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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Visible Technologies, Inc. v. Visibli Inc.

Case No. D2012-0904

1. The Parties

The Complainant is Visible Technologies, Inc. of Bellevue, Washington, United States of America (“US”), represented by Foster Pepper PLLC, US.

The Respondent is Visibli Inc. of Toronto, Ontario, Canada, represented by Invicta Law Group PLLC, US.

2. The Domain Name and Registrar

The disputed domain name <visibli.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2012. On April 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 30, 2012, the Registrar 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 May 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was May 28, 2012. The Response was filed with the Center on May 27, 2012.

The Center appointed John Swinson as the sole panelist in this matter on June 4, 2012. 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

The Complainant is Visible Technologies, Inc., a company located in the US which provides online social media monitoring services.

The Complainant is the owner of the following registered US trade marks:

- VISIBLE TECHNOLOGIES (Registration No. 3,424,364), registered on May 6, 2008;

- VISIBLE INTELLIGENCE (Registration No. 4,061,029), registered on November 22, 2011;

- VISIBLE (Registration No. 4,069,575), registered on December 13, 2011; and

- VISIBLE TECHNOLOGIES (Registration No. 4,069,576), registered on December 13, 2011

(together, the “Trade Marks”).

The Respondent is Visibli Inc., a company located in Canada which provides online social media monitoring services.

The Complainant has brought legal action against the Respondent in the US District Court for the Western District of Washington for willful, knowing, and intentional federal trade mark infringement, false designation of origin, and unfair competition arising out of the Lanham Act, the Washington Consumer Protection Act and trade mark infringement under Washington state common law (the “Proceedings”).

The Respondent registered the Disputed Domain Name with the Registrar on August 12, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name confusingly resembles the Trade Marks.

The Trade Marks are used in connection with online social media monitoring services offered by the Complainant. The Complainant markets these services using the Trade Marks, including on the website www.visibletechnologies.com.

The Disputed Domain Name is phonetically and visually similar to the Complainant’s trade name. “Visibli” is an obvious play on the English word “visible”, which is at the root of the Complainant’s identity and its Trade Marks.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests to the Disputed Domain Name for the following reasons:

- registration of the Disputed Domain Name post-dates the registration of the Complainant’s domain name <visibletechnologies.com> (registered on July 22, 2003) and the registration of the Complainant’s first US trade mark;

- the Respondent has never used the Disputed Domain Name in connection with a legitimate offering of goods or services, it is providing the same services as the Complainant and is trading on the likelihood of user confusion;

- the Respondent has never been legitimately recognized by the term “Visibli” as a trade name; and

- the Respondent is not making legitimate non-commercial or fair use of the Disputed Domain Name, as it is a for-profit organization trading on the Complainant’s Trade Marks.

Registered and Used in Bad Faith

The Respondent has intentionally attempted to attract, for commercial gain, users to the website “www.visibli.com” by creating a likelihood of confusion with the Complainant’s Trade Marks (paragraph 4(b)(iv) of the Policy). The similarity in name and services suggests sponsorship, affiliation or endorsement by the Complainant. This has been done in bad faith and is an attempt to disrupt the Complainant’s business activities.

The Respondent is attempting to capitalize on the Complainant’s brand recognition and success. The following facts support this submission:

- the Respondent previously operated as Assetize Inc. (from April 19, 2005), a company which gave subscribers the opportunity to earn money through advertising products and services on their Twitter accounts; and

- after the Complainant had risen to prominence, the Respondent changed its name to Visibli Inc. (on December 16, 2010), changed its service offerings, and redirected its website to “www.visibli.com”.

B. Respondent

The Respondent makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name is not confusingly similar to the Trade Marks. It is phonetically distinct and creates a separate and unique commercial impression. Customers would not be confused as to the source of the services. The two businesses have co-existed for two years without any evidence of actual confusion.

Rights or Legitimate Interests

The Respondent was known as Assetize Inc. prior to 2010, when it began preparations to change its name. The first step was the registration of the Disputed Domain Name for the bona fide offering of services under that name. After confirming the Disputed Domain Name was available, the Respondent adopted the trade name Visibli Inc. and used it consistently. The Respondent officially changed its name to Visibli Inc. on December 16, 2010.

