Vail Trademarks, Inc. v. Eric Hernandez / Vail Associates Inc.
Claim Number: FA1505001621320
Complainant is Vail Trademarks, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre Baker Daniels, LLP, Minnesota, USA. Respondent is Eric Hernandez / Vail Associates Inc (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vailresort.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR); PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2015; the Forum received payment on May 28, 2015.
On June 4, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR); PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <vailresort.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR); PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR); PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR); PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@vailresort.org. Also on June 5, 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 July 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 contends:
1. Policy ¶ 4(a)(i)
a. Complainant has established rights in both the VAIL and VAIL RESORTS marks through registration of the marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,521,276, registered January 17, 1989) (Reg. No. 2,695,373, registered March 11, 2003), respectively.
b. Respondent’s disputed <vailresort.org> domain name is confusingly similar to Complainant’s VAIL and VAIL RESORTS marks. The disputed domain name merely deletes the “s” from VAIL RESORTS and adds the generic top-level domain name (“gTLD”) “.org”. These differences do not alleviate the confusing similarity between the marks and the disputed domain name.
2. Policy ¶ 4(a)(ii)
a. Respondent has no trademark or intellectual property rights in the disputed domain name and has never been a licensee of Complainant.
b. Respondent’s domain name resolving to an illegitimate website that replicates Complainant’s legitimate website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Policy ¶ 4(a)(iii)
a. Respondent’s attempt to pass itself off as Complainant demonstrates Respondent’s bad faith.
b. Respondent had actual knowledge of Complainant’s VAIL and VAIL RESORT marks at the time Respondent registered the disputed <vailresort.org> domain name.
B. Respondent contends:
1. The Respondent has failed to submit a response in this proceeding.
1. Respondent’s <vailresort.org> domain name is confusingly similar to Complainant’s VAIL and VAIL RESORTS marks.
2. Respondent does not have any rights or legitimate interests in the <vailresort.org> domain name.
3. Respondent registered or used the <vailresort.org> domain name 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.
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 claims to have rights in both the VAIL and VAIL RESORTS marks through registration of the marks with USPTO (Reg. No. 1,521,276, registered January 17, 1989) (Reg. No. 2,695,373, registered March 11, 2003), respectively. It is uncontroversial that registration of marks with the USPTO is sufficient to demonstrate a Complainant’s rights in marks. See Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that the complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel accordingly finds that Complainant has demonstrated its rights in the VAIL and VAIL RESORTS mark per Policy ¶ 4(a)(i).
Complainant further claims that Respondent’s disputed <vailresort.org> is confusingly similar to Complainant’s VAIL and VAIL RESORTS marks. The Panel notes that Respondent’s disputed domain name merely deletes the “s” from VAIL RESORTS and adds the gTLD “.org”. In decisions that closely mirror the circumstances of the instant case, Panels have found that addition of gTLDs and deletion of the letter “s” does not affect a finding of confusing similarity. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s VAIL and VAIL RESORTS marks.
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); 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 argues that Respondent has no trademark or intellectual property rights in the disputed domain name and has never been a licensee of Complainant indicating a lack of rights or legitimate in the disputed domain name. Although WHOIS information indicates that Respondent’s organization is “Vail Associates Inc.”, which resembles the disputed domain name to an extent, panels have found that a respondent is not always commonly known by the disputed domain name in the face of similar domain resemblance. See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”). Based on Respondent’s failure to respond, lack of association with Complainant, and a lack of rights in Complainant’s marks, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s domain name resolving to an illegitimate website that replicates Complainant’s legitimate website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Indeed, Respondent’s disputed <vailresort.org> domain name appears to resolve to a website that is virtually identical to Complainant’s legitimate <vailresorts.com> domain name. See Complainant’s Att. App. C and E. Panels have found that a respondent’s attempt to pass itself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel finds that Respondent’s passing off behavior is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) 4(c)(iii).
Complainant argues that Respondent uses the confusingly similar domain name and its likeness in appearance for its own commercial gain. The Panel recalls that Respondent’s disputed <vailresort.org> domain name appears to resolve to a website that is virtually identical to Complainant’s legitimate <vailresorts.com> domain name. Complainant believes that such behavior indicates bad faith under Policy ¶ 4(b)(iv). Previous panels have agreed with this argument. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the VAIL and VAIL RESORTS marks. Complainant argues that Respondent's domain name resolving to a website identical to Complainant’s legitimate website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vailresort.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 15, 2015
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