Complainant is Media Ad Infinitum, naamloze vennootschap (N.V.) of Vilvoorde, Belgium, represented by Gevers & Associates, Belgium.
Respondent is hundred.net of Seoul, Republic of Korea.
The disputed domain name <vitaya.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (“OnlineNic”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2010. On March 16, 2010, the Center transmitted by email to OnlineNic a request for registrar verification in connection with the Domain Name. On March 18, 2010, OnlineNic transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On March 18, 2010, the Center noted in an email to OnlineNic that the Domain Name was set to expire on March 26, 2010. In accordance with Paragraph 18.104.22.168 of the ICANN Expired Domain Deletion Policy, if the domain name that is the subject of a UDRP dispute expires during the course of the dispute, the complainant will have the option to renew or restore the disputed domain name under the same commercial terms as the registrant. On March 22, 2010, OnlineNic confirmed that (1) the Domain Name had been placed under Registrar LOCK status and would remain in such status until this UDRP proceeding concludes and (2) the parties in the UDRP proceeding needed to take action to keep the Domain Name under Registrar LOCK. On March 22, 2010, the Center urged either party to arrange payment of any renewal fees that may be required to ensure that the Domain Name remain active during the UDRP proceeding. On March 23, 2010, OnlineNic confirmed that the Domain Name had been put on Registrar LOCK status and that it would remain active during the UDRP proceeding. On March 23, 2010, Complainant confirmed that it would pay the renewal fee.
On March 22, 2010, Respondent replied, in English, to an email from the Center (1) stating that it owned the Domain Name and (2) asking that the Complaint be sent in Korean because of Respondent's lack of familiarity with English. On March 23, 2010, the Center replied to Respondent, Complainant, and OnlineNic, and explained that the language of the UDRP proceeding shall be the language of the registration agreement. Because OnlineNic confirmed that the registration agreement for the Domain Name is in English, all communications would therefore also be in English.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced, on March 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 12, 2010.
The Center sent Written Notice to Respondent by international courier and Notification of Complaint and the Complaint with annexes by email to the addresses indicated in the Domain Name registration. Respondent replied to one of the emails sent to his hanafos.com email address. The Notice sent to Respondent's physical address was returned as undeliverable, but it is Respondent's responsibility to ensure that the address in the Domain Name registration is correct. The Center properly notified the Complaint to Respondent by sending Written Notice to the addresses indicated in paragraph 2(a)(i) and 2(a)(ii) of the Rules. Moreover, Respondent's reply to one of the Center's emails confirm that Respondent received that email, and support an inference that Respondent received the other emails as well.
The Center appointed Grant L. Kim as the sole panelist in this matter on April 20, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a television broadcasting company based in Belgium. Complainant operates a television channel and publishes a magazine under the mark VITAYA. Complainant owns several trademark registrations consisting of or incorporating the word “vitaya”, including Community Trademark Registration Nos. 1158096 (filed on April 30, 1999; registered on September 5, 2000), 3696929 (filed on March 4, 2004; registered on September 7, 2005), 5530357 (filed on December 7, 2006), 5781315 (filed on March 23, 2007; registered on March 31, 2008), 5781257 (filed on March 23, 2007; registered on March 31, 2008), 7341696 (filed on October 24, 2008; registered on May 27, 2009), 7341746 (filed on October 24, 2008; registered on July 29, 2009) and Benelux Trademark Registration Nos. 937388 (filed on April 29, 1999; published on January 1, 2000) and 975283 (filed on October 12, 2000; published on July 1, 2001).
Complainant also operates a website at “www.vitaya.be”. This website was the first result when the Panel entered the term “vitaya” into the search engine at “www.google.com”, “www.google.co.kr”, and “www.google.be” on May 3, 2010. It was also the first result when Complainant entered the term “vitaya” into the search engine at “www.google.be” on February 24, 2010.
