The Complainant is Efiling, LLC, United States of America (“United States” or “US”), represented by James M Smedley LLC, United States.
The Respondent is Mr. German Castillo, Vital Records Direct SL, Spain, represented by Lucas, Campins & Henry, Spain.
The Disputed Domain Name <onlinevitalus.com> is registered with MarkMonitor Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2019. On May 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 30, 2019.
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” 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 May 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Response was filed with the Center on June 19, 2019.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 21, 2019. 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.
The Complainant, Efiling, LLC, is company based in the United States that provides services related to the preparation, acquisition, and filing of vital records in the United States. Vital records are records of life events kept under governmental authority, such as birth certificates and death certificates.
The Complainant operates its business through its website “onlinevitals.com” since August 2016.
The Complainant is the holder of the following United States trademark registration:
- ONLINE VITALS, word mark registered with the United States Patent and Trademark Office (“USPTO”) in the Supplemental Register under No. 5577665 on October 2, 2018, in class 35, with an application date on April 13, 2018, and a date of first use in commerce on August 15, 2016.
The Disputed Domain Name <onlinevitalus.com> was registered by the Respondent on September 28, 2017. The Disputed Domain Name resolves to a website offering services related to the preparation, acquisition, and filing of vital records in the United States. The homepage connected to the Disputed Domain Name reads:
“O.V.U.S. (Onlinevitalus) is an independent agent that can be used by everyone to obtain government-approved vital record certificates issued by each state’s Department of Health or Vital Records offices. We have streamlined the complicated application process and offer a 100% safe and easy online order form which allows you to request your vital record certificate online in record time.”
- (O.V.U.S. ONLINE VITAL US), figurative mark registered with the USPTO in the Principal Register under No. 5773425 on June 11, 2019, in class 42, with an application date on August 8, 2018, and a date of first use in commerce on July 30, 2018.
On April 24, 2018, the Complainant, through its counsel, sent a cease and desist letter to the Respondent, demanding that the Respondent rewrite and rearrange all texts on the website connected to the Disputed Domain Name on the basis of an alleged infringement of the Complainant’s copyrighted content placed on another website of the Complainant, “vitalrecordsonline.com”. In the cease and desist letter, the Complainant claimed that the Respondent had reproduced substantial portions of the Complainant’s terms and conditions on that website.
On May 18, 2018, the Respondent replied to this cease and desist letter by way of signed letter in which the Respondent stated that it had not infringed any copyrights since the terms and conditions consisted of legal extracts widely and commonly used in the industry and since a text comparison tool had revealed that there were hardly similarities between the content of the respective websites. The Respondent further stated that it had nevertheless updated the content of its website to make it as distinctive as possible and to reinforce its distinctive image and identity.
On June 6, 2018, the Complainant, through its counsel, responded to the Respondent’s letter via email, requesting that the Respondent changes the Disputed Domain Name due to similarities with the Complainant’s United States trademark application for the sign ONLINE VITALS. The Complainant claimed that it received multiple correspondence from the its customers indicating customer confusion and stated:
“While we recognize OVUS as another provider of vital records online, Efiling currently has common law rights to the term ONLINE VITALS, and furthermore has applied for a US trademark application for the term ONLINE VITALS (US. Serial No. 87876345).”
On June 26, 2018, the Respondent replied to this email by stating that it intended to find an amicable solution to the alleged customer confusion but maintained that it had not infringed any copyright or other intellectual property rights since it had been operating in the market way before the Complainant’s trademark application for ONLINE VITALS.
Afterwards, between October 29, 2018, and January 3, 2019, the Complainant and the Respondent exchanged several more emails regarding the Complainant’s intellectual property rights and the demand to change the Disputed Domain Name. In an email of November 30, 2018, the Complainant proposed to conclude a licensing agreement, whereby the Respondent was allowed to continue using the Disputed Domain Name in exchange for the payment of royalties to the Complainant. The Respondent did not agree to this proposal and the parties did not find an amicable solution.
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant asserts that its ONLINE VITALS trademark is well-known and has established secondary meaning in the United States. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use and has provided false business information on the website connected to the Disputed Domain Name. Also, according to the Complainant, the Respondent is in no way affiliated with nor authorized by the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant also claims that the Respondent has registered and uses the Disputed Domain Name with an intention to trade on the Complainant’s rights and reputation, to disrupt the Complainant’s business, and to drive traffic to its website for its own commercial gain.
