Vivint, Inc. v. Hector Montoya / SMART TECH COMMUNICATIONS
Claim Number: FA1502001606059
Complainant is Vivint, Inc. (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Hector Montoya / SMART TECH COMMUNICATIONS (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myvivint.net>, registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 20, 2015; the Forum received payment on February 20, 2015.
On February 23, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <myvivint.net> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@myvivint.net. Also on February 23, 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 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant has used the VIVINT service mark in connection with the marketing of its home automation and security system products and services since 2011.
Complainant holds a registration for the VIVINT mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 4,166,498, registered July 3, 2012).
Respondent registered the <myvivint.net> domain name on February 11, 2015.
The domain name is confusingly similar to Complainant’s VIVINT mark.
Respondent has not been commonly known by the domain name or any variation of the VIVINT mark.
Complainant has never given Respondent authorization to register a domain name which incorporates the VIVINT mark.
Respondent is not making a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
The domain name resolves to a parked page that features no content other than a generic website template.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complaint’s business.
Respondent knew of Complainant and its rights in the VIVINT mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 VIVINT service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <myvivint.net> domain name is confusingly similar to Complainant’s VIVINT service mark. The domain name contains the mark in its entirety, merely adding the generic term “my” and the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005):
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding, under Policy ¶ 4(a)(i), that because a contested domain name incorporated a UDRP complainant’s VIAGRA mark in its entirety, and deviated only by the addition of the generic word “bomb,” the domain name was confusingly similar to that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <myvivint.net> domain name, and that Complainant has never given Respondent authorization to register a domain name which incorporates the VIVINT mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Hector Montoya / SMART TECH COMMUNICATIONS,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by the domain name, and where a UDRP complainant asserted that it did not license or otherwise authorize that respondent’s use of its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that the Respondent is not making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through its use of the disputed domain name. Complainant contends that the <myvivint.net> domain name disputed domain name resolves to a parked page that features no content other than a generic website template. This inactive holding of the domain name is 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The Complaint does not cite any considerations falling squarely within the parameters of Policy ¶ 4(b), which enumerates behaviors that may be deemed to demonstrate bad faith in the registration or use of a domain name. However, the provisions of Policy ¶ 4(b) are not exhaustive of the factors a panel may take into account in assessing the question of bad faith on the part of Respondent. We may therefore examine the totality of the circumstances presented in the Complaint in weighing this question. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (finding that Policy ¶ 4(b) sets out a list circumstances, which, without limitation, may be taken as evidence of registration and use of a domain name in bad faith).
In light of this, we first consider Complainant’s assertion, which is uncontested by Respondent, that, from the time of its creation on February 11, 2015, the <myvivint.net> domain name has resolved to a generic web page that features no content other than a generic website template. In the circumstances presented in the Complaint, this failure to put the domain name to active use may be accepted as evidence of Respondent’s bad faith in the registration and use of the domain name. See Morgan Stanley v. Guerilla Freedom Fighter c/o Bethesda Properties LLC, FA 1061232 (Nat. Arb. Forum Oct. 2, 2007), in which a panel found that:
Respondent’s failure to use the … 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 ¶ 4(a)(iii).
We are also persuaded by the evidence that Respondent knew of Complainant and its rights in the VIVINT service mark when it registered the <myvivint.net> domain name. This too is proof of Respondent’s bad faith in registering the domain name. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (finding that where the prevailing circumstances indicate that a respondent knew of a UDRP complainant's mark when it registered a confusingly similar domain name, a panel can find bad faith). See also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of the complainant's … mark at the time of [its domain name] registration").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <myvivint.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 25, 2015
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