national arbitration forum

 

DECISION

 

Vancouver Film School Limited v. Telecom Tech Corp. c/o Administrator Administrator

Claim Number: FA0805001195919

 

PARTIES

Complainant is Vancouver Film School Limited (“Complainant”), represented by Robert J.C. Deane, of Borden Ladner Gervais LLP, BC, Canada.  Respondent is Telecom Tech Corp. c/o Administrator Administrator (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwvfs.com>, registered with Name.com LLC.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2008.

 

On May 30, 2008, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <wwwvfs.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name.  Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 June 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 26, 2008
 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@wwwvfs.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wwwvfs.com> domain name is confusingly similar to Complainant’s VFS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wwwvfs.com> domain name.

 

3.      Respondent registered and used the <wwwvfs.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Vancouver Film School, incorporated on July 14, 1987, is an internationally known school offering instruction in film, acting, writing, animation, and interactive media to a total of 15,000 local and international students since its incorporation.  Complainant has offices in India, Pakistan, Korea, Taiwan, Mexico, and the Middle East.  Complainant has used the VFS mark (Canadian Reg. No. TMA709319, registered March 12, 2008) since 1987 and registered the <www.vfs.com> domain name on August 11, 1994.  Complainant spends approximately $2,000,000 (CDN) each year on marketing staff and advertising.  In addition, Complainant’s VFS mark has been recognized by the media through news coverage and through its participation in a number of international film festivals each year under the names Vancouver Film School and VFS.

 

Respondent registered the <wwwvfs.com> domain name on April 4, 2007.  The disputed domain name resolves to a website that displays hyperlinks to several third-party websites, some of which are in direct competition with Complainant, as well as Complainant’s website.  In addition, Respondent has made an offer of sale for the disputed domain name for a minimum asking price of $150.00.

 

DISCUSSION

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Although the <wwwvfs.com> domain name was registered before Complainant’s VFS mark, the Panel finds that Complainant sufficiently established common law rights in its mark pursuant to Policy ¶ 4(a)(i) through secondary meaning.  Complainant has widely used the VFS mark in commerce to offer its goods and services since 1987, has gained brand-name recognition of its VFS mark and name through the media, and has instructed over 15,000 students using the VFS mark and name.  In addition, Complainant registered the <www.vfs.com> domain name on August 11, 1994.  As a result, the Panel finds that Complainant has established rights in the mark under the Policy.  See Mgmt. Plus Enters. v. MPE Tech. Servs., FA 192746 (Nat. Arb. Forum Oct. 27, 2003) (“Complainant has established rights in the MPE mark through widespread use of the mark in commerce, in addition to its longstanding use of the <mpe.com> domain name prior to this dispute.”); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).

 

Moreover, the Panel finds that the <wwwvfs.com> domain name is confusingly similar to Complainant’s VFS mark under Policy ¶ 4(a)(i) because it contains Complainant’s entire mark.  The inclusion of the generic top-level domain (“gTLD”) “.com” or the prefix “www” does not distinguish the disputed domain name from Complainant’s mark for the purposes of confusing similarity under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the <wwwvfs.com> domain name.  Once this prima facie case is established, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the dispute domain name.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).

 

Respondent uses the <wwwvfs.com> domain name to display hyperlinks to several third-party websites, some of which are in direct competition with Complainant, as well as Complainant’s own website.  The Panel infers that Respondent earns click-through fees, which accordingly is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. 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); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).

 

In addition, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <wwwvfs.com> domain name under Policy ¶ 4(c)(ii) and there is no additional information in the record to indicate otherwise.  Furthermore, Complainant asserts that Respondent is not authorized to use the VFS mark.  See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Moreover, Respondent has offered the <wwwvfs.com> domain name for sale for a minimum asking price of $150.00.  This offer of sale for the disputed domain name by Respondent is evidence that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii).  See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). 

 

Finally, the <wwwvfs.com> domain name takes advantage of a common typing error by Internet users, which is generally known as “typosquatting.”  Therefore, the use of this typosquatted domain name does not establish rights or legitimate interests under Policy ¶ 4(a)(ii) in the disputed domain name.  See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Based on the uncontested evidence presented by Complainant, the Panel finds that Respondent receives click-through fees from the hyperlinks that are displayed on the website that resolves from the <wwwvfs.com> domain name.  In addition, the Panel finds that the disputed domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name.  Accordingly, the Panel finds that Respondent registered and used the <wwwvfs.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. 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.”).

 

Furthermore, the Panel finds that Respondent is using the disputed domain name to redirect Internet users to Respondent’s website that displays hyperlinks to several third-party websites, some of which are in direct competition with Complainant, as well as Complainant’s own website.  This disruption of Complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).

 

 

Finally, the Panel finds that the disputed domain name is a typosquatted version of Complainant’s mark meant to divert Internet users and thus, is evidence of bad faith under Policy ¶ 4(a)(iii).  See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”). 

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwvfs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  July 11, 2008

 

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