WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vicman Software, Inc. and Sazhin, Victor Victorovich v. Modern Empire Internet Limited
Case No. D2006-0205
1. The Parties
The Complainants are Vicman Software, Inc. and Sazhin, Victor Victorovich, Moscow 121108, Russian Federation, represented by International Legal Counsels PC, United States of America.
The Respondent is Modern Empire Internet Limited, Tseung Kwan O, China.
2. The Domain Name and Registrar
The disputed domain name <vicman.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2006. On February 16, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 17, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2006.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 28, 2006. 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, Victor Sazhin, operates and has been continuously operating as VicMan Software and/ or VicMan Software, Inc. since 2000 via its web site “www.vicman.net”.
The Complainant owns the United States Patent and Trademark Office trademark registration VICMAN for “computer software for digital image processing” in International Class 9.
In addition, Complainant is the copyright owner of all contents, texts, descriptions, images and computer codes relating to VICMAN software. This includes text and images found on the website “www.vicman.net”.
Complainant provides software solutions to home and business users via Internet and other media. Complainant provides to consumers more than twenty different software titles, varying from entertainment to database applications.
Complainant´s products have been featured and reviewed on major Internet sites, newspapers, magazines and television across Europe, South Asia and United States.
The Panel has not received any specific information on the activities of the Respondent apart from those that are mentioned in the Complaint.
5. Parties’ Contentions
I. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
The only difference between the disputed domain name <vicman.com> and Complainant’s trademark “VICMAN” is the addition of “.com” in the domain name.
As held in previous decisions under the UDRP the disputed domain name and the Complainant’s trademark must therefore be considered to be identical or confusingly similar.
II. The Respondent has no rights or legitimate interests in respect of the domain name;
The Respondent, Modern Empire International Ltd. lacks any legitimate interest in the disputed domain name.
There is no indication that Modern Empire is known under the disputed domain name, or any name that is similar to “vicman.com”.
The word VICMAN is an invented word, and as such is not one that would customarily be used with a legitimate purpose, unless seeking to create an impression of association with the Complainant, its product and goodwill.
Additionally, Modern Empire does not hold any trademark or service mark registrations similar to the Complainant’s trademark and the disputed domain name <vicman.com>, and to the best of the Complainant’s knowledge, the Respondent has not been commonly known by the disputed domain name, nor does the Respondent run any enterprise commonly and legitimately known by the disputed domain name.
Furthermore, the Complainant has never authorized, sanctioned or sponsored the Respondent to use its trademark VICMAN, as its licensee or in any other capacity.
Finally, the Respondent has not used or prepared to use the disputed domain name <vicman.com> or any name corresponding to the domain name in connection with bona fide offering of goods and services. The disputed domain name is not descriptive of the Respondent’s services. The disputed domain name directs to a site, which offers links to other similar unaffiliated sites in several general categories such as Finance, Services, and Entertainment. The Respondent’s site lacks any legitimate purpose, but simply redirects Internet traffic, which does not constitute a legitimate non-commercial or fair use.
Accordingly, the Complainant submits that the Respondent has no legitimate right in the disputed domain name.
III. The domain name was registered and is being used in bad faith.
The Complainant owns rights to the trademark VICMAN and has operated a very successful enterprise via the Internet under the VICMAN name for a number of years.
On the other hand, the Respondent is not known by the disputed domain name, or any name that is similar to the disputed domain name. Accordingly, the Complainant is of the opinion that the Respondent had knowledge about VICMAN and knowingly incorporated Complainant’s name in the domain name to prevent the Complainant from using its name in a corresponding domain name or to sell, rent, or otherwise transfer the domain name registration to the Complainant or to its competitor for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name, an unscrupulous practice known as “cyber-squatting.”
For all the above stated reasons, the Complainant submits that the Respondent registered the disputed domain name in bad faith
The Respondent not only registered the disputed domain name in bad faith, but also continues to use the domain name in bad faith.
Respondent thus intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. On its website and under the disputed domain name the respondent is offering several unrelated links, however, two of the links are offering links to services that are directly related to pictures and video categories. The Complainant’s services directly relate to digital image processing which is covered by Complainants trademark registration.
Respondent further uses the disputed domain name to direct traffic to several pornographic and adult websites. Furthermore, the Complainant’s mark is prominently displayed on the same web page as links to such sites. Therefore, by association of the Complainant’s trademark with pornographic and adult sites, the Respondent tarnishes the trademark. Accordingly, the Complainant further submits that the Respondent uses the disputed domain name in bad faith.
Finally, Complainant directs the Panels attention to the fact that the Respondent has previously registered domain names that are identical or similar to registered marks; See Croatia Airlines d.d, v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no legitimate interests in respects of the domain name; and
(3) the domain name has been registered and used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The contested domain name contains the Complainant’s trademark VICMAN in full, with the addition of the “.com” designation. For the purpose of these proceedings the domain name must be considered identical to the Complainant’s trademark.
The conditions in the Policy, paragraph 4(a)(i) are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this allegation and since the Complainant’s trademark VICMAN is an invented word with no specific meaning or connotation it is unlikely that any such rights or interests may exist.
Consequently the conditions in the Policy, paragraph 4(a)(ii), cf. 4(c) are also considered fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent’s registration and use of the domain names in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
Complainant’s trademark in the United States of America was applied for on October 18, 2004 and was registered on January 10, 2006. However, it is disclosed in the furnished registration certificate that the mark was used in commerce already in the year 2000 i.e. before the registration of the contested domain name. The use of Complainants mark is supported by the evidence presented to the Panel.
Given the geographically widespread use of the Complainant’s trademark and the invented nature of the word VICMAN, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
This is underlined by the fact that the disputed domain name is actually used for a website that offers different products and services some of which are of the same nature as those offered by Complainant. The Panel therefore finds that the Respondent by registering and using the domain name intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain. Under these circumstances it is not necessary for the Panel to address the additional arguments presented by the Complainant in support of Respondent´s bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case.
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, <vicman.com> be transferred to the Complainant.
Dated: April 10, 2006