WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Constant Hosting, LLC v. ConstantVPS Webmaster
Case No. D2015-1675
1. The Parties
The Complainant is Constant Hosting, LLC of Matawan, New Jersey, United States of America ("United States") represented by Walters Law Group, United States.
The Respondent is ConstantVPS Webmaster of Zagreb, Croatia.
2. The Domain Name and Registrar
The disputed domain name <constantvps.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 21, 2015. On September 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2015. The Center received four informal communications from the Respondent on September 25, 2015. The Center received a further informal communication from the Respondent on October 2, 2015. The Respondent did not submit any formal Response.
The Center appointed Alistair Payne as the sole panelist in this matter on October 20, 2015. 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 based in the United States offers virtual private server and webhosting services. It commenced its business in 1994 under the CONSTANT brand and mark and owns a service mark registration for the CONSTANT mark under registration number 4296358, filed November 16, 2011 and registered February 26, 2013. It owns the domain name <constant.com> at which it operates a website for promoting and selling its webhosting services.
The Respondent, also in the business of providing web hosting services, registered the disputed domain name on October 27, 2013, from which it operates a website for the promotion and sale of its services.
5. Parties' Contentions
The Complainant says that it owns registered trade mark rights in the CONSTANT mark as set out above and has promoted and made substantial use of its mark since 1994 for web hosting and cloud hosting services and as a consequence its mark has become well known. It submits that its mark is entirely incorporated into the disputed domain name and that the additional inclusion of the acronym "vps", meaning "virtual private server" does nothing to eliminate a likelihood of confusion or to distinguish the disputed domain name.
The Complainant says that "constant" is an arbitrary term when used in relation to the services for which it uses the term. It says that it has not authorised or licensed the Respondent to use the disputed domain name and that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant started using the CONSTANT brand and mark long before the Respondent and well after its registration of its CONSTANT trade mark. It further submits that the Respondent is not commonly known under the name or mark "Constant VPS" and has never applied for a licence or permission from the Complainant to use its mark.
The Complainant submits that the disputed domain name currently resolves to a website that offers services that are substantially similar to (and in direct competition with) the Complainant's services, namely Internet hosting services and specifically virtual private server (VPS) hosting and dedicated server hosting. It says that this results in confusion amongst Internet users looking for the Complainant's website on the Internet and for this reason it is very probable that an Internet user might be misled into thinking that the web page is related to or even operated by the Complainant. This, says the Complainant, is not a bona fide offering of services, nor is it a legitimate noncommercial or fair use of the disputed domain name.
As far as bad faith is concerned the Complainant submits that its CONSTANT mark is a well-known mark with a widespread reputation, which was in use well before the registration of the disputed domain name, that the Respondent must have been aware of the Complainant and its mark, and sought to register the disputed domain name for the purpose of capitalising on its fame and reputation by redirecting Internet users to its own website. It says that by using a confusingly similar domain name to directly compete with the Complainant's web hosting and services business, the Respondent's actions amount to bad faith registration and use under the Policy in terms of paragraph 4(b)(iii). It further submits that the Respondent's diversionary use of the Complainant's CONSTANT mark to redirect Internet users to its own website, which offers competing services for commercial gain, amounts to bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
The Respondent did not file a formal response but sent five emails to the Center prior to the due date for a Response and the Panel will accept these emails into the record. In essence, the Respondent noted in these emails that it did not steal the "constant" name or mark, that it sells its services mainly in Europe, that it does not "touch" the Complainant's business, and finally asserted that it is "Constantvps" a different company from the Complainant and that it was otherwise inclined to ignore the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a United States registered trade mark for its CONSTANT mark under registration number 4296358 as detailed above. The Panel notes that this mark is wholly incorporated into the disputed domain name which only differs from the CONSTANT mark by the addition of the letters "vps". The addition of this acronym, which as submitted by the Complainant, appears to stand for "virtual private server", does not in the Panel's view distinguish the disputed domain name from the Complainant's CONSTANT mark. The dominant element of the disputed domain name is the word "constant" which, although a generic English word, is relatively distinctive as a mark in relation to web hosting services, and in this regard the addition of the acronym "VPS" only serves to increase potential internet user confusion in circumstances that it is taken to be an acronym for a "virtual private server". As a consequence, the Panel finds that the disputed domain name is confusingly similar to the CONSTANT mark and the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that it has not authorised or licensed the Respondent to use the disputed domain name and that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant started using the CONSTANT brand and mark long before the Respondent and well after its registration of its CONSTANT trade mark. It further submits that the Respondent is not commonly known under the name or mark "Constant VPS" and has never applied for a licence or permission from the Complainant to use its mark. It says that the Respondent's use of the disputed domain name for similar services is only aimed at confusing and misleading Internet users seeking the Complainant's service.
The Respondent denies taking the Complainant's name, and says that in any event it provides its services mainly in Europe. However, even a very brief review of the Respondent's website at the disputed domain name indicates that the Respondent bills for its services in United States dollars, maintains a dedicated server in the United States and prefaces its terms and conditions with the requirement that users comply with United States law. This indicates to the Panel that the Respondent's business has at the least a very strong connection with the United States and that it is more than likely that it is targeted at United States and North American based Internet users as well as European ones.
Accordingly, the Panel considers that particularly North American based Internet users who are familiar with the Complainant's CONSTANT mark and business offering, may very well be confused into incorrectly assuming that the disputed domain name has some association or connection with the Complainant (when this is not the case) and could be wrongfully diverted to the Respondent's website. The Respondent has not otherwise rebutted the Complainant's case under this element and of the Policy and has failed to explain how it came to choose the disputed domain name. In these circumstances and for the reasons set out under Part C below, the Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant and therefore the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The Respondent registered the disputed domain name on October 27, 2013, many years after the commencement of the Complainant's business under its CONSTANT mark, two years after the date of filing of the Complainant's trade mark, and several months after registration of its CONSTANT mark in the United States. In view of the distinctive nature of the CONSTANT mark (as described in Part A above), the links of the Respondent's business to the United States as noted under Part B above, the established nature of the Complainant's business by that time, its prior trade mark registration and the Complainant's website for its dedicated server hosting services, there is a very strong inference that the Respondent registered the disputed domain name with knowledge of the Complainant's mark and business.
It is clear that the Respondent is offering very similar services at the disputed domain name to those offered by the Complainant from its website at "www.constant.com". The Respondent is using the disputed domain name for commercial purposes and as noted above, Internet users, particularly in North America, could well be confused into thinking that the disputed domain name has some connection or association with the Complainant (that it does not have) and could then be misdirected to the Respondent's website. This is all the more the case as the Complainant and the Respondent offer extremely similar and in many respects provide competing services from their respective websites. It seems to the Panel, on the balance of probabilities, that the Respondent registered the disputed domain name with knowledge of the Complainant's business and mark and infers that it did so, at least in part, to take advantage of the established goodwill attaching to the Complainant's CONSTANT brand and mark by 2013. As a result the Panel finds that the Complainant has made out the elements required to demonstrate bad faith registration and use under paragraph 4(b)(iv) of the Policy. In these circumstances it is unnecessary for the Panel to make any finding in relation to paragraph 4(b)(iii) of the Policy.
Accordingly, the Panel finds that under the third element of the Policy the Respondent registered and used 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 <constantvps.com> be transferred to the Complainant.
Date: October 26, 2015