Vita-Mix Management Corporation v. OOO "WG-STAHL"
Claim Number: FA1704001725713
Complainant is Vita-Mix Management Corporation (“Complainant”), represented by Matthew J. Cavanagh of McDonald Hopkins LLC, Ohio, United States. Respondent is OOO "WG-STAHL" (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vitamix-russia.com>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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 April 6, 2017; the Forum received payment on April 12, 2017. The Complaint was received in English only.
On April 10, 2017, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <vitamix-russia.com> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 April 19, 2017, the Forum served the English language Complaint and all Annexes, including an English and Russian Written Notice of the Complaint, setting a deadline of May 9, 2017 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@vitamix-russia.com. Also on April 19, 2017, the English and Russian 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 May 17, 2017, pursuant to Complainant's request to have the dispute decided by a three-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
1. Complainant registered the VITAMIX (e.g., Reg. No. 3,914,988, registered Feb. 1, 2011) and VITA-MIX (e.g., Reg. No. 2,021,896 registered Dec. 10, 1996) marks with the United States Patent and Trademark Office
(“USPTO”). See Compl., at Attached Annex A. Respondent’s <vitamix-russia.com> domain name is confusingly similar because it fully incorporates the VITAMIX mark and adds a hyphen, the country name “russia,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <vitamix-russia.com> domain name. Respondent is not and has not been commonly known by the VITAMIX mark, nor does Complainant sponsor Respondent. Respondent is not legitimately affiliated with Complainant in any way, nor does Complainant give Respondent permission to use the mark for any purpose. Further, Complainant had previously authorized Respondent to distribute Complainant’s product, however that agreement was terminated by letter on January 16, 2015. See Compl., at Attached Annexes I & J. Respondent also does not use the disputed domain for any bona fide offering of goods or services because Respondent, by creating a confusingly similar domain name and trading off on Complainant’s notoriety, uses the disputed domain name to host a website that offers blenders that compete with Complainant’s products. See Compl., at Attached Annexes C, D, & F.
3. Respondent registered and uses the <vitamix-russia.com> in bad faith. Respondent uses the VITAMIX mark in the disputed domain name to commercially benefit by diverting customers looking for Complainant’s blenders to Respondent’s website that sells competing blenders. See Compl., at Attached Annexes C, D, & F. Further, Respondent must have had actual or constructive knowledge of Complainant’s VITAMIX mark because Complainant previously authorized Respondent to distribute its product until Complainant terminated the non-exclusive distribution agreement on January 16, 2015. See Compl., at Attached Annexes I & J.
B. Respondent
1. Respondent did not submit a Response in this Proceeding.
Preliminary Issue: Required Language of Complaint
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. Under UDRP Rule 11(a), the Panel has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent can read, write, and understand English because Complainant and Respondent previously entered into an agreement which was written in English. See Compl., at Attached Annex I. The agreement, signed by both Respondent and Complainant, explicitly stated “[t]he official language of this Agreement shall be the English language,” and that all notices between the parties to the contract “shall be in writing in English.” Id. Accordingly, the Panel determines that English is the appropriate language for these proceedings.
1. Respondent’s <vitamix-russia.com> domain name is confusingly similar to Complainant’s VITAMIX and VITA-MIX marks.
2. Respondent does not have any rights or legitimate interests in the <vitamix-russia.com> domain name.
3. Respondent registered or used the <vitamix-russia.com> 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 engages in the business of selling electronic food processors and electric food blenders. Complainant and its predecessors have operated continuously in connection with blenders and other goods since at least 1937. Complainant claims it registered the VITAMIX (e.g., Reg. No. 3,914,988, registered Feb. 1, 2011) and VITA-MIX (e.g., Reg. No. 2,021,896 registered Dec. 10, 1996) marks with the USPTO. See Compl., at Attached Annex A. Registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel sees that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <vitamix-russia.com> domain name is confusingly similar because it includes Complainant’s entire mark and adds punctuation, a geographic term, and a gTLD. Adding punctuation and geographic terms to a mark fails to sufficiently distinguish domain names from marks. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Similarly, Panels have held that adding a gTLD is irrelevant to a confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Here, Respondent’s <vitamix-russia.com> domain name is confusingly similar because it fully incorporates the VITAMIX mark and adds a hyphen, the country name “russia,” and the gTLD “.com.” Therefore, the Panel agrees that Respondent has not included elements in the domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
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 (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 (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 rights or legitimate interests in the <vitamix-russia.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “OOO “WG-STAHL”” as the registrant. See Compl., at Attached Annex E. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the VITAMIX mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Further, Complainant alleges that it had previously authorized Respondent to distribute Complainant’s product, however that agreement was terminated by letter on January 16, 2015. See Compl., at Attached Annexes I & J. Accordingly, the Panel agrees that Respondent is not commonly known by <vitamix-russia.com> under Policy ¶ 4(c)(ii).
Complainant next argues that the disputed domain name resolves in a website that offers products in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Complainant claims that Respondent, by creating a confusingly similar domain name and trading off on Complainant’s notoriety, uses the disputed domain name to host a website that offers products that directly compete with those of Complainant. See Compl., at Attached Annexes C, D, & F. The Panel agrees that this conduct fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant argues that Respondent registered and is using the <vitamix-russia.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods. Commercially benefiting via initial interest confusion and selling competing products can evince bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant alleges that Respondent uses the VITAMIX mark in the disputed domain name to attract users seeking Complainant’s products, and instead offers competing products on the resolving webpage, disrupting Complainant’s business. See Compl., at Attached Annexes C, D, & F. The Panel agrees that Respondent uses the disputed domain name to disrupt Complain-
ant’s business and commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, the Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Int’l Soc’y for Cellular Therapy v. L. Hache, FA 671078 (Forum June 13, 2006) (“In view of Respondent’s creation of the original <celltherapy.org> website and its management of the website on behalf of Complainant for several years, Respondent knew of the Complainant’s use of the domain name. This Panel therefore finds that Respondent acted in bad faith in registering the <celltherapy.org> domain name.”). Complainant contends that Respondent must have had actual knowledge of the VITAMIX mark because Complainant previously authorized Respondent to distribute its product until Complainant terminated the non-exclusive distribution agreement on January 16, 2015. See Compl., at Attached Annexes I & J. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 <vitamix-russia.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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