WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VitalSource Technologies LLC v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd

Case No. D2018-2021

1. The Parties

Complainant is VitalSource Technologies LLC of La Vergne, Tennessee, United States of America (“United States”), represented by Waller Lansden Dortch and Davis, PLLC, United States.

Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States.

2. The Domain Name and Registrar

The disputed domain name <vitalsourcebookshelf.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2018, the Registrar 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 Complainant on September 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 12, 2018.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 5, 2018.

The Center appointed John C. McElwaine as the sole panelist in this matter on October 19, 2018. 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

Complainant is a digital books and digital book content delivery provider and software company based in Tennessee, United States.

Complainant owns federal trademark registrations in the United States for the following marks: VITAL BOOK (Reg. No. 3055780, registered on January 31, 2006), VITALSOURCE (Reg. No. 3526152, registered on November 4, 2008), BOOKSHELF (Reg. No. 3526158, registered on November 4, 2008), VITALSOURCE & Design (Reg. No. 4557783, registered on July 1, 2014), VITALSOURCE CONTENT STUDIO (Reg. No. 5305211, registered on October 10, 2017), VITALSOURCE ACCESS (Reg. No. 5368313, registered on January 2, 2018), and VITALSOURCE BRIDGE (Reg. No. 5373262, registered on January 9, 2018). The earliest registrations for VITALSOURCE and BOOKSHELF were issued on November 4, 2008. Complainant is the owner of the <vitalsource.com> domain name and Complainant’s website is located at said domain name.

On May 14, 2012, Respondent registered the Domain Name with the Registrar. Respondent has used the Domain Name to host a sponsored advertisements website that is also soliciting offers to purchase the Domain Name.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of common law and federally registered trademark rights in the marks VITALSOURCE and BOOKSHELF in the United States. Complainant further contends that as a result of Complainant’s use of the VITALSOURCE and BOOKSHELF trademarks in the United States since at least as early as 2005 that the marks have become widely known to students and educational institutions alike.

As it pertains to the first element of the Policy, Complainant contends that the Domain Name is an intentional combination of Complainant’s VITALSOURCE and BOOKSHELF trademarks and, as such, the Domain Name is identical to Complainant’s two trademarks.

With respect to the second element of the Policy, Complainant contends that Respondent does not have any rights or legitimate interests in the Domain Name because (i) Complainant has never granted Respondent rights to use the VITALSOURCE or BOOKSHELF trademarks; (ii) Respondent’s use of the Domain Name is unauthorized as Respondent is not related to, affiliated with, endorsed by, connected to, nor otherwise associated with Complainant; (iii) Complainant has not licensed, authorized or permitted Respondent to register the Domain Name; (iv) Respondent is not commonly known by the Domain Name; (v) Respondent’s use of the Domain Name to host a page containing pay-per-click links and soliciting offers to purchase the Domain Name is not use of the Domain Name in connection with a bona fide offering of goods or services; and (vi) for the same reasons listed in (v) Respondent’s use of the Domain Name is not a legitimate noncommercial or fair use of the Domain Name.

Lastly, regarding the third and final element of the Policy, Complainant contends that when taken on balance, Respondent registered and is using the Domain Name in bad faith because Respondent knew of or should have known of Complainant’s VITALSOURCE and BOOKSHELF trademarks and that Respondent registered the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to the Domain Name by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainants must still prove their assertions with evidence demonstrating:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and are being used in bad faith.

Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the complainant prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Here, Complainant has provided evidence of ownership of registrations for the marks VITALSOURCE (United States Reg. No. 3526152) and BOOKSHELF (United States Reg. No. 3526158), both of which issued on November 4, 2008, nearly four years prior to registration of the Domain Name. The Panel finds that Complainant owns valid trademark rights in the VITALSOURCE and BOOKSHELF trademarks, which predate the registration of the Domain Name.

Regarding whether the Domain Name is identical or confusingly similar to Complainant’s trademarks, there is no question that the Domain Name, which consists solely of the combination of Complainant’s VITALSOURCE and BOOKSHELF trademarks, is identical to Complainant’s two trademarks. See Aktiebolaget Electrolux v. 2220 Internet Coordinator, WIPO Case No. D2005-1184(“Combining the two trademarks in the disputed domain name does not serve to distinguish the domain name from the Complainant’s trademarks.”); see also Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118(“Domain names consisting of a mere combination of two trademarks must be considered as confusingly similar to such trademarks.”

