WP IP LLC v. Direct Navigation Associates/ Moniker Privacy Services
Case No. D2007-1638
1. The Parties
The Complainant is WP IP, LLC, c/o Kimberly Gilman, New York, New York, United States of America, represented by Donovan & Yee, LLP, United States of America.
The Respondent is Direct Navigation Associates/ Moniker Privacy Services, Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <vellux.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2007 naming Moniker Privacy Services as Respondent. On November 8, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 13, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Direct Navigation Associates is listed as the registrant and providing the contact details. In response to the Invitation to Add Disclosed Registrant by the Center, the Complainant filed an amendment to the Complaint on November 19, 2007. 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”), 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 November 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 8, 2008. 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.
For the purposes of these proceedings, the Panel finds that both Direct Navigation Associates and Moniker Privacy Services are properly named as Respondents. See, Société Air France v. Paula O\’Rourke / WhoisProtector Inc.,WIPO Case No. D2007-0014, and the cases cited therein.
4. Factual Background
The Complainant is a manufacturer and marketer of bed and bath home fashions. The Complainant’s VELLUX branded products have been sold throughout the United States for over 30 years. The Complainant has sold over 50 million VELLUX branded blankets worldwide. The Complainant’s VELLUX products have been sold in many different retail stores, including Macy’s, Kohls, JC Penney, Bloomingdales and Sears.
The Complainant owns a U.S. trademark registration (No. 936,147) for the mark VELLUX, which was registered on June 20, 1972.
The Complainant has an active presence on the Internet, and operates a website under the domain name <martex.com>. This website is devoted exclusively to the promotion of the Complainant’s brands, including VELLUX.
The domain name <vellux.com> was first created on May 15, 2003. At the date of the Complaint, the Respondent was operating a website which provided links to websites of the Complainant’s competitors.
5. Parties’ Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainant contends that the domain name <vellux.com> is confusing similar to the Complaint’s registered trademark VELLUX, because it replicates the Complainant’s trademark in its entirety.
(b) Rights or Legitimate Interests
The Complainant contends that the domain name is not the trade name or company name of the Respondent, and that the Respondent is not commonly known by the VELLUX trademark. The Complainant submits that the Respondents is not affiliated or related to its trademark or business, and is not a licensee or otherwise authorized to use the VELLUX trademark. The Complainant submits that the trademark VELLUX is a coined term created by the Complainant and has no inherent meaning. The Complainant’s rights in the VELLUX trademark pre-date the registration of the domain name <vellux.com> by more than 30 years.
The Complainant also contends that the Respondent is not using the domain name in a manner which offers bona fide goods and/or services. The Complainant submits that the Respondent is operating a website that provides links to websites of Complainant’s competitors for the purpose of monetary gain. The Respondent has not established any legitimate right or interest in the disputed domain name.
(c) Registered and Used in Bad Faith
The Complainant contends that the domain name <vellux.com> has been registered and is being used in bad faith based on the following factors: (i) Respondent’s knowledge of the Complainant’s use of the VELLUX trademark at the time of registration of the disputed domain name; (ii) Respondent’s registration of a confusingly similar domain name; and (iii) Respondent’s use of a confusingly similar domain name to operate a website that provides links to websites of Complainant’s competitors for purposes of monetary gain.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the VELLUX trademark, by virtue of U.S. Registration No. 936,147, which was attached to the Complaint.
The Panel finds that the domain name <vellux.com> is confusingly similar to the Complainant’s registered trademark, as the domain name replicates the Complainant’s trademark in its entirety.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any legitimate right or interest in the domain name in dispute. The Respondent registered the domain name 30 years after the Complainant had commenced use of its VELLUX trademark. The Panel finds no evidence that the Respondent was ever known by the disputed domain name. The Panel accepts the Complainant’s assertion that the Respondent is not affiliated, related or ever licensed or authorized to use the VELLUX trademark.
The Panel finds that the Respondent is not using the domain names in connection with a bona fide offering of goods and services. The Complainant has filed evidence in this proceeding showing that the Respondent is operating a website in connection with the disputed domain name which provides links to websites of Complainant’s competitors. The operation of a “click-through” site is not evidence of a bona fide offering of goods and services. (Amgen Inc. v. Sam Chou,
WIPO Case No. D2006-0715 and MasterCard International Incorporated v. Eric Hochberger,
WIPO Case No. D2006-1050).
The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The uncontested evidence shows that the Complainant’s trademark VELLUX is a coined term which is distinctive of the Complainant and its products. The Complaint has also established that the VELLUX trademark is well-known in the U.S. by virtue of substantial sales over more than 30 years. Panel is therefore prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the domain name <vellux.com>.
The Panel is also prepared to find that the Respondent registered the disputed domain name and is using the domain name for the operation of a click-through website which provide links to websites of competitors of the Complainant. The Respondent is thereby deliberately trading on the goodwill of the Complainant, by attracting internet users and diverting internet traffic intended for the Complainant to the Respondent’s website for the purpose of monetary gain. Prior Panels have recognized this type of conduct as evidence of bad faith (see MasterCard International Incorporated v. ZJ,WIPO Case No. D2007-0687 and MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050).
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
7. Decision
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 <vellux.com> be transferred to the Complainant.
Christopher J. Pibus Sole Panelist
Dated: January 22, 2008
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