Vectorvest Inc. v. Texas International Property Associates
Case No. D2008-0426
1. The Parties
The Complainant is Vectorvest Inc., Akron, Ohio, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Names and Registrar
The disputed domain names are <vestorvect.com> and <vetorvest.com>, which are registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2008. On March 20, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. After two reminders, on March 27, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for both domain names, 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”), 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 April 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2008. The Response was filed with the Center on April 21, 2008.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on May 14, 008. 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
Complainant VectorVest provides customers and subscribers with proprietary data and analysis of over 13,500 stocks. Complainant holds several US registrations for the mark VECTORVEST for goods and services related to stock analysis, which date to first use on February 1, 1987. Other international trademark applications are pending. Complainant expanded its market to online services in May 2001. Complainant maintains a website at “www.vectorvest.com.”.
The domain <vetorvest.com> was created on January 30, 2005. As shown in Exhibit 8 to the Complaint, <vetorvest.com> reverts to an active website, with a home page that states “Welcome to vetorvest.com For resources and information on Stock analysis and Stock screening”. On that same page are links for “Related Searches,” all of which appear to be related to stock analysis. The links revert to various sources of stock analysis, such as “www.Scottrade.com”, “www.TDAmeritrade.com”, and “www.Schwab.com”. At the bottom of the home page, under “More Related Searches,” the first one is labeled “Vectorvest Stock Analysis.”
The domain <vestorvect.com> was created on October 18, 2005. <Vestorvect.com> reverts to a home page that has links related to vests and other men’s apparel. Nothing appears to be related to stock analysis.
5. Parties’ Contentions
A. Complainant
Rather than set forth separate allegations against each disputed domain name, Complainant’s allegations address the disputed domain names in toto as “The Warehoused Domain Names.” Complainant alleges that the names contain elements identical to and/or confusingly similar to the VECTORVEST marks, based on visual and phonetic elements, and that Respondent is engaged in intentional typosquatting. Complainant alleges that the names appear to provide search engine services pointing users to goods and services similar to and identical to those provided by VectorVest, causing confusion. Complainant states that Respondent is not related to VectorVest, nor licensed to use the VECTORVEST marks. Complainant further alleges that the names “should be considered as having been reserved and being used in bad faith” [emphasis in the original]. Additionally, Respondent allegedly had constructive and actual knowledge of the VECTORVEST marks prior to registering the names, with the intent to profit from Internet users looking for Vectorvest but who mis-type the URL.
B. Respondent
Respondent filed a timely response on April 21, 2008. Respondent states that the disputed domain names are not identical to the VECTORVEST marks, and that the domain names are composed of surnames or generic terms, to which Complainant is not entitled to protection. Respondent also argues that Respondent has rights and legitimate interests in the names, since for over two years it has operated a legitimate business of targeting advertising searches, for which the searches result in content controlled by Google and Yahoo, not Respondent. Respondent states that it did not have actual knowledge of Complainant or its marks at the time of registration, and has registered and used the names in good faith.
6. Discussion and Findings
Paragraph 4(a) of the UDRP provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
This Panel finds it necessary to discuss each domain name separately.
A. <vetorvest.com>
1. Identical or Confusingly Similar
It is not disputed that Complainant has rights in the VECTORVEST marks. Complainant owns several US registrations, and uses the marks with respect to its goods and services related to stock analysis.
The only difference between the disputed <vetorvest.com> and Complainant’s mark VECTORVEST and Complainant’s domain name, <vectorvest.com>, is the omission of one letter, “c”, from the first syllable. The omission of a letter has been found to be confusingly similar, as an example of typo-squatting, and is not sufficient to differentiate the domain name from the Complainant’s trademark. E.g. Microsoft Corp. v. Whois Privacy Protection Service,
WIPO Case No. D2005-0642; Accor v. Howell Edwin, WIPO Case No. D2005-0980; HM Publishers Holdings Ltd. v. Webserve LLC,WIPO Case No. D2005-0741; SiemensAG v. Siemens.Com, WIPO Case No. D2005-0927; Netstock, Inc. v. Music Wave, WIPO Case No. D2002-0441; Hershey Foods Corp. and Hershey Chocolate & Confectionary Corp. v. Amcore & Co. For Sale Domains $250 or Best Offer, WIPO Case No. D2003-0838).
The likelihood of confusion is blatant inasmuch as any one who is looking for the Complainant’s website may erroneously type the disputed domain name and presume that the respective website is linked, sponsored or otherwise associated to the Complainant. This circumstance is especially enhanced because the Complainant uses the domain name <vectorvest.com> as the address of its official website.
The confusing similarity is reinforced by Respondent’s use of <vetorvest.com> to link to sources of information on stock analysis, Complainant’s business, as discussed further below.
The Panel finds that the disputed domain name <vetorvest.com> is identical or confusingly similar to Complainant’s registered mark, and that Complainant meets the first criterion of paragraph 4(a) of the Policy with respect to <vetorvest.com.>
2. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] 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.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
Complainant states that Respondent has no rights or legitimate interests in either disputed domain name. Respondent is not affiliated with Complainant, nor has Complainant licensed Respondent to use Complainant’s marks in any way. Thus, this Panel will address whether Respondent has shown that it does have a right or legitimate interest in the domain names, pursuant to Paragraph 4(c) of the Policy.
Paragraph 4(c)(i)
Respondent argues that before any notice of the dispute, respondent used the domain name in connection with a bona fide offering of goods or service. Respondent alleges that the domain name contains a surname, “Vetor,” which is permitted use. It states that it had not ever heard of Complainant or its marks, and that Respondent began using the disputed domain name two years prior to receiving notice from Complainant.
