WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Visual Defence Inc. v. Barry Tal
Case No. D2014-0099
1. The Parties
The Complainant is Visual Defence Inc. of Ontario, Canada, represented internally.
The Respondent is Barry Tal of New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <visualdefence.net> and <visualdefence.org> are registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2014. On January 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 24, 2014, 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 January 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 28, 2014. 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 a Canadian corporation which supplies inter alia digital security systems. The Complainant has carried on business in the security services industry under the VISUAL DEFENCE mark since 2005. The Complainant’s clients include national government departments, multinational corporations, universities, municipal transport authorities and international airports. The Complainant was previously listed on the London Alternative Investment Market in 2005.
The Complainant has featured prominently in media reports in national newspapers and business publications since 2005 concerning inter alia contracts which it has secured and innovations which it has made in the field of security surveillance. The Complainant is the owner of various patent and trade mark rights in Canada and the United States of America in respect of its security products. The Complainant is a member of a trade association named ONVIF which seeks to standardize IP-based physical security globally.
The disputed domain names were both created on March 26, 2013. Little is known of the Respondent, who has given the name “Barry Tal” as the registrant of both disputed domain names. This is the same name as the Complainant’s founder and Chief Executive Officer. Each of the websites associated with the disputed domain names points to pornographic content.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to a common law trade mark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Complainant asserts that the mark VISUAL DEFENCE is closely associated with the Complainant in the international security services industry and produces evidence of the media recognition of such mark. The Complainant notes that but for the different generic Top-Level Domain (gTLD), each of the disputed domain names would be identical to the Complainant’s trade mark and its website address “www.visualdefence.com”.
The Complainant submits that there is no evidence that the Respondent has or is planning to use “Visual Defence” in connection with a bona fide offering of goods and services and points out that both disputed domain names point to pornographic websites. The Complainant states that the Respondent’s self-identification during registration of the disputed domain names as “Barry Tal” suggests that the Respondent’s intended use of the disputed domain name was to tarnish the Complainant’s mark.
The Complainant contends that numerous panels have held that pornographic content on a website under a disputed domain name suggests tarnishment of a complainant’s mark and is evidence in itself of bad faith. The Complainant adds that the clear distinction between the content on the Complainant’s website and the pornographic content on the disputed domain names is not a defence as the essence of bad faith in such cases lies in the capacity of the confusingly similar domain name to tarnish the relevant mark (citing CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trade mark and secondly that the disputed domain name is identical or confusingly similar to such trade mark.
The Complainant has asserted that it has rights in the common law trade mark VISUAL DEFENCE. On this question, the Panel turns to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trade mark rights?”, which provides the following consensus view:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trade mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trade mark. For a number of reasons, including the nature of the Internet, the availability of trade mark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trade marks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trade mark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trade mark fame for granted.”
The Panel respectfully adopts the consensus view. In the present case, the Panel is satisfied that the Complainant has produced sufficient evidence in the form of recognition in national newspapers, business publications, commercial news services and trade press to demonstrate that the mark VISUAL DEFENCE has become a distinctive identifier associated with the Complainant. Furthermore, the Complainant has shown that it has carried on business under this name for almost a decade, including for a period as a publicly traded corporation, and that it has achieved considerable sales, based upon the news reports of contracts which it has been awarded by substantial entities such as international airports and government departments. In these circumstances, the Panel finds that the Complainant has rights in the mark VISUAL DEFENCE.
In determining the question of identity or confusing similarity between the disputed domain names and the Complainant’s mark, the Panel disregards the applicable top-level suffix in each of the disputed domain names, namely “.net”, and “.org” respectively, as these are a technical requirement of registration and do not have any other significance for present purposes (see paragraph 1.2 of the WIPO Overview 2.0). Having done so, the Panel finds that there is identity between both of the disputed domain names and the Complainant’s common law mark.
In these circumstances, the Panel finds that the Complainant has established the first element under the Policy in respect of both disputed domain names.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trade mark 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 trade mark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant (see paragraph 2.1 of the WIPO Overview 2.0).
In the present case, the Complainant submits that there is no evidence that the Respondent has used or is planning to use the term “Visual Defence” in connection with a bona fide offering of goods and services and points out that both disputed domain names point to pornographic websites. The Complainant notes that the Respondent appears to have selected the name of the Complainant’s Chief Executive and founder as the registrant of the disputed domain names. The Complainant indicates that, as such, the Respondent’s use of the disputed domain name is intended to tarnish the Complainant’s mark.
The Panel is satisfied that the Complainant’s contentions constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The burden of production therefore shifts to the Respondent to bring forward evidence of any such rights or legitimate interests. The Respondent has not however participated in the administrative proceeding, nor can the Panel identify on the available record any case which the Respondent might have made in terms of paragraph 4(c) of the Policy or otherwise to demonstrate rights and legitimate interests in the disputed domain names. The Respondent has therefore failed to rebut the prima facie case made by the Complainant.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a 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 trade mark or service mark or to a competitor of that 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 trade mark 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 web site or other online 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”.
On this topic, the Complainant focuses on the identity of the disputed domain names and the Complainant’s mark, the use of both of the disputed domain names to point to pornographic content and the insertion in both cases of the Complainant’s founder and Chief Executive’s name in the registrant field of the WhoIs for the disputed domain names. The Complainant submits that these circumstances demonstrate an intent on the part of the Respondent to target the Complainant and its rights both at the time of registration of the disputed domain names and afterwards, and thus constitute registration and use in bad faith.
The Panel notes that the examples listed in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which bad faith registration and use may be found. Accordingly, the fact that the present circumstances may not fit squarely into such examples is not determinative of the matter. The critical issue in a case such as this, where at-issue domain names have been linked to pornographic websites, is that there must still be an element of targeting the Complainant or its mark, or at very least the Respondent must have had the complainant or its trade mark in mind when selecting the domain name (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). In the present case, the Panel is satisfied that the circumstances indicate that the Respondent has set out to, and has engaged in, targeting the Complainant through the registration and use of the disputed domain names. The Panel agrees with the Complainant that this is evident from the identity between the disputed domain names and the Complainant’s mark together with the use by the Respondent of the Complainant’s founder and Chief Executive’s name in the WhoIs record for each disputed domain name.
The Respondent has not responded to the Complaint and thus has not provided the Panel with any submissions or evidence showing or tending to show any alternative good faith motivation for its actions in registering and using the disputed domain name. In light of the Complainant’s submissions, and considering the available record, the Panel cannot conceive of any such motivation which the Respondent might have had.
In all of these circumstances, the Panel finds on the balance of probabilities that both of the disputed domain names were registered and used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 names <visualdefence.net> and <visualdefence.org> be transferred to the Complainant.
Andrew D. S. Lothian
Date: March 14, 2014