WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ron L. Hilton v. Heng Zhong
Case No. D2014-1325
1. The Parties
The Complainant is Ron L. Hilton of Evergreen, Colorado, United States of America, represented by Thomas P. Howard LLC, United States of America.
The Respondent is Heng Zhong of Malden, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <virtualflybox.com> is registered with Mesh Digital Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2014. On August 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 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 August 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 2, 2014.
The Center appointed Carol Anne Been as the sole panelist in this matter on September 5, 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.
On September 22, 2014, Administrative Panel Procedural Order No. 1 ("Order No. 1") was issued by the Panel. The Complainant submitted a response to Order No. 1 on September 27, 2014. Pursuant to Order No. 1, the Respondent was granted five days from the date of the Complainant's submission of its response to Order No. 1 to make any comment on the additional evidence provided by the Complainant. The Respondent did not submit any comment.
4. Factual Background
The Complainant provided copies of webpages evidencing that the Complainant offers several editions of a downloadable app titled "Virtual FlyBox" for sale through Apple's iTunes App Store. The Complainant provided a copy of the home page at ˂thevirtualflybox.com˃ that presents an overview of the Complainant's Virtual FlyBox app and provides instructions on how to purchase same. According to a copy of a webpage provided by the Complainant from Apple's iTunes Connect Sales and Trends, between March 31, 2014 and June 23, 2014, there were 804 downloads of the Complainant's Virtual FlyBox apps.
The Complainant also provided copies of webpages indicating that the Complainant has promoted its Virtual FlyBox app via Facebook since at least as early as April 2014, including through some limited use of Facebook's paid advertising feature, as well as via Google+ since May 2014.
The Complainant provided evidence from the United States Patent and Trademark Office demonstrating its ownership of a United States trademark application for the word mark VIRTUAL FLYBOX, with a claimed date of first use at least as early as April 14, 2014. The description of services covered by the application is "downloadable computer software for aiding in the selection of fly fishing rigs based on relevant season, and time of day." The Complainant also provided evidence from the office of the Colorado Secretary of State demonstrating the Complainant's ownership of a Colorado trademark registration for the word mark VIRTUAL FLYBOX, with a claimed date of first use in commerce of February 12, 2014. The description of services covered by the registration is "software application for fly fishing uses."
The disputed domain name was issued to the Respondent on June 28, 2014, according to the WhoIs record. The disputed domain name has been used for sponsored links relating to, among other things, fly fishing goods and services, including instruction and guide services, as evidenced by the images of the website at the disputed domain name provided by the Complainant.
5. Parties' Contentions
The Complainant alleges that it established common law trademark rights in the mark VIRTUAL FLYBOX prior to the Respondent's registration of the disputed domain name and that the disputed domain name is identical or confusingly similar to the VIRTUAL FLYBOX trademark. The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
In addition to the evidence specified above, to support these contentions, the Complainant alleges that it (i) used its website at <thevirtualflybox.com> to promote its Virtual FlyBox app and provide information about fly fishing in Colorado since April 1, 2014; (ii) since April 5, 2014, Google searches for "Virtual FlyBox" and "VirtualFlyBox" listed the Complainant's "www.thevirtualflybox.com" website in the top five search results; and (iii) since June 1, 2014, Google searches for "Virtual FlyBox" and "VirtualFlyBox" listed the iTunes website and the Complainant's "www.thevirtualflybox.com" website in the top five search results.
The Complainant also asserts that the Respondent is an experienced dealer of domain names, owning more than two dozen domain names, which resolve to pay-per-click parking pages, that are confusingly similar to well-known trademarks or people's names. In support of this assertion, the Complainant provided copies of numerous webpages and WhoIs information which demonstrate that the Respondent is the registrant of many domain names that resolve to webpages that display sponsored links. The Complainant also provided a partial list from Whoisology.com which, according to the Complainant, purports to include 300 domain names that include the Respondent's email address in the WhoIs records; as well as what appears to be a sample report from Reverse WhoIs Lookup listing the Respondent as registrant of 977 domain names.
The Complainant further alleges that before the Complaint was filed, the title of the description that appeared in search results for the disputed domain name was "The Virtual Fly Box", in an attempt to cause increased consumer confusion with the Complainant's use of the domain name <thevirtualflybox.com> and use of The Virtual Flybox in some locations on its website and in its app. After the Complaint was filed, the Complainant alleges that the Respondent changed the title of the description in search results by removing the word "The" and the space between the words "Virtual" and "Flybox" (as well as adding additional text), to mask the Respondent's intentions.
The Complainant also claims that there is little, if any, third party use of the mark VIRTUAL FLYBOX or similar marks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it holds rights in the trademark VIRTUAL FLYBOX and that it uses such trademark in connection with software for guidance in the selection of fly combinations for fly fishing based on location, the relevant season, and time of day, since prior to the Respondent's registration of the disputed domain name. See, e.g., Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575("A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered"); Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 ("On the other hand, even if Complainant's mark … acquired goodwill and reputation only in a limited academic field, this would still be sufficient to establish common law trademark rights within the meaning of [paragraph 4(a)(i)] of the Policy").
The disputed domain name consists of the Complainant's exact VIRTUAL FLYBOX mark.
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Complainant claims that it has not authorized the Respondent to register the disputed domain name or to use the VIRTUAL FLYBOX mark in any manner. The Complainant also claims that the Respondent cannot demonstrate a legitimate purpose for registering the disputed domain name, and that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Complainant claims that the Respondent's principal interest in the disputed domain name is to sell sponsored links that exploit the consumer confusion caused by the Respondent's use of the Complainant's VIRTUAL FLYBOX mark and eventually to sell the disputed domain name to the Complainant.