None of these arguments provide credible evidence that Respondent used <vetorvest.com> in connection with a bona fide offering of goods or services, in light of the facts presented. Respondent has never been known by the surname “Vetor,” nor has it alleged or proven that Respondent has any relationship to anyone with that surname. Despite Respondent’s protestations that it had never heard of Complainant until receiving notice, <vetorvest.com> makes numerous references to Complainant and its products, which leads to a legitimate conclusion that Respondent did know of Complainant.
Accordingly, this Panel concludes that Respondent did not use <vetorvest.com> in connection with a bona fide offering of goods or services pursuant to Paragraph 4(c)(i) of the Policy.
Paragraph 4(c)(ii)
With respect to Paragraph 4(c)(ii) of the Policy, Respondent does not operate any business commonly known by either of the disputed domain names, and therefore has not prevailed under this paragraph.
Paragraph 4(c)(iii)
The domain name <vetorvest.com> is simply a misspelling of Complainant’s marks, which may misleadingly divert consumers to Respondent’s website. <Vetorvest.com> reverts to a website about stock analysis, with specific references to Complainant and its products. Certain links revert to Complainant’s competitors. These links provide click-through revenue to Respondent, compelling a finding that Respondent had the intent to misleadingly divert consumers to Respondent’s website for commercial gain under this Paragraph.
3. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
As set for above, despite Respondent’s statements to the contrary, it is reasonable to infer that Respondent knew of Complainant and its marks when Respondent registered and established <vetorvest.com >, since the site deals only with stock analysis, and specifically lists Complainant and its products.
Respondent makes a substantial argument that pay-per-click websites are not per se unlawful or illegitimate, and that its business model is lawful. Respondent states that it owns thousands of websites, registered to provide locator services to Internet users. Respondent argues that this is a legitimate business, not undertaken in bad faith, as held in various previous Panel decisions. However, a body of decisions indicates that the following test can be used to determine whether Respondent’s practices would most likely be regarded as legitimate:
(i) Where the Respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;
(ii) The Respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
(iii) The domain name in question is a “dictionary word” or a generic or descriptive phrase;
(iv) The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
(v) There is no evidence that the Respondent had actual knowledge of the Complainant’s mark.
Applying this test to <vetorvest.com,> the domain name is not a “dictionary word”, or generic or descriptive. It is identical or confusingly similar to Complainant’s distinctive mark.
Respondent has made no good faith efforts to avoid registering and using a domain name identical or confusingly similar to Complainant’s mark. Respondent did not conduct even a simple search of the distinctive terms it chose to include in its website, which, if conducted, would have revealed Complainant, its website, and its marks. Those registering large numbers of domain names for the purposes of pay-per-click advertising cannot turn a blind eye to the existence of marks held by others, and must make a reasonable good faith effort to avoid registering and using domain names that are identical or confusingly similar. See, e.g., Grundfos, supra, quoting Paragraph 2 of the Policy: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” Consequently, under the Media General test, Respondent has not proven that its practices constitute a legitimate business.
Given the admitted extent of Respondent’s illegitimate business practices, this Panel concludes that Respondent has engaged in a pattern of such conduct, which qualifies as bad faith under Paragraph 4(b)(ii).
As set forth above, the facts indicate that Respondent has used <vetorvest.com> to misleadingly and intentionally divert customers to Respondent’s site. This creates a likelihood of confusion, given that Respondent’s site refers to Complainant and its products. Further, this clearly has been for commercial gain, since the Respondent gains revenue from the click-through to other sources of stock analysis, including Complainant’s competitors. This Panel finds that Complainant has proven that Respondent has violated Paragraph (4)(b)(iv) by intentionally attempting to attract, for commercial gain, Internet users to <vetorvest.com> by creating a likelihood of confusion with Complainant’s marks.
B. <vestorvect.com>
This Panel finds it convenient to first address whether Complainant has carried its burden with respect to Paragraph 4(a)(iii) of the Policy, whether the domain name has been registered and used in bad faith.
Respondent argues that pay-per-click websites are not per se unlawful or illegitimate, and that its business model is lawful. This Panel agrees that under previous Panel decisions the use of this business model is not in and of itself unlawful. See, e.g., Landmark Group v. Digimedia LP, No. 285459 (NAF August 6, 2004) (“as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy.”). In this instance, the predominant syllable of the accused domain name is a generic term, “vest,” and, at least in the absence of evidenced intent to target and free-ride on the Complainant’s mark, thus fits under the permissible activities contemplated in Landmark.
Most compellingly, Respondent’s use of the domain name has nothing to do with Complainant or its industry. When one types <vestorvect.com> in a browser, it reverts to a home page that contains links related to vests and other men’s clothing. Unlike the discussion with respect to <vetorvest.com> above, nothing about the page references Complainant, its marks, products or services, or leads to Complainant’s competitors’ sites.
Accordingly, this Panel finds that the domain name has not been registered and used in bad faith under Paragraph 4(a)(iii) of the Policy. Given this finding, the Panel finds that with respect to <vestorvect.com>, the Respondent has not violated the Policy, and it is not necessary to discuss or reach conclusions under Paragraphs 4(a)(i) and 4(a)(ii).
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, <vetorvest.com> be transferred to the Complainant. The Complaint is denied as to the domain name <vestorvect.com.>
Sandra A. Sellers Sole Panelist
Date: June 13, 2008
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