Respondent is the current owner of the Domain Name <vitaya.com>. The Domain Name was registered on March 26, 2002, but Complainant states that it is not clear whether Respondent is the original registrant or whether Respondent acquired it at a later date. Complainant has submitted an email from Respondent that states that Respondent acquired the Domain Name <vitaya.com> from the original owner in 2002. Based on this email, the Panel assumes Respondent has owned the Domain Name <vitaya.com> since 2002. The Panel notes that whether Respondent was the original owner from March 26, 2002, or became the owner at some later date is irrelevant because Complainant's trademark registrations were filed at least two years before the Domain Name was first registered.
Respondent has a hanafos.com email address. The registration record for the Domain Name <vitaya.com> identifies “club, sniper” as the administrator of the Domain Name and lists a hananet.net email address.
On April 30, 2009, Complainant contacted Respondent via email regarding Complainant's possible purchase of the Domain Name <vitaya.com> from Respondent. The same day, Respondent responded that it would consider transferring the Domain Name <vitaya.com> to Complainant for a “reasonable price.” On May 4, 2009, Complainant, via email, offered to purchase the Domain Name <vitaya.com> from Respondent for $500 (the currency was not otherwise specified). Respondent rejected the offer the same day, responding that it wanted to keep the domain name for “future business” and that the “offer price is not reach to ours.” This email was signed with the initials “SY.”
Complainant has submitted printouts of prior iterations of the website at the Domain Name, annexed to the Complaint. These printouts indicate that Respondent did not use the Domain Name in connection with the bona fide offering of goods or services for at least seven years. Rather, Respondent only displayed a “Coming Soon . . Under Construction” notice on the website during that time period. When the Panel input the Domain Name in mid-April 2010, however, the website displayed a different image of trees and snow, some text in Korean, and the words “Welcome to my Future Homepage” in English. When the Panel attempted to view the website at the Domain Name on April 29, 2010, however, it did not resolve to an active site.
Complainant states that since 1999, it has operated a television channel under the mark VITAYA, and that this television channel is well known in Belgium and the Netherlands. Complainant also states that it publishes a magazine, which complements Complainant's television programs, under the VITAYA mark.
Complainant claims that Respondent appears to specialize in registering domain names with the intent of selling them for profit. Complainant has submitted evidence that a search for Respondent's (“hundred.net”) email address on <google.be> reveals that Respondent is offering several domain names for sale, including <wellness4u.com>, <l-pro.com>, <ugcom.com>, <nflame.com>, <europlants.com>, and <xxx4you.com>. Complainant has also submitted evidence that a search for the email address of Respondent's administrator (“club, sniper”) on <google.be> reveals that Respondent's administrator also offers several domain names for sale, including <quattronet.com>, <arbovision.com>, <x-point.com>, <fun-sport.com>, <win-life.com>, and <money4you.com>. Some of these domain names are registered in Respondent's name.
Complainant requests a decision requiring the Registrar to transfer the Domain Name <vitaya.com> to Complainant pursuant to paragraph 4(i) of the Policy. Complainant asserts that Respondent's use of the Domain Name satisfies the standard established in paragraph 4(a) of the Policy because (1) the Domain Name is confusingly similar to Complainant's VITAYA-based trademarks; (2) Respondent has no rights or legitimate interests in the Domain Name; and (3) the Domain Name has been registered and is being used in bad faith.
Complainant contends that its rights in the VITAYA mark are supported by its ownership of several Benelux and European Union registrations for trademarks consisting of or incorporating VITAYA. These registrations include Community Trademark Registration Nos. 1158096, 3696929, 5530357, 5781315, 5781257, 7341696, and 7341746, as well as Benelux Trademark Registration Nos. 937388 and 975283. Complainant contends that the Domain Name is identical to Complainant's VITAYA word mark registrations, and is identical to the word element VITAYA in Complainant's other registrations. Complainant also states that Complainant's Benelux Trademark Registration Nos. 937388 and 975283 and its Community Trademark Registration No. 1158096 all predate registration of the Domain Name <vitaya.com>.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name. Complainant contends that Respondent has no trademark rights in the Domain Name. Complainant also notes that there is no evidence that Respondent is commonly known by the Domain Name. Complainant further asserts that Respondent has no connection or affiliation with Complainant, and has never used the Domain Name in connection with the bona fide offering of goods and services. Complainant also claims that at least two domain name registrations in the name of Respondent or Respondent's administrator have been transferred to complainants following decisions by other WIPO UDRP panels.