In its Response, the Respondent claims that the Complainant’s ONLINE VITALS mark is composed of generic terms, limiting the Complainant’s rights. The Respondent also contends that the generic terms “online”, “vitals” and “vital records” are commonly used by a multitude of service providers that provide identical services to the Complainant and the Respondent. The Respondent further claims that it has rights and legitimate interests in the Disputed Domain Name on the basis that it has operated a legitimate business under the Disputed Domain Name since before the Complainant registered or even applied for its ONLINE VITALS mark. The Respondent contends that it has registered the Disputed Domain Name in good faith without any knowledge of the Complainant’s then nonexistent rights. The Respondent provides that it had responded in good faith to the Complainant’s unfounded allegations and demands and that it never intended to create any customer confusion. To the contrary, the Respondent maintains that it took the necessary actions to distinguish itself from the Complainant, despite continued harassment from the Complainant.
Finally, the Respondent argues that the Complainant has intentionally provided incomplete material evidence and that the Complainant knew, or should have known, that it would be unable to prove a lack of rights or legitimate interest by the Respondent, or that the Respondent has registered or used the Disputed Domain Name in bad faith. The Respondent asserts that the Complainant has initiated the present UDRP proceedings solely as a fallback after the Complainant was unable to make the Respondent change the Disputed Domain Name or obtain royalties through a licensing agreement with the Respondent. The Complainant is therefore guilty of Reverse Domain Name Hijacking (“RDNH”) and abuse of the administrative process, according to the Respondent.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements.
To prove this element, the Complainant must first establish that there is a trademark in which it has rights. The Complainant has established to be the holder of a trademark registration for the sign ONLINE VITALS, registered solely in the USPTO Supplemental Register.
The Complainant relies on trademark registrations listed solely on the USPTO Supplemental Register to show secondary meaning, in order to establish trademark rights under the Policy. However, under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights (See Section 1.2.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
To demonstrate secondary meaning, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. Relevant evidence demonstrating such secondary meaning includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. In cases involving marks that are comprised solely of descriptive terms, which are not inherently distinctive, there is a greater onus on the complainant to present evidence of secondary meaning (See Section 1.3, WIPO Overview 3.0).
In the present case, the Complainant provides a notarized affidavit from its CEO listing the amount spent on online advertising, the number of customers, and the sales revenue of the Complainant in 2016, 2017, and 2018, indicating a substantial increase in all three areas. The Complainant also provides evidence of its online advertising efforts through its “Google Adwords” statistics page which indicates advertising costs, click-through rate, and Internet user impressions. Although this evidence indicates the Complainant’s growth and online advertising efforts, it does not demonstrate the Complainant’s position and recognition in the market.
Considering the descriptive nature of the Complainant’s ONLINE VITALS mark for providing online services related to vital records, a high threshold of public recognition must be maintained to establish secondary meaning of the mark. Limited factual research conducted by the Panel reveals that numerous businesses use the terms “online”, “vital” and “vitals” to provide identical services to the Complainant related to United States vital records. The Complainant has also only used the mark ONLINE VITALS for less than three years, while various competing websites using similar terms have been active for a longer time. The Complainant has not presented evidence that indicate that consumers connect the terms “online vitals” with its business as opposed to the numerous other vital record websites. To the contrary, in its communication with the Respondent, the Complainant acknowledged the Respondent asanother provider of vital records online.
In light of the above, the Panel considers that, according to the limited record before it, the Complainant does not meet the threshold of having acquired secondary meaning such that the relevant public exclusively associates the words with it as a source of services (See Jewelry Candles, LLC v. Micah Buse of WebsiteVM - Domain Management, Louisville Marketing, Inc., d/b/a Jewelry In Candles, LLC, WIPO Case No. D2014-2203; South Fork Hardware, Inc., DBA TireChain.com v. Vulcan Sales, Inc., DBA Vulcan Tire Sales, WIPO Case No. D2013-0199; Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105). For these reasons, the Panel finds that Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
The Panel reminds the parties that the UDRP serves to resolve disputes concerning allegations of abusive domain name registration and use. A complainant that fails to satisfy the standing requirement of paragraph 4(a)(i) of the Policy, may seek other remedies before a competent court. Likewise, possible issues regarding trademark rights and usage, trademark infringement, unfair competition, deceptive trade practices, and copyright issues are beyond the scope of the Panel’s limited jurisdiction. For these issues, parties are free to consider court proceedings, where a fuller evidentiary record can be explored. Accordingly, in rendering its decision below, the Panel expresses no view on the respective merits of the parties’ cases, as presented, in the instant dispute.
