The Complainant is Vita-Mix Corporation of Cleveland, United States of America (“US”), represented by Una L. Lauricia, US.
The Respondent is Todua Teimurazi of Tbilisi, Georgia. 2. The Domain Names and Registrar
The Disputed Domain Names and are registered with Wild West Domains, LLC and GoD, LLC respectively (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 1, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On March 1, 2013, the Registrars 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 March 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on April 2, 2013. 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 Panel finds that the Respondent has received appropriate notice of this proceeding and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. Prima facie evidence of this is the courier’s delivery report to the Center following physical notification of the Complaint to the Respondent even though the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service.
The language of the proceeding is English, the language of the registration agreements. An email communication from the Respondent dated February 12, 2013 is prima facie evidence that the Respondent understands English language. 4. Factual Background
The Complainant operates a business selling food blenders globally. The Complainant holds registrations for the VITAMIX trademark and variations of it in several countries, including the US, which it uses to designate electric food processors and electric food blenders for domestic and commercial use. United States Trademark Registration No. 2,021,896 for the mark VITA-MIX has been in effect since 1996 and has been used in that country since 1937. Approximate global revenue for sales of VITAMIX brand product in 2012 was USD 342 million.
The Complainant conducts business on the Internet using the domain name .
Relevantly, a non-party to this proceeding, Costco, operates a warehouse club merchandising business with over 620 stores worldwide. Costco holds registrations for the COSTCO trademark and variations of it in numerous countries including the US, which it uses to designate goods and services ranging from paper to financial and retail services and has been used in that country since 1983. Approximate global revenue for sales of COSTCO brand product in fiscal year 2012 was USD 97 billion. VITAMIX brand products are sold in various Costco stores and online at a website resolving from the domain name . Costco has provided written authorization for the Complainant to bring this proceeding.
The Disputed Domain Name was registered on September 25, 2011, which resolves to a web page containing a paragraph about VITAMIX brand blenders and invites readers to contact the Respondent. The Disputed Domain Name was registered on January 11, 2013, which resolves to a web page containing a paragraph about VITAMIX brand blenders and related advertisements and links. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark VITAMIX in various countries as prima facie evidence of ownership.
The Complainant submits that the mark VITAMIX is well -known in its relevant trade sector and that its rights in that mark predate the registration of the Disputed Domain Names and . It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names incorporate in their entirety the VITAMIX trademark and that the similarity is not removed by the addition of the trademark COSTCO.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent has no trademark rights in or license to use the Complainant’s trademark (presumably referring to cases like Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). The Complainant also contends that use, which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (presumably referring to cases like Drexel University v. David Brouda,WIPO Case No. D2001-0067, “rights or legitimate interests cannot be created where the user of the Domain Names at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s VITAMIX mark in the Disputed Domain Names, stating “Respondent is taking advantages of Vitamix’s and Costco’s rights and reputations to unfairly capitalize on the marks”. The Complainant also submits “that the generation of click-through revenue do not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use” citing SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services,WIPO Case No. D2008-0016; Gaylord Entertainment Company v. Nevis Domains LLC,WIPO Case No. D2006-0523 and Fresh Intellectual Properties, Inc. v. Matt Braska,WIPO Case No. D2005-0096. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Respondent did communicate with Costco by email on February 12, 2013 which stated “I bought an auction and then I register . I pay for this domain $1750 and I dont will delete or redirect this domain for free”. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that 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 produced sufficient evidence to demonstrate that it has registered trademark rights in the mark VITAMIX in the United States and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark VITA-MIX in the Respondent’s relevant jurisdiction, the United States, pursuant to United States Trademark Registration No. 2,021,896 and the mark VITAMIX pursuant to United States Trademark Registration No. 3,914,988. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark VITAMIX.
The Panel also finds that the mark VITAMIX enjoys a reputation for high-end blenders popular with cooks around the world and is a well-known brand.
Turning to whether the Disputed Domain Names are identical or confusingly similar to the VITAMIX trademark, the Panel observes that the Disputed Domain Names comprise: (a) an exact reproduction of the Complainant’s trademark; (b) conjoined with the suffixed trademark COSTCO; and (c) followed by the top level domain suffixes “.com” or “.info”.
It is well established that the top-level designation used as part of a domain name should be disregarded (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of each Disputed Domain Name: “vitamixcostco”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the trademark COSTCO (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This addition of the trademark COSTCO is not sufficient to avoid confusion. Indeed, its presence exacerbates the scope for confusion (see Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yong Li,WIPO Case No. D2004-0296; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Jogn Dinway/Hosting Media,WIPO Case No. D2007-1426; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Yur Bar,WIPO Case No. D2009-1414). The addition of another well-known trademark after the Complainant’s registered trademark, does not serve to adequately distinguish the Disputed Domain Names in this matter which remain confusingly similar to the registered trademark.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Names are therefore confusingly similar to the VITAMIX trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1)
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see, National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See, National Trust for Historic Preservation v. Barry Preston, supra.; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2)
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because each is misleadingly directing Internet users to a pay-per-click (”PPC”) landing web page dominated by an article describing the Complainant’s background and advertising or offering for sale products in connection and competition with the Complainant’s mark, thereby illegitimately “taking advantage of Vitamix’s and Costco’s rights and reputations to unfairly capitalize on the marks”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Names.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Names. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its websites and has been using the Disputed Domain Names to divert Internet traffic to its PPC web pages.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that each Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used each Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The Panel finds that the trademark VITAMIX is so well-known in the United States for electric food processors and electric food blenders for domestic and commercial use that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of each Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark VITA-MIX, United States Registration No. 2,021,896 from December 1996 predating its rights from the Respondent’s registrations by around 15 years.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondent’s use of the Disputed Domain Names is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is for the Respondent to passively collect click through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s VITAMIX products not to mention the conduct in coopting the COSTCO brand for the same purpose. Exploitation of the reputation of a trademark to obtain click through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,supra; Lilly ICOS LLC v The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra). A fortiori, the use of two trademarks in the Disputed Domain Names strongly suggests registration and use in bad faith (see also Aktiebolaget Electrolux v. 2220 Internet Coordinator,WIPO Case No. D2005-1184).
This Panel finds that the Respondent has taken the Complainant’s trademark VITAMIX and incorporated it in the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
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 Names and be transferred to the Complainant. In doing so, this Panel recognizes that the Complainant has the written authority of Costco Wholesale Corporation to bring this specific UDRP proceeding.
Nicholas Weston
Sole Panelist
Date: April 16, 2013
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