Complainant further contends that Respondent has registered and is using the Domain Name in bad faith. Complainant asserts that Respondent's actions constitute passive holding of the Domain Name for at least seven years, thereby preventing Complainant, the owner of the VITAYA trademark, from reflecting the mark in its own domain name. Complainant contends that Respondent's real intention is to sell the Domain Name for a substantial price. Complainant asserts that Respondent owns several domain names, all of which either are offered for sale or display an “under construction” notice.
Respondent did not reply to Complainant's contentions.
The Panel finds that it was properly constituted pursuant to the Rules and that it has authority to decide this dispute. The Panel notes that the record, through a confirmation communication from the Registrar, shows that Respondent agreed to the Policy as part of its Domain Name registration, and the Complaint and the Default was properly notified to Respondent in accordance with paragraph 2(a) of the Rules. The Panel further notes that notwithstanding Respondent's failure to respond to the Complaint, the Panel has reviewed the record to determine whether or not Complainant is entitled to the relief requested under the Policy, the Rules, and the Supplemental Rules.
The Policy is addressed at resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774 (October 26, 2002). The Panel has reviewed the record in light of the three requirements set forth in paragraph 4(a) of the Policy, which entitle Complainant to a transfer or cancellation of the disputed Domain Name if Complainant demonstrates:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
To satisfy this element, the Panel must find that (1) Complainant has demonstrated its rights in the VITAYA mark; and (2) the Domain Name is identical or confusingly similar to Complainant's mark.
Complainant has adequately demonstrated its rights in the VITAYA mark by submitting records of its multiple trademark registrations in Benelex and the European Union for marks that consist of or incorporate the word “vitaya”. Three of these registrations predate Respondent's registration of the Domain Name. Proof of trademark rights in any country is sufficient for the purposes of paragraph 4(a)(1) of the Policy. See, e.g., Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920 (January 20, 2004). Complainant uses the VITAYA mark in connection with television broadcasting and magazines. Moreover, Complainant operates a website at “www.vitaya.be” to promote these goods and services under the VITAYA mark. Complainant's ownership of the registered VITAYA trademark satisfies the initial requirement that Complainant has valid rights in the trademark. See, e.g., Micro Electronics, Inc. v. Strateks Corporation, WIPO Case No. D2005-0129 (March 27, 2005).
The Domain Name is identical to Complainant's VITAYA mark, aside from the legally insignificant addition of the top level identifier “.com.” See Lenox Financial Mortgage, LLC, JMH Financial Mortgage, Corp d/b/a Lenox Financial Mortgage, Corp v. Digi Real Estate Foundation, WIPO Case No. D2006-1047 (November 28, 2006) (addition of “.com” should be disregarded for the purpose of the first element of the Policy). Accordingly, Complainant has shown that the Domain Name is identical to Complainant's VITAYA mark.
With respect to the second element, Complainant should make at least a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Once the Complainant has made a prima facie case, Respondent should present evidence that it has rights or legitimate interests. Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043 (March 4, 2005) (“Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent in the disputed domain name. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant's assertions and establishing Respondent's rights or interests in the disputed domain name . . . .”); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (April 14, 2004) (noting that “the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent,” and that requiring the complainant to make more than a prima facie showing would impose “the often impossible task of proving the negative”).
Complainant has presented uncontested evidence that it has not authorized or licensed Respondent to use Complainant's mark or to register a domain name reflecting the mark. Further, before notice of the dispute, Respondent was not using the Domain Name in connection with a bona fide offering of any goods or services that would support Respondent's legitimate interests in the Domain Name. As shown in Annexes 13-15 to the Complaint, Respondent has displayed only a “Coming Soon . . Under Construction” notice at the Domain Name for at least seven years. There is no evidence that Respondent previously conducted a legitimate business under the name Vitaya, or that Respondent has ever been commonly known by Vitaya or the Domain Name <vitaya.com>.
The Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not submitted a Response. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Paragraph 4(a)(iii) of the Policy requires a showing that Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy offers examples of what may constitute evidence of bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name;
(ii) circumstances indicating that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that Respondent intentionally is using the Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
Paragraph 4(b) expressly states that the above list is “in particular but without limitation”; thus, “bad faith” may also be proven by other means. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (“[P]aragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). The overriding objective of the Policy is to prevent trademark abusive domain name registration and use for the benefit of legitimate trademark owners, and the Panel notes that the examples of bad-faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances in which such bad faith may be found. See id.
“Registration of an arbitrary trademark with an exclusive connection to a commercial product and limited potential utility as a common conveyor of information supports an inference of bad faith.” Laboratoire Nutergia v. Jeongyong Cho, WIPO Case D2007-1582 (January 14, 2008); see also Pharmacia & Upjohn Company v. Xanax Advocates, WIPO Case No. D2000-0817 (September 10, 2000). The record contains no evidence that VITAYA has any pre-existing meaning in any language, and the Panel is not aware of any such pre-existing meaning. On the contrary, this appears to be prima facie an arbitrary term that is now associated with Complainant's television broadcasting services and magazine publications. Respondent's registration of what appears to be an arbitrary term associated almost exclusively with Complainant supports the inference that Respondent had no legitimate purpose for this registration, and instead registered the Domain Name for the purpose of either selling it to Complainant at a price Respondent considered sufficiently high or preventing Complainant from reflecting the VITAYA trademark in its domain name.
Moreover, it appears that Respondent has never actively used the Domain Name over the course of at least seven years. Such “non-use [may] constitute ‘bad faith use.'” Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case D2004-0016 (February 25, 2004). Indeed, other UDRP panels have found that passive holding for much shorter periods of time can support a finding of bad faith. See, e.g., Kimmelrama, Inc., Lotzi, Inc., Hachacha, Inc. v. 1315 East B, Brett Warren, WIPO Case No. D2009-0556 (June 18, 2009) (passive holding of the disputed domain name for more than two years supports conclusion that the respondent was acting in bad faith). In light of the absence of any explanation from Respondent, the Panel finds that Respondent's passive holding of the Domain Name since its registration suggests that Respondent registered and is using the Domain Name in bad faith.
In addition, it is a reasonable inference from the record that Respondent knew of Complainant's mark when registering the Domain Name. Complainant's mark is arbitrary, and the record reflects that the mark is strongly associated with Complainant's business. Complainant both registered and had used the VITAYA mark in connection with television broadcasting services for approximately three years before Respondent registered or purchased the Domain Name. Furthermore, Complainant's “www.vitaya.be” website is the first result when one inputs the term “vitaya” into the search engine at <google.com>, <google.co.kr>, and <google.be>. As the owner of multiple domain name registrations, many of which are for sale, and as a party to prior UDRP disputes, Respondent has significant experience with domain name registrations. Thus, it is probable that before registering or purchasing the Domain Name, Respondent would have conducted an online search for similar domain names and/or trademarks.
Finally, Complainant has submitted evidence that Respondent and Respondent's administrator have registered several domain names that they have then offered for sale. This further supports the conclusion that Respondent registered and is using the Domain Name in bad faith.
Taking all these factors together, the Panel concludes that Complainant has submitted sufficient evidence to support the conclusion that Respondent likely registered the Domain Name because Respondent knew that Complainant was using the VITAYA mark and either intended to sell the Domain Name to Complainant or otherwise wished to prevent Complainant from reflecting the VITAYA mark in a domain name. Moreover, Respondent has offered no reply or rebuttal to the Complaint. Therefore, the Panel finds that Complainant has sufficiently established Respondent's bad-faith registration and use of the Domain Name.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name, <vitaya.com>, be transferred to Complainant.
Grant L. Kim
Dated: May 11, 2010