respondent has promoted the resolving page using a logo and site icon that imitate Complainant’s logo and color scheme. The “hidden” disclaimer strongly suggests Respondent had actual knowledge of the mark and Complainant's rights. It appears clear Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Finally, Respondent changed the domain name’s registrar upon receipt of a demand letter. This constitutes cyberflight. It creates the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption.
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 <vineos.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 19, 2015
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