Vodex Communications v. WEB MASTER
Claim Number: FA1511001646577
Complainant is Vodex Communications (“Complainant”), California, USA. Respondent is WEB MASTER (“Respondent”), represented by Craig Taro Gold DeRousse of Vodex Voice Recognition, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vodex.com> (the “Disputed Domain Name”), registered with eNom, Inc.
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.
Michael Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2015; the Forum received payment on November 11, 2015.
On November 11, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <vodex.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 November 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@vodex.com. Also on November 16, 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.
A timely Response was received and determined to be complete on December 6, 2015.
Complainant’s Additional Submission was received and determined to be compliant on December 10, 2015.
Respondent’s Additional Submission was received and determined to be compliant on December 10, 2015.
On December 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complaint alleges that the Disputed Domain Name is identical to Complainant’s trademark VODEX, for which it has a United States Trademark Registration; that confusion has resulted between the parties as a result of Respondent’s usage; that Respondent has no legitimate interests because he has no business called “vodex” and has not responded to communications; and that Respondent is using the Domain Name to conduct business as Vodex in bad faith.
B. Respondent
Respondent alleges that the Complainant makes several false statements. He alleges that, since 1999, he has used the name Vodex for a voice recognition software technology that he developed; that his company was acquired by AOL in 2001, but that he retained rights to the name Vodex; that he used Vodex again in 2004 at a new company he co-founded called Teleo; that after Teleo was acquired by Microsoft, he retained the rights to the Vodex name and technology; and that he is currently using his Vodex voice recognition technology as a consultant to Nuance, a leading voice recognition software company.
Respondent further notes that Complainant obtained his federal trademark registration in November 2015, shortly before filing the Complaint herein, and solely for the purpose of doing so.
The Panel finds that Complainant registered the VODEX mark in 2015, claiming a date of first use in 2009. Respondent had been using Vodex for a domain name, and apparently in connection with software products and services, since 1999. While the parties heatedly dispute the facts surrounding Respondent’s alleged usage of Vodex as the name of a software product (accusing each other of fabrication of evidence), the operative fact remains that Respondent’s domain name registration dates back to 1999 while Complainant fails to show rights pre-dating 2009. Accordingly, Respondent cannot have registered and used the Domain Name in bad faith, since Complainant’s rights did not arise until a decade after Respondent’s domain-name registration.
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.
Complainant claims that its rights in the VODEX mark stem from registration of the mark
with the USPTO (Reg. No. 4,851,173, registered November 10, 2015). Panels routinely
find that a complainant has rights in a mark based on registration of the mark with
the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1,
2005) (concluding that the complainant had established rights in the PAISLEY PARK
mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Accordingly, the Panel finds that Complainant has rights in the VODEX mark.
Respondent’s disputed domain name is identical to the VODEX mark, adding only the generic top-level domain “.com.” Presence of the generic top-level domain “.com” is not relevant when conducting an analysis of confusing similarity. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Respondent’s <vodex.com> domain name is thus identical to the VODEX mark.
In 1999 – long before any notice regarding this dispute, and indeed a decade before Complainant began doing business using the VODEX mark, and 16 years before Complainant obtained its trademark registration – Respondent registered the Disputed Domain Name and apparently began using it in connection with voice recognition software.
That alone suffices to establish Respondent’s rights and legitimate interests in the Disputed Domain Name. See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”).
Respondent also alleges extensive use of Vodex as a product name. Complainant disputes the accuracy of the evidence supporting that allegation. For the above reasons, however, this dispute is immaterial and need not be resolved here.
Given the finding above on Rights and Legitimate Interests, the Panel need not reach the issue of bad-faith in order to resolve the Complaint. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Nevertheless, to resolve the Reverse Domain- Name Hijacking claim, it is helpful to briefly address the issue of bad-faith.
As detailed above, Respondent registered the domain name in 1999, a full 10
years before the Complainant began a company using the same name in a different, non-competing field. Respondent has used the domain name since 1999. While he has entertained some offers to sell (including one by Complainant), there is no evidence that he registered the domain name for the purpose of selling it. In any event, he plainly could not have registered the Domain Name for the purpose of selling it to the Complainant, because as of 1999, Complainant had not yet applied to register the mark nor begun using it.
Nor is there evidence that Respondent ever sought to disrupt the Complainant's business, or to cause any confusion. He does not compete with the Complainant and no evidence suggests he has engaged in improper or disruptive conduct with the Disputed Domain Name.
Accordingly, Complainant has failed to prove bad faith.
Respondent alleges that Complainant has engaged in reverse domain-name hijacking by initiating this dispute, attempting to deprive Respondent, the rightful, registered holder of the <vodex.com> domain name, of its rights to use the disputed domain name.
Respondent has been using the domain name since 1999. Complainant began using the VODEX mark a decade later, and obtained a federal registration for the mark six years after that – immediately before filing this Complaint.
Plainly, Complainant knew or should have known that it was unable to prove that Respondent lacked rights or legitimate interests in the <vodex.com> domain name, let alone that Respondent had registered and was using the Disputed Domain Name in bad faith. Accordingly, the Panel finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v.Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002); Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Complainant having failed to establish two of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vodex.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: January 12, 2016
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