The Respondent did not receive notice of the dispute until two years after the registration of the Disputed Domain Name. Before notification, the Respondent used the Disputed Domain Name in connection with a bona fide offering of goods and services (by using its name of incorporation and trade name as its domain name to offer goods and services).

At the time the Respondent adopted the trade mark VISIBLI and registered the Disputed Domain Name, it had no knowledge of the Complainant’s business or claim to the trade mark VISIBLE. The Complainant was doing business under the name “Visible Technologies” and was utilizing the domain name <visibletechnologies.com>.

Registered and Used in Bad Faith

The Complainant has offered no evidence in support of its allegations of bad faith.

The Respondent did not intentionally attempt to attract, for commercial gain, users to the website “www.visibli.com” by creating a likelihood of confusion with the Complainant’s mark. At the time the Disputed Domain Name was registered, the Complainant only had trade mark registrations for VISIBLE TECHNOLOGIES and the domain name <visibletechnologies.com> and an “Intent to Use” application for VISIBLE INTELLIGENCE.

The Complainant’s only arguments for the existence of bad faith are the timing of the registration of the Disputed Domain Name and its assertion of confusing similarity. The Complainant fails to explain how the adoption of the Disputed Domain Name is evidence of a bad faith attempt to create a likelihood of confusion with the VISIBLE TECHNOLOGIES trade mark. In fact, “visible” appears on numerous other websites which offer goods and services similar to those of the Complainant and the Respondent.

The Complainant has provided no evidence of any of the other indicators of bad faith under the Policy.

6. Discussion and Findings

A. Court Proceedings

The Complainant has initiated legal proceedings against the Respondent (see paragraph 4).

Paragraph 4(k) of the Policy provides that the Policy does not bar either the Complainant or the Respondent from seeking judicial remedies. Paragraph 18(a) of the Rules provides “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

The Panel has reviewed the Complaint for Trademark Infringement filed by the Complainant (as Plaintiff) on April 11, 2012. Whether use of the Disputed Domain Name infringes the Trade Marks is clearly one of the issues to be determined by the Court in the Proceedings. The Disputed Domain Name and/or the website connected to the Disputed Domain Name are referred to in the section of the Complaint for Trademark Infringement titled “V. Defendant’s Unlawful Activities” (paragraphs 12 and 14). The Complainant requests that the Court order that the Disputed Domain Name be transferred to the Complainant (“X. Prayer for Relief”, paragraph 9).

If the Panel was to decide this dispute today, the Panel would decide not to transfer the disputed domain name on the basis that the Respondent had rights in the disputed domain name. This is because the Disputed Domain Name is the same as the Respondent’s trading name. However, this finding relies on the assumption that the Respondent is not infringing the Complainant’s trade mark registrations. If the Respondent is infringing the Complainant’s trade mark registrations, then it would not have rights or legitimate interests in the Disputed Domain Name. This Panel is not in a position to decide that issue. Moreover, if the Complainant is successful in its court action, one remedy it seeks is transfer of the Disputed Domain Name.

In light of the above, the Panel is of the opinion that the Complaint cannot be evaluated separately from the Proceeding. On that basis, the Panel exercises its discretion to terminate the Complaint, without prejudice to the filing of a future complaint under the Policy pending resolution or discontinuation of the Proceedings (see Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183; Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201 and Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants), WIPO Case No. D2008-1477).

B. Publication

The Panel is aware that termination orders are generally not published, unless there are factors present which warrant publication (e.g., if publication is requested by the parties or there are public interest factors favoring publication). On the present facts, the Panel has decided to publish its decision for public interest. There is a pending lawsuit, which started prior to this Complaint. The fact that the Complainant has also brought the Complaint appears to be an unnecessary waste of legal resources, designed to put unnecessary pressure on the Respondent. Accordingly, the Complainant’s conduct is deserving of public censure. Additionally, because the pending court case is public, it is appropriate to make this decision public to ensure that the public record is complete.

7. Order

For all the foregoing reasons, in accordance with paragraph 18(a) of the Rules, the Panel orders that this proceeding be terminated.

John Swinson
Sole Panelist
Dated: June 15, 2012

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