The Complainant is Standard Innovation Corporation of Ottawa, Ontario, Canada, represented by Piasetzki Nenniger LLP, Canada.
The Respondent is Whois Privacy Protection Service Inc. / Lighthouse Hosting Services, Dave Hammer of Bellevue, Washington, United States of America / New York, United States of America.
The disputed domain name <we-vibe.cc> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2010. On May 27, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 27, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 4, 2010. The Center verified that the Complaint together with the amended 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 28, 2010.
The Center appointed Simon Minahan as the sole panelist in this matter on July 6, 2010. The Panel finds that it was properly constituted. 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.
The Complaint being uncontroverted the Panel finds the following facts:
(a) The Complainant has an international business vending adult marital and sexual aids which it conducts by reference to the trade mark WE-VIBE & Design;
(b) The Complainant has registrations of the trade WE-VIBE & Design in numerous jurisdictions including the United States of America, Canada, Japan, Australia, People's Republic of China and the European Union and a registration of the trade mark WE-VIBE in the United States of America;
(c) The Complainant has numerous registered domain names incorporating the expression “we-vibe” and variants of it including “www.we-vibe.com”, “www.we-vibe.net”; which it has held variously since February 2007;
(d) Since its launch in March 2008 the Complainant's website has recorded well in excess of 3 million visits;
(e) The disputed domain name was registered in April 2010;
(f) The Respondent does not have the Complainant's licence to exploit any of the Complainant's trade marks;
(g) The disputed domain name is being used in conjunction with a website which consists entirely of selected portions of the Complainant's website where it purports to sell the Complainants goods at a steep discount; and
(h) On the website conducted in association with the disputed domain name there are bogus “Trust Guard” seals which are apparently being fraudulently used to encourage users to provide credit card details.
In reliance on the facts set out above, and other matters, the Complainant contends that:
(a) the disputed domain name is confusingly similar or identical to its various registered trade marks and domain names;
(b) the Respondent has no rights or legitimate interest in the domain name;
(c) the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
The disputed domain name incorporates the key distinguishing elements of the Complainant's WE-VIBE & Design trade mark and, further, wholly reproduces the Complainant's WE-VIBE United States registered mark. The introduction of the ccTLD identifier “.cc” does not preclude a finding of identicality nor diminish or reduce confusion: Telecom Personal v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271.
The Panel finds that the disputed domain name is identical to the Complainant's WE-VIBE trade mark and confusingly similar to its various other WE-VIBE & Design trade marks.
The Complainant further contends that the Respondent has no right or legitimate interest in the domain names or the subject mark and further that its choice of the domain name indicates an awareness of the Complainant's mark. As such the Complainant contends the use being made of the mark is not bona fide nor legitimate. See for example: Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Under paragraph 4(a)(ii) of the Policy, the evidence of the Complainant of its prior rights and the want of any licence or consent from it to the Respondent to use the WE-VIBE or any associated trade mark or, as a consequence, the disputed domain name shifts the burden to establish those rights to the Respondent (see e.g.: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317).
Here the Respondent by its silence (and in light of the record) has left that burden undischarged. Accordingly, the Panel finds the Respondent has no rights or legitimate interest in the domain name or the associated trade marks.
Finally the Complainant contends that in the foregoing circumstances the Respondent's registration and use of the disputed domain name is directed to diverting Internet traffic to commercial, and apparently fraudulent activities of the Respondent by making use of the confusion inherent in the domain name and taking advantage of the Complainant's good will in the mark and that such use and registration is in bad faith.
In light of the evidence and lack of contradiction from the Respondent, the Panel accepts this submission. Indeed it would be hard to conceive of a more flagrant example of bad faith use of a trade mark. The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <we-vibe.cc> be transferred to the Complainant.
Dated: July 15, 2009