Complainant is Textura Corporation of Deerfield, Illinois, United States of America, represented by Michael Best & Friedrich, LLP, United States of America.
Respondent is Domain Vault LLC of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2015. On November 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 22, 2015.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on January 11, 2016. 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.
Due to the unusually large snowstorm which closed the Panel’s offices on January 22-24, 2016 and its aftermath, the Panel required an extension to provide its decision. 4. Factual Background
This proceeding has a longer backstory than most. It is the successor of a proceeding initially filed by Complainant on September 7, 2012 against the same domain name registered by a “predecessor” of Respondent, Novo Point, LLC (the “Prior Proceeding”). The Prior Proceeding was suspended on September 23, 2012 when its respondent went into receivership. The disputed domain name was transferred out of receivership to the present Respondent, Domain Vault LLC, likely in March 2014 apparently as per a Court order. The present Respondent was not named as a party to the Prior Proceeding. Additionally, for reasons that are unclear from the record, the registrar lock on the domain name was released during the prior proceeding. As a result, Complainant withdrew the Prior Proceeding and filed the instant Complaint against Respondent, Domain Vault LLC.
Complainant is the owner of two US registrations for the trademark TEXTURA, the earliest of which was issued in December 2007 with first use in commerce claimed as early as 2005. The latter registration was issued in August 2012 and claims first use in interstate commerce in September 2004.
The disputed domain name was initially created in December 2003, but has undergone various renewals and ownership changes since that date. It is currently passively held, although until about September 2012 displayed links to third-party websites also competing with Complainant’s software and services. 5. Parties’ Contentions A. Complainant
Complainant asserts that it provides software and services targeted to the construction industry under the trademark TEXTURA, which mark it has used since September 2004 for construction management services, and since January 2005 for construction project services. Complainant’s services and software under the TEXTURA mark also include invoice processing, pre-qualification services and bid management for construction projects.
Complainant asserts that the website linked to the disputed domain name contained various in-line links, including a link labeled “Textura login”, resolving to websites that promoted construction-related goods or services that directly competed with Complainant’s TEXTURA construction industry services. After Complainant filed the Prior Proceeding in September 2012, all content was removed from the website linked to the disputed domain name.
Two weeks after the Prior Proceeding was filed, the dispute resolution provider suspended the proceedings upon receiving a letter from an attorney purportedly representing the previous respondent, asserting that the disputed domain name was subject to a receivership in a Texas federal court case. The Prior Proceeding remained suspended during the pendency of the receivership action. In about March of 2014, the disputed domain name was transferred from Novo Point LLC, to Domain Vault LLC, the current Respondent. Although no documentation was provided or, apparently, obtained, Complainant received third-hand information purporting to assert that the current Respondent was “in some way related to the receivership, or the domains held by Domain Vault are under the NovoPoint receivership”.
Complainant withdrew the Prior Proceeding on November 20, 2015 and filed the present Complaint against Respondent that same day.
Complainant asserts that the disputed domain name is identical to its TEXTURA trademark because the disputed domain name incorporates that trademark in its entirety, the addition of the generic Top-Level Domain (gTLD) “.com” failing to distinguish the disputed domain name from the mark.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name because the disputed domain name is not used in connection with a bona fide offering of goods or services, has no current content, and previously displayed links to promote services directly competitive with Complainant’s services under its trademark; Complainant asserts this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Complainant asserts that Respondent is not commonly known by the disputed domain name, and that Complainant never consented to Respondent’s use of the TEXTURA mark or the disputed domain name.
Complainant asserts that Respondent’s failure to establish an active website amounts to passive holding of the disputed domain name, which does not create rights or legitimate interests in the disputed domain name.
