The Complainant is Vizio, Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2021, 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 August 3, 2021 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 amended Complaint on August 5, 2021.
The Center verified that the Complaint together with the amended 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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on September 1, 2021. 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 BackgroundThe Complainant, Vizio, Inc., is a company founded by entrepreneur, William Wang in 2002. It is a New York Stock Exchange listed company (NYSE: VZIO) that designs and sells smart televisions and sound bars. Its products are sold to retailers and through online channels throughout the United States. It reported net revenue of $ 505.7 million USD and gross profit of $86.7 million USD in quarter 1 of 2021.
The Complainant owns a range of trade mark registrations for its VIZIO mark worldwide, including United States Trade Mark Registration No. 3235417 registered on April 24, 2007 in class 9; United States Trade Mark Registration No. 4053025 registered on November 8, 2011 in class 9; Brazil Registration No. 907635091 registered on February 14, 2018 in class 6; Brazil Registration No. 907635750 registered on February 14, 2018 in class 38; and Brazil Registration No. 907636110 registered on February 14, 2018 in class 39.
The Complainant is also the owner of a range of domain names incorporating the VIZIO mark, including its primary domain name
The disputed domain name was registered on August 31, 2020. It resolves to an active webpage that lists out multiple third-party links related to different advertisements covering contents such as “Sign Up for Youtube Tv”, “You Tube Tv Price”, “Vizio Remote”, “Tv and Internet Best Deals”, etc.
5. Parties’ Contentions A. ComplainantThe Complainant contends that it provides various product support options for its customers via its website at “www.support.vizio.com” and the Top-Level suffix of the disputed domain name may properly be considered in assessing and determining confusing similarity between the disputed domain name and the Complainant’s marks. The second-level domain of the disputed domain name consists solely of the Complainant’s VIZIO mark, resulting in a domain name that is identical to the Complainant’s VIZIO mark.
The Complainant further alleges that there is prima facie evidence of the Complainant’s ownership of the VIZIO mark. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s mark. The Respondent is not commonly known by the disputed domain name. The Respondent is using the disputed domain name to direct Internet users to a website featuring links to third-party websites and this website also features a link that directly references the Complainant and its business. The Respondent is presumably receiving pay-per-click fees from the linked websites. The Respondent is not using the disputed domain name to provide a bona fide offering of goods or services.
The Complainant finally asserts that it has marketed and sold its goods and services using the VIZIO mark well before the registration of the disputed domain name. By registering the disputed domain name which is identical to the Complainant’s VIZIO mark with a new gTLD “.support” which relates to the Complainant’s business and confusingly similar to the Complainant’s primary domain name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the VIZIO trade mark.
The Panel notes that the disputed domain name is composed of the Complainant’s VIZIO trade mark in its entirety. Further, it is permissible for the Panel to disregard the gTLD in the disputed domain name, i.e., “.support”. It is accepted by UDRP panels that the practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD (including with regard to “new gTLD”) and the ordinary meaning ascribed to a particular gTLD would not necessarily impact the assessment of the first element. See sections 1.11.1 and 1.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel finds that the disputed domain name is identical to the Complainant’s VIZIO trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsIn circumstances where the Complainant possesses exclusive rights to the VIZIO trade mark, whereas the Respondent seems to have no trade mark rights, and considering the facts and arguments set out above, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “vizio”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s VIZIO trade mark or register the disputed domain name. The Respondent is not making a noncommercial use of the disputed domain name in the terms of paragraph 4(c)(iii) of the Policy since Internet users are directed to a website with links to third-party websites including one that directly references the Complainant and its business. Such usage may reasonably be assumed to be commercial in its intent and effect. In this case, it seems the landing page is using “Google AdSense” to generate pay per click revenue. Past UDRP panels have found that the use of a domain name to host a parked page comparing pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See section 2.9 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s VIZIO trade mark has been widely registered around the world, including Brazil where the Respondent is apparently located. The disputed domain name was registered well after the registration of the Complainant’s VIZIO trade mark. Through extensive use and advertising, the Complainant’s VIZIO trade mark is known throughout the United States, and its products are sold in numerous countries around the world. Search results using the key word “VIZIO” on the Internet search engine direct Internet users to the Complainant and its products and services, which indicates that an exclusive connection between the VIZIO trade mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s VIZIO trade mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,
WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,
WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name is identical to the VIZIO trade mark, meaning that bad faith registration of the disputed domain name can be presumed. Moreover, the Respondent’s choice of a TLD “.support” that relates and corresponds to the Complainant’s area of business activity is another indicator of bad faith. See section 3.2.1 of the WIPO Overview 3.0.
The disputed domain name currently directs Internet users to a parking website where visitors are presented with different third parties’ websites of a commercial nature, some of which are the Complainant’s competitors. The adoption by the Respondent of the “pay per click” business model using the Complainant’s trade mark without authorization for the purpose of attracting visitors, may lead some Internet users to be confused into thinking, even if only initially, that the website is in some way endorsed by the Complainant. Such use constitutes evidence of bad faith registration and use as contemplated under paragraph 4(b)(iv) of the Policy.
The Panel also notes that the Respondent appears to be engaged in a pattern of abusive registration having registered multiple domain names comprising of other third parties’ trade marks. The Panel finds this case is a continuation of that bad faith pattern. See Hertz System, Inc. v. Privacy service provided by Withheld for Privacy / Gabriella Garlo,
WIPO Case No. D2021-1663; Klarna Bank AB v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo,
WIPO Case No. D2021-1587. Such use constitutes evidence of bad faith registration and use as contemplated under paragraph 4(b)(ii) of the Policy.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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
Rachel Tan
Sole Panelist
Date: September 15, 2021