WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vax Limited v. Private Registrations Aktien Gesellschaft
Case No. D2010-1854
1. The Parties
The Complainant is Vax Limited, Worcestershire, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by EMW Law LLP, United Kingdom.
The Respondent is Private Registrations Aktien Gesellschaft, Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <vax.com> is registered with Answerable.com (I) Pvt Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 2, 2010. On November 2, 2010, the Center transmitted by email to Answerable.com (I) Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On November 10, 2010, Answerable.com (I) Pvt Ltd. transmitted by email to the Center its verification response confirming that the 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”).
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 November 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on December 23, 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.
4. Factual Background
In 1979 the Complainant started its business of providing vacuum cleaners and other floor-care products. It did register 18 trademarks consisting, first in 1989, of the term VAX and thereafter the same term VAX associated with other terms such as VAX ULTRA RAPID, VAX RAPID, VAX PERFORMANCE, VAX FORTIS, VAXESSORIES, ESSENTIALS BY VAX, KONE BY VAX, VAX ULTRA, VAX ALL TERRAIN, VAX COMMERCIAL, VAX POWER 1, VAX POWER HEAD and VAX HAIR, all in association with either classes 3, 7 or 9 (herein the “VAX Trademark” or the “Family of VAX Trademarks”).
The disputed domain name was registered on September 29, 1996, and has an expiration date of September 28, 2011. The Respondent has previously registered 11 domain names which have been the subject of WIPO UDRP decisions during the years 2009 and 2010 and which have all resulted in the panel in each decision granting the transfer of the disputed domain name. (Annex 4 to the Complaint)
5. Parties’ Contentions
The Complainant contends that it is the registered owner of the VAX Trademark and the Family of VAX Trademarks which it has been using since as early as 1989, the date of the earliest registration subsequent to the establishment of the Complainant in 1979 and that the VAX Trademark is now distinctive in the United Kingdom of the best selling floor-care brand where all its products are now marketed as well as in Europe, the Middle East, Hong Kong, SAR of the People’s Republic of China and Australia and has become synonymous with quality vacuum cleaner.
The Complainant further contends that the disputed domain name is not only identical to its VAX Trademark but also confusingly similar to its Family of VAX Trademarks and its domain name <vax.co.uk> and concludes to confusing similarity in stating that the addition of the ending “.com” does not sufficiently distinguish the disputed domain name from the Complainant’s Trademarks and domain name.
The Complainant submits that the VAX Trademark and its name Vax are well-known and commonly identified with the Complainant while the Respondent is not known by the name “Vax” pursuant to searches made on various trademark data bases. The Complainant further submits that not only the Respondent does not trade under the name “Vax”, there is no evidence to suggest that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services, to the contrary, the Respondent is merely using the disputed domain name to attract people interesting in the Complainant’s products.
According to the Complainant, the Respondent’s website under the disputed domain name is being used as a “click through” site with links to search portal and other party websites, none of which are related to goods and services connected with the Complainant or its VAX Trademark. This is not surprising to the Complainant since the Respondent has a history of using domain names in this manner as it has been established in 11 decisions rendered by UDRP panels against the Respondent.
The Complainant concludes that the Respondent has no rights to or legitimate interests in the disputed domain name and is not making any use that is fair, legitimate or noncommercial.
The Complainant represents that the Respondent registered the disputed domain name in order to attract Internet users to the Respondent’s website by creating confusion with the Complainant’s VAX Trademark and Family of VAX Trademarks and products and that such activities are a continuation of the history of the Respondent’s activities demonstrating that the Respondent is acting in bad faith, both in the registration of the disputed domain name and in the use of the said domain name in bad faith as it has been found in all 11 decisions put in evidence. The Complainant concludes that the paragraph 4(b) of the Policy is satisfied in that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name holder’s website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name holder’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Prior to the registration of the disputed domain name in late 1996, there were already five different registrations, one of a VAX Trademark and four of the Family of VAX Trademarks while additional ones were added each year from 2004 to 2009. The evidence, not challenged, is that the Trademarks were extensively used to become the best selling floor-care brand, not only in United Kingdom but throughout Europe and elsewhere. There is therefore considerable distinctiveness and goodwill attached thereto. The Panel finds that the Complainant has rights in the VAX Trademark and the Family of VAX Trademarks.
The disputed domain name incorporates and consists of the VAX Trademark to which the gTLD suffix “.com” is added. It is well established in several UDRP panel decisions that the addition of such a suffix does not diminish in any way the confusing similarity between the disputed domain name and the Complainant’s Family of VAX Trademarks. The Panel finds that the disputed domain name is identical to the VAX Trademark and confusingly similar to the Family of VAX Trademarks of the Complainant.
The first criterion of the Policy has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s VAX Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s VAX Trademark.
The term VAX in the Trademarks is a distinctive coined word. The Complainant has clearly established that the Complainant did not authorize nor license the Respondent to use its VAX Trademark in any way.
The Complainant has asserted that it did not authorize or consent to the Respondent registration of the disputed domain name and its continued use as a website address despite the long duration from the date of registration of the disputed domain name and that of the Complaint. The Respondent did not assert any evidence against the representation of the Complainant that the Respondent does not trade under the name “Vax” nor it is using the disputed domain name in connection with a bona fide offering of goods and services. The Panel accepts the evidence of the Complainant in that the disputed domain name is being used as a “click through” site with links to a search portal and other third party websites which are not related to goods or services associated with the Complainant or its VAX Trademark.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second criterion of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It should be noted that the circumstances of bad faith are not limited to the above.
The VAX Trademark consists solely of a non descriptive or coined term VAX. In 1996, it was already extensively in use by the Complainant and had acquired distinctiveness and substantial goodwill by reason of its continuous use. The presence and registration of the VAX Trademark could have been easily verified by the Respondent. It is not at all surprising that the Respondent did not engage in such verification when one considers the Respondent’s pattern of registering domain names incorporating the trademarks of third parties as the Complainant adduced in evidence with the 11 decisions identified in Annex 4 to the Complaint wherein the panel in each instance concluded to the Respondent’s bad faith in engaging in these activities.
There is evidence, not challenged, that the registration and use of the disputed domain name is purely for the purpose of misleading consumers for commercial gain in operating a “click through” site under the website address by creating a likelihood of confusion with the Complainant’s VAX Trademark as to the source, sponsorship, affiliation or endorsement of the website at the disputed domain name. The Panel has examined and considered Annex 3 to the Complaint which consists of several pages of the website under the disputed domain name and noted the presence of several sponsored links and topics such as cleaners, cordless vacuum cleaners, vacuum cleaner bags, floor cleaners and cleaning services with several referrals to products and establishments not related to the Complainant such as Exair Chip Vac, vacuum cleaners at “www.kelkoo.nl”and vacuum bags at “www.vinden.nl” to name only a few.
These facts are not surprising since they fit very well within the pattern of the Respondent in registering and using in bad faith domain names comprising or confusingly similar with the trademarks of third parties as found in the 11 decisions rendered in 2009 and 2010 by the panel in each decision identified in Annex 4 to the Complaint.
The Panel therefore finds that the disputed domain name was registered and used in bad faith by the Respondent.
The third criterion of the Policy has been met.
The Panel concludes that:
(a) the disputed domain name <vax.com> is identical and confusingly similar to the Complainant’s VAX Trademarks;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vax.com> be transferred to the Complainant.
J. Nelson Landry
Dated: December 30, 2010