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Vail Trademarks, Inc., Vail Resorts, Inc., and The Vail Corporation dba Vail Associates Inc. v. Vail Associates
Claim Number: FA1611001702651
Complainants are Vail Trademarks, Inc.; Vail Resorts, Inc.; and The Vail Corporation dba Vail Associates Inc. (collectively “Complainant”), represented by Syed M. Abedi of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Vail Associates (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vailassociates.org>, registered with Wild West Domains, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2016; the Forum received payment on November 11, 2016.
On November 14, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <vailassociates.org> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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@vailassociates.org. Also on November 14, 2016, 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 December 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Preliminary Issue: Multiple Complainants
In this proceeding there are three Complainants. The FORUM’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (FORUM May 12, 2006); see also In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (FORUM Dec. 28, 2003).
The three Complainants in this matter are: Vail Trademarks, Inc.; Vail Resorts, Inc.; and The Vail Corporation dba Vail Associates Inc. The record shows that The Vail Corporation dba Vail Associates Inc. is a subsidiary of Vail Resorts, Inc., and that both Vail Resorts, Inc. and Vail Trademarks, Inc. collectively own exclusive rights to the VAIL mark in the United States among other various countries.
Accordingly, the Panel concludes that the three Complainants have satisfied the requirements of the FORUM’s Supplemental Rule 1(e) and the three complaining parties will be referred to herein collectively as “Complainant.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1) Complainant has rights in the VAIL mark based on its valid registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,521,276, registered Jan. 17, 1989). Respondent’s <vailassociates.org> domain name is confusingly similar to Complainant’s VAIL mark because it incorporates the entire VAIL mark while merely adding the generic term “associates” and a generic top-level domain (“gTLD”).
2) Respondent has no rights or legitimate interests in the domain name. Complainant has not granted Respondent any sort of permission to use its VAIL mark, and Respondent is not commonly known as <vailassociates.org>.
3) Respondent has utilized the domain name to resolve to a parked page hosting unrelated links at the domain name, and has used the domain name as an email suffix (<purchasing@vailassociates.org>) for phishing activities and to perpetuate a fraudulent scheme. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii).
4) Respondent registered and has used the domain name in bad faith. Respondent presumably receives revenue from the personal information it fraudulently solicits from unsuspecting Internet users, and is commercially gaining by the confusion as to the source, sponsorship, affiliation, or endorsement of <vailassociates.org>. Further, Respondent has used the domain name to send phishing emails from where it attempts to pass itself off as an employee of Complainant to request purchase orders, which have resulted in shipment and subsequent billing to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.[1]
Complainant holds trademark rights for the VAIL mark. Respondent’s domain name is confusingly similar to Complainant’s VAIL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <vailassociates.org> domain name and that Respondent registered and uses the 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(f), 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 (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 VAIL mark based on its registration with the USPTO (Reg. No. 1,521,276, registered Jan. 17, 1989). Such registration confers rights in the mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (FORUM Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . “).
Complainant contends that Respondent’s <vailassociates.org> domain name is confusingly similar to its VAIL mark. Respondent has merely added the generic term “associates” and a gTLD to Complainant’s fully incorporated VAIL mark. Complainant has shown that “associates” is a descriptive term of Complainant’s subsidiary that does business as “Vail Associates Inc.” Adding a descriptive term to a complainant’s mark in a domain name does not alleviate confusing similarity. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (FORUM Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <vailassociates.org> domain name is confusingly similar to Complainant’s VAIL mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <vailassociates.org> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant states that Respondent has registered and is using the <vailassociates.org> domain name in bad faith. Complainant argues that Respondent is purportedly attempting to pass itself off as Complainant in a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). Complainant further argues that Respondent has attempted to pass itself off as Complainant through a series of fraudulent emails. The evidence supports Complainant’s assertions. It is reasonable to presume that Respondent is commercially gaining from the Internet users’ personal information it gathers with the email, and that this creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Thus, the Panel finds Respondent has acted in bad faith under Policy ¶ 4(b)(iv) or 4(a)(iii). See Am. Univ. v. Cook, FA 208629 (FORUM Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Smiths Group plc v. Snooks, FA 1372112 (FORUM Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Complainant argues that Respondent is using the <vailassociates.org> domain name as part of a phishing scheme. Complainant claims that Respondent’s is using the domain name for its email suffix and has attempted to steal mistaken Internet users private information through fraudulent purchase orders. Phishing as “a practice that is intended to defraud consumers into revealing personal and proprietary information.” Capital One Fin. Corp. v. Howel, FA 289304 (FORUM Aug. 11, 2004). A respondent acts in bad faith when its domain name is used to send phishing emails. See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (FORUM July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Thus, the Panel holds that Respondent’s use of the <vailassociates.org> domain name is in violation of Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vailassociates.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 14, 2016
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