Vilocity
Interactive Inc. v. MDM International
Claim Number: FA0108000099654
PARTIES
The Complainant is Vilocity Interactive, Inc., Cleveland, OH (“Complainant”) represented by Don Bulson, of Renner, Otto, Boisselle & Sklar LLP. The Respondent is Manual Diaz-Marta dba MDM International, Dallas, TX (“Respondent”) represented by Zak A. Muscovitch of Neinstein & Associates.
The domain name at issue is <vilocity.net>, registered with Intercosmos Media Group, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 31, 2001; the Forum received a hard copy of the Complaint on September 4, 2001.
On September 10, 2001, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <vilocity.net> is registered with Intercosmos Media Group, Inc. and that the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@vilocity.net by e-mail.
A timely response was received and determined to be complete on October 1, 2001.
An Additional Submission was received timely on October 8, 2001.
On
October 16, 2001, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum
appointed Bruce E. Meyerson as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of a registered trademark for “Vilocity,” a mark registered in August 2000 and first used by Complainant in October 1997. Complainant uses the mark in connection with its business which it describes as addressing “new-age marketing challenges” such as “advanced websites, interactive CD-ROMs, Internet services, online public relations, product development” and other projects. Complainant contends that Respondent’s use of the domain name <vilocity.net> is confusingly similar to its trademark and that Respondent is not making a legitimate use of the domain name because it is using it for hosting and designing adult web sites.
B. Respondent
Respondent’s business is the operation of web hosting services for adult web sites. Respondent asserts that it is not engaged in any of the activities in which the Complainant is engaged. Respondent registered the domain name <velocity.net> in July 1999 before Complainant applied for its trademark registration. Respondent states that there is no evidence that Complainant’s mark is sufficiently distinctive such that it acquired common law protection prior to the registration of Respondent’s domain name. Respondent states there is little likelihood of confusion with Complainant’s business as Complainant does not operate a web hosting business at all.
C. Additional Submissions
Complaint submitted an Additional Submission wherein it stated that Respondent does in fact provide web design services and other services that are “sufficiently related” to Complainant’s services.
FINDINGS
Complainant is the owner of a registered trademark for “Vilocity,” a mark registered in August 2000 and first used by Complainant in October 1997. Complainant uses the mark in connection with its marketing, consulting and public relations services that include the creation of web sites for others. Respondent’s business is the operation of web hosting services for adult web sites. The record does not reflect, however, that Respondent is engaging in any substantial way in the business activities engaged in by Complainant. Respondent registered the domain name <velocity.net> in July 1999 before Complainant applied for its trademark registration. The record does not establish that Complainant’s mark is sufficiently distinctive such that it acquired common law protection prior to the registration of its mark. There is little likelihood that Respondent’s activities will cause confusion with Complainant’s business as Complainant does not operate a web hosting business and Respondent’s activities are not materially similar to the business activities of Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Because Complainant has failed to establish that Respondent has registered the disputed domain name in bad faith, it is only necessary to address that element.
Registration and
Use in Bad Faith
Based upon the record, Complainant has not established that Respondent knew of Complaint’s use of the mark before Respondent registered its domain name. Plain Express Inc. v. Plan Express, D2000-0565 (WIPO July 17, 2000). Moreover, Complainant has not demonstrated that “Vilocity” is so distinctive and associated with Complainant that consumers are likely to confuse Complainant’s professional service business with Respondent’s business of hosting adult web sites. Indeed, it cannot fairly be said that Respondent provides the same services as Complainant and thus on this record, Complainant has not established a likelihood of confusion between each party’s business activities. See Goldline International, Inc. v. Gold Line, D2000-1151 (Jan. 4, 2001). Because the record does not support Complainant’s contention that there is a likelihood of confusion with Respondent’s web site, the fact that the web site contains adult material is not evidence of bad faith. Cf. AltaVisa Co. v. West Coast Entertainment, Inc., FA 95265 (Nat Arb. Forum Aug. 29, 2000).
DECISION
In accordance with the foregoing, Complaint’s request that the domain name be transferred to it is denied.
Bruce E. Meyerson, Panelist
Dated: November 2, 2001
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