In any event, given the Panel’s finding on the question of rights or legitimate interests below, a further evaluation of the potential secondary meaning of the Complainant’s mark on the basis of a more complete evidentiary record would not lead to a different outcome in the present proceedings.
In view of the Panel’s findings under the first element of the Policy, there is no need for the Panel to consider the second requirement under the Policy as all three requirements of paragraph 4(a) of the Policy must be met for a complainant to prevail.
The Panel has nevertheless examined the issue and considers that the Complaint also fails on the second requirement under the Policy. Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (Seesection 2.1, WIPO Overview 3.0).
The Panel finds that the Respondent has provided evidence demonstrating that the Respondent has used the Disputed Domain Name in connection to a legitimate business activity conducted under the name “O.V.U.S. Online Vital U.S.” since 2017, more than a year before the Complainant applied for its ONLINE VITALS trademark. This was also acknowledged by the Complainant in its communication with the Respondent where the Complainant recognized OVUS as another provider of vital records online. As the Respondent has used the Disputed Domain Name for almost two years in connection with its online business related to United States vital records, the Panel determines that the Respondent is indeed commonly known by the Disputed Domain Name.
The Complainant alleges that the principal purpose of the Respondent for registering and using the Disputed Domain Name is to disrupt the Complainant’s business and trade off on the goodwill and reputation associated with the Complainant’s marks. However, the Panel finds that the Complainant fails to adequately substantiate these allegations with evidence proving that the Respondent’s use of the Disputed Domain Name directly causes customer confusion or that the Respondent has engaged in unfair competitive conduct with the Complainant. The Complainant only provides copies of several inquiries of dissatisfied Internet users requesting a refund or status update regarding a vital record service. Without providing any further substantiation, the Complainant asserts that these “undefined” customer inquiries can only relate to the Respondent’s website and services. Since there is no demonstrable connection between these Internet users and the Respondent’s business, such evidence cannot be considered adequate to determine that the Respondent has registered the Disputed Domain Name mainly for the purpose of trading off on the goodwill and reputation associated with the Complainant’s then nonexistent mark.
Additionally, the Panel determines that the Respondent has obtained a valid United States trademark registration for a figurative mark containing the textual elements O.V.U.S ONLINE VITAL US, registered in the USPTO Principal Register. Such a prior trademark registration corresponding to the Disputed Domain Name is considered to support a finding of rights or legitimate interests in the Disputed Domain Name for purposes of the second element.
Having no other elements showing the lack of rights or legitimate interests in the Disputed Domain Name, the Panel finds that the Complainant has failed to show the absence of rights or legitimate interests.
Given the Panel’s finding on the issue of identical and confusing similarity and rights or legitimate interests above, it is unnecessary to consider the issue of bad faith registration or use.
The Respondent requests that the Complainant be found guilty of reverse domain name hijacking (RDNH).
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
For this purpose, paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. In the case at hand, the Panel does not find sufficient evidence that the Complaint was brought in bad faith. The Complainant seems to have been convinced that its prior use of the ONLINE VITALS sign, together with its United States trademark registration and alleged well-known character (secondary meaning), it could legitimately obtain the transfer of the Disputed Domain Name, which was registered after the Complainant’s registration of its <vitalrecords.com> domain name and was used to provide identical services to those of the Complainant.
The Complainant may have erroneously believed that the use of a nearly identical domain name for providing identical services was an unconditionally strong argument in support of bad faith.
The file does not show that the Complainant knew, or should have clearly known, that it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the Complaint. The Complainant is not unreasonably ignoring established Policy precedent. This determination is not altered by the fact that the Complainant first sent cease and desist notices to the Respondent or proposed to conclude a licensing agreement with the Respondent.
As a result, the Panel finds there to be no evidence of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Date: June 26, 2019
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