Complainant asserts that the disputed domain name was registered and is being used in bad faith because Respondent was on constructive notice of Complainant’s distinctive trademark when it registered and renewed the disputed domain name. Complainant asserts that the respondent in the Prior Proceeding had constructive knowledge of Complainant’s TEXTURA mark when it acquired or renewed the disputed domain name on August 13, 2012. Complainant asserts that Respondent in the present proceeding is either affiliated with the prior respondent or acquired the disputed domain name subject to the pending Prior Proceeding in March 2014. Complainant asserts that Respondent should have known that Complainant’s TEXTURA marks are used in connection with Complainant’s services and bad faith should be presumed.
Complainant asserts that the prior respondent’s website, linked to the disputed domain name in August 2012, confirms that it was well aware of Complainant’s trademarks because the hyperlinks promoted goods and services identical to those Complainant offered under its TEXTURA mark, and included the spurious link “Textura login”. Because the current Respondent is either affiliated with the prior respondent or acquired the disputed domain name with notice of the Prior Proceeding, the current Respondent has registered and is using the disputed domain name in bad faith.
Complainant asserts that the disputed domain name has been used to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks. Specifically, Complainant asserts that the prior respondent used the disputed domain name to divert Complainant’s customers from its legitimate website and even purporting to be Complainant by offering a fake “Textura login” on Respondent’s website. The current Respondent acquired the disputed domain name subject to the Prior Proceeding, which set forth the prior respondent’s bad faith use, and the current Respondent has not made any legitimate use of the disputed domain name.
Finally, Complainant asserts the fact that Respondent registered, renewed or acquired the disputed domain name, which incorporates Complainant’s TEXTURA mark in its entirety, constitutes further evidence of bad faith, and thus bad faith use and registration of the disputed domain name should be presumed. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [Respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [Respondent has] registered the disputed 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
A respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
“(i) Before any notice to you of the dispute, your use 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) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c).
Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark TEXTURA. Adding the gTLD suffix “.com” fails to distinguish the disputed domain name from Complainant’s trademark. SeeSociété Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760.
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant has asserted, and Respondent has failed to dispute or rebut, that Respondent is not an authorized dealer of goods or services in connection with which the mark is used, and that Respondent is not licensed to use such trademark. There is no evidence before the Panel that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s passive holding of the disputed domain name demonstrates a lack of rights and legitimate interests. See Ziegenfelder Co. v. VMH Enter., Inc.,WIPO Case No. D2000-0039. Finally, because Respondent failed to file a response, it may be presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd.,WIPO Case No. D2000-1221.
As a result, the Panel determines that Complainant has established paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The previous use of the disputed domain name demonstrates that the respondent in the Prior Proceeding registered and used the disputed domain name in bad faith. Specifically, the website linked to the disputed domain name contained a spurious link titled “Textura login” that linked to the websites of services competitive to Complainant’s TEXTURA services. By doing so, the previous respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s TEXTURA trademark as to the source, sponsorship, affiliation or endorsement of its website.
But what of the present Respondent, successor to the disputed domain name through a receivership transfer? Although the evidence provided by Complainant that Respondent in this Proceeding and the respondent of the Prior Proceeding were under common ownership is scant and third-hand, the current Respondent has failed to contest Complainant’s assertions. Because of that failure, this Panel is permitted to make all appropriate inferences in favor of Complainant. See Talk City, Inc. v. Robertson,WIPO Case No. D2000‑0009.
Furthermore, this Panel concludes that Respondent is using the disputed domain name in bad faith pursuant to Policy paragraph 4(a)(iii) where Respondent is currently not actively using the domain name at all. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Taking the facts alleged in the Complaint as true, as this Panel may do based upon Respondent’s default, and drawing the appropriate inferences from these facts in Complainant’s favor for the same reason, the Panel finds that Respondent is under common ownership with the prior respondent, purchased the disputed domain name with knowledge of Complainant’s rights, and with notice of Respondent’s predecessor’s bad faith use and registration, and therefore has registered and used the disputed domain name in bad faith as outlined in paragraph 4(b)(iv) of the Policy.
Taking all of these factors into consideration, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 name be transferred to Complainant.
Jordan S. Weinstein
Sole Panelist
Date: January 29, 2016
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