The Complainant asserts further that the Respondent's lack of legitimate interest in the disputed domain name is supported by the lack of evidence linking the Respondent to fly boxes, fly fishing, fishing, etc.
The Panel is satisfied that the above establishes the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production therefore shifts to the Respondent to come forward with any rebuttal evidence demonstrating its rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0").
The Respondent has not provided any evidence to demonstrate rights or legitimate interests in the disputed domain name. Thus, the Respondent has failed to rebut the Complainant's prima facie case by providing the Panel with any evidence to show that the Respondent has rights or legitimate interests in the disputed domain name. See, e.g., The Gates Corporation v. WhoisGuard, Embelle Litumbe, WIPO Case No. D2013-0231("Respondents, by failing to submit a timely Response, has squarely violated paragraph 5(a) of the Rules. This Panel finds that no exceptional circumstances are present in this matter. Thus, the Panel infers that Respondents do not deny the facts asserted and contentions made by Complainant from these facts…Those facts that are not unreasonable will be taken as true, along with such inferences as flow naturally from the information provided by Complainant"); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 ("A number of panels have held that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrant's rights or interests, if any, in the domain name lies most directly within the registrant's knowledge. Other panels have held that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name"); Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 ("In short, Complainant has satisfied its burden of providing sufficient evidence to show that the Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names").
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Evidence of bad faith arises when, among other things, a respondent attempts to attract, for commercial gain, users to its website by creating a likelihood of confusion with the complainant's mark. As panels have consistently noted, "the relevant issue is...whether in all the circumstances of the case, it can be said that the Respondent is acting in bad faith." Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, the Complainant has submitted evidence demonstrating that the Respondent is an experienced dealer in domain names, regularly registering domain names and using them as pay-per-click ("PPC") landing pages. Several panels have placed a higher burden on domainers to avoid infringing trademark rights than on other respondents. "Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge." mVisible Technologies, Inc, v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141. See also Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448 ("However, those who register domain names, and particularly those who register domain names in large numbers using automated programs and processes, are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners…It seems to the Panel that the developing consensus is that the domainer must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others"); General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834 ("All the evidence in this case suggests that the activities of the Respondent, in registering and using domain names, is extensive. This further suggests that the Respondent may register domain names in bulk, as part of some automated process. It might be argued from this that the Respondent did not have an actual intention to act in bad faith. It is important to note that this does not prevent a finding of bad faith").
According to the Complainant, basic Internet searching via popular search engines conducted during the month that the Complainant registered the disputed domain name would have revealed the Complainant's website at <thevirtualflybox.com> as well the Apple's iTunes website's reference to the Complainant's Virtual Flybox app, within the first five search results. Similarly, a search at the United States Patent and Trademark Office would have revealed the Complainant's United States trademark application for VIRTUAL FLYBOX.
The Respondent's use of the disputed domain name is likely to cause confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, in an apparent attempt to capture traffic from consumers looking for information regarding the Complainant's Virtual FlyBox app or the Complainant's websites, and to direct such consumers instead to the Respondent's website at the disputed domain name. The website at the disputed domain name has posted links for websites which appear to compete with the Complainant's software sold under its VIRTUAL FLYBOX trademark, with the apparent intention of generating "click through revenue" for the Respondent. Such links may be understood as intended to attract traffic for the Respondent's commercial gain. See, e.g., Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 ("In this regard, it has been deemed by numerous WIPO panels that attracting Internet traffic and diverting it to website(s) selling products of complainant's competitors by using a domain name identical or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of the Policy"); Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 ("The Respondent's use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website"); Sanofi-Aventis, Aventis Pharma SA and Aventis Pharma Deutschland GmbH v. 1N4 Web Services, WIPO Case No. D2005-0938 ("Whatever relationship the Respondent had come to with the party who created the website content is, in the Panel's opinion, irrelevant to the finding for the purposes of this Policy that it was the Respondent which owned the domain name and which was responsible for whatever was posted there"); F. Hoffman-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327 ("[B]y using the domain names for search engine websites, that provide sponsored links to other websites, the Respondent attempts to attract Internet users for commercial gain to these websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites…Such exploitation of trademarks to obtain click-through commissions from the diversion of internet users has been considered in many decisions to be a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy").
Finally, the Panel also finds relevant the Complainant's contentions that there are few third party uses of the mark VIRTUAL FLYBOX, and that the Respondent's use of "The" in the title of the description that appeared in search results for the disputed domain name was directed at the Complainant's domain name, <thevirtualflybox.com>. In the Panel's opinion, these unrebutted contentions assist the Panel in drawing the inference that the Respondent's intent is to capitalize on the Complainant's trademark, and not the generic or dictionary meanings of the words "virtual" and "flybox".
The Panel finds the facts of this case to be particularly close concerning bad faith. However, the Panel is permitted to make common sense inferences based on circumstantial evidence. Absent any statement from the Respondent to the contrary, the Panel may infer that the Respondent cannot refute the Complainant's reasonable assertions of bad faith. See, e.g., MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270 ("Although a respondent is not obliged to participate in a domain name dispute, if it were to fail to do so, it would be vulnerable to the inferences that flow naturally from a complainant's not unreasonable assertions of fact. The information provided by the Complainant, including the Respondent's history, suggest bad faith in the acquisition and use of the subject domain name. The Respondent has done nothing to supplant that suggestion"); The Vanguard Group v. Lorna King, WIPO Case No. D2002-1064 ("There is no direct evidence that the Respondent knew of Complainant or its VANGUARD trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent's knowledge and intention may be determined by common sense inferences from circumstantial evidence"); The Gates Corporation v. WhoisGuard, Embelle Litumbe, WIPO Case No. D2013-0231.
Thus, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <virtualflybox.com> be transferred to the Complainant.
Carol Anne Been
Date: October 3, 2014