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s VITALSOURCE and BOOKSHELF trademarks in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Complainant contends that: (i) Complainant has never granted Respondent rights to use the VITALSOURCE or BOOKSHELF trademarks; (ii) that Respondent’s use of the Domain Name is unauthorized as Respondent is not related to, affiliated with, endorsed by, connected to, nor otherwise associated with Complainant; (iii) Complainant has not licensed, authorized or permitted Respondent to register the Domain Name; (iv) Respondent is not commonly known by the Domain Name; (v) Respondent has not used the Domain Name in connection with a bona fide offering of goods or services; and (vi) Respondent’s use of the Domain Name is not a legitimate noncommercial or fair use of the Domain Name.

With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information, as disclosed by the Registrar, lists Respondent as Host Master, Transure Enterprise Ltd. The Panel therefore finds, based on the record, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that Respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name’.”)

Complainant has also alleged that Respondent is not authorized by Complainant to use the VITALSOURCE or BOOKSHELF trademarks either in commerce or in a domain name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000‑0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010‑1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

With respect to Complainant’s contention that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising pay-per-click (“PPC”) links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0 atsection 2.9. Here, the Panel notes that the Domain Name resolves to a parked page comprising PPC links for goods and services which are identical to, and thus competitive with, Complainant’s goods and services. The Panel concludes that such use of the Domain Name is intended to capitalize on the reputation and goodwill of the complainant’s mark. Furthermore, the Panel also finds, in the absence of any rebuttal from Respondent, that Respondent’s use of the Domain Name to link to a page soliciting offers to purchase the Domain Name does not give rise to rights of legitimate interest in the Domain Name. See AB Electrolux v. eijiobara obara, WIPO Case No. D2011-1618.

While Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark, that is not the case here. Id. Here, while the domain name consists of a dictionary term, BOOKSHELF, and is used to host a page comprising PPC links genuinely related to the dictionary meaning of the word, the Domain Name is not comprised solely of a dictionary term. Here, the Domain Name also consists of Complainant’s trademark VITALSOURCE, which appears to be a coined, non-dictionary term. Respondent’s use of the Domain Name is not consistent with finding a right or legitimate interest in the Domain Name. Accordingly, the Panel finds that Respondent is not making a bona fide offering of goods or services.

Lastly, regarding Complainant’s contention that Respondent’s use of the Domain Name is not a legitimate noncommercial or fair use of the Domain Name, as detailed above Respondent appears to be using the Domain Name to host a page containing PPC links, which by definition, is intended to derive revenue for Respondent. Such use of a domain name to generate revenue is, by its very definition, a commercial use of a domain name. See, e.g., Mubadala Trade Marks Holding Company - LLC & Mubadala Investment Company PJSC v. Euro Equity W.L.L., WIPO Case No. D2018-0110; International Business Machines Corporation v. Rajiv Jain, R&R Bikes, WIPO Case No. D2018-2019; Oracle International Corporation v. Panshuailou 1, Simon Pan, WIPO Case No. DCO2018-0009. Accordingly, the Panel finds that Respondent’s use of the Domain Name is not a legitimate noncommercial or fair use of the Domain Name.

Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Complainant contends that Respondent registered and is using the Domain Name in bad faith as evidenced by Respondent’s apparent intentional attempts to attract, for commercial gain, consumers by utilizing the Domain Name, which consists of a combination of Complainant’s VITALSOURCE and BOOKSHELF trademarks, in a calculated effort to create a likelihood of confusion with said trademarks.

Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s VITALSOURCE and BOOKSHELF trademarks when Respondent decided to register the Domain Name. There is no explanation or evidence of rights or legitimate interests to justify Respondent’s choice to register the Domain Name, which is comprised solely of the direct combination of Complainant’s VITALSOURCE and BOOKSHELF trademarks, the intention of which appears to be nothing other than to trade off the goodwill and reputation of Complainant’s trademarks or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.

Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.” As detailed above, the Domain Name resolves to a page containing PPC links for goods and services identical to and competitive with Complainant’s goods and services, wherein, Respondent likely generates revenues for each click-through of the links. Such use appears to be for no other reason than to trade off the goodwill and reputation of Complainant’s trademarks or otherwise create a false association with Complainant for Respondent’s own financial gain. See Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services to those offered by the complainant under its mark.)

Accordingly, the Panel therefore finds that Respondent registered the Domain Name with the intent of attracting Internet users for commercial gain by creating confusion as to Complainant’s sponsorship of or affiliation with the Domain Name. Such registration and use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <vitalsourcebookshelf.com> be transferred to Complainant.

John C McElwaine
Sole Panelist
Date: November 2, 2018