30th Sep 2013
national arbitration forum
Vendita Technology Group, LLC v. M. Stenzel
Claim Number: FA1308001514398
Complainant is Vendita Technology Group, LLC (“Complainant”), represented by Mike S. Ryu of RUCORE IP, Virginia, USA. Respondent is M. Stenzel (“Respondent”), Hawaii, USA, represented by Ari Goldberger and Jason Schaeffer of ESQwire.com. P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vendita.com> (“the Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
James Bridgeman, Bruce E. O’Connor and Alan L. Limbury as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2013; the National Arbitration Forum received payment on August 12, 2013.
On August 13, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the Domain Name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on August 15, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On September 13, 2013, Mr. Schaeffer informed the National Arbitration Forum that his firm had just been retained by the Respondent, who was travelling and had not received emails concerning this proceeding until now, and that a Response would be filed on September 16, 2013. The Complainant objected to the reception of a late Response, pointing out that the circumstances in which the Forum may exercise its discretion to grant an extension of time under the Forum’s Supplemental Rule 6(a)(ii) did not exist.
On September 16, 2013, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James Bridgeman, Bruce E. O’Connor and Alan L. Limbury as Panelists.
On September 16, 2013 a Response was filed which, being late, did not comply with Supplemental Rule 7. The Response annexed a Declaration by Respondent saying he did not see the Complaint in a timely manner because he was traveling in August and September 2013 throughout Panama and Costa Rica, without regular Internet access, and that immediately upon discovery of the email regarding the instant claim, he contacted legal counsel and expedited the filing of the Response, within one business day of notifying the Forum, so as not to delay the administrative proceeding or cause any prejudice to the parties or the Panel.
In the exercise of its discretion under ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraphs 10(a) and (b), the Panel has considered the late Response. However, the Panel’s decision would have been the same even without reference to it.
On September 24, 2013 Complainant filed an unsolicited additional submission which, according to Supplemental Rule 7(a), should have been submitted no later than September 23, 2013. The Rules do not contemplate additional submissions unless requested by the Panel under Rule 12. Nevertheless, in the exercise of its discretion under the Rules, paragraphs 10(a) and (b), the Panel has considered Complainant’s untimely additional submission. However, the Panel’s decision would have been the same even without reference to it.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant is the proprietor of United States Registered Trademark No. 4,372,416, registered on July 23, 2013 for VENDITA in International Classes 35 (for value-added reseller services, namely distributorship services featuring computer software and equipment) and 42 (for installation and repair of computer software, including mobile performance of such services on customer premises).
Complainant says the Domain Name is identical or confusingly similar to its VENDITA trademark and that Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Complainant says the Domain Name is believed to have been inactive since it was registered in November, 1996, at least until after July 2, 2012. At present it resolves to a website for a company called Yarie LLC, apparently incorporated in Pennsylvania and doing business in the field of Internet traffic monetization.
To the extent to which the Domain Name redirects to or is otherwise associated with a visibly commercial webpage unrelated to Complainant, for services unrelated to those provided by Complainant, there is no legitimate noncommercial or fair use of the Domain Name, which is being used misleadingly to divert consumers to an unrelated company’s website based on confusion caused by use of the Domain Name, which fully incorporates Complainant’s mark.
Complainant’s research indicates no company registered to do business in Pennsylvania in the name Yarie LLC. To the extent to which no such company exists or has existed, there can be no bona fide offering of goods or services within the meaning of the Policy, paragraphs 4(a)(ii) and 4(c)(i).
Respondent is in no way connected with Complainant and has no authorization to register or use the Domain Name. Respondent is not and has not commonly been known by the Domain Name and appears to have no registered trademark rights, including for VENDITA.
As to bad faith, the Domain Name is clearly being used by Respondent intentionally to attract, for commercial gain and without authorization or license, Internet users to a website not belonging to, operated by or otherwise associated with Complainant by creating confusion with respect to Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website and/or the products/services offered thereon.
The domain name <yarie.com> resolves to the same content as the Domain Name.
Respondent’s registration of the Domain Name prevents Complainant from reflecting its mark in a corresponding domain name without significant modification. In this regard, Respondent has engaged in a pattern of such conduct and/or has been previously accused of such conduct. See Pifer d/b/a/ Colchester Rubber Co., Inc. v. Stenzel, FA588409 (Nat. Arb. Forum, Dec. 27, 2005) (domain transferred to complainant). Similar allegations were made against Respondent in Chambre de Commerce et d’Industrie de Rouen v. Stenzel, D2001-0348 (WIPO June 29, 2001) and in Fundacion Santa Maria-Ediciones SM v. Stenzel, D2013-0818 (WIPO July 24, 2013), although both of these complaints were dismissed.
Respondent had no knowledge of Complainant (indeed, Complainant did not exist until 2006) or its trademark when he registered the Domain Name almost two decades ago. He registered the Domain Name, along with many other common word domain names, because of its inherent value as a dictionary word, meaning “sale” in Italian. This group of valuable domains is part of Respondent’s portfolio of over 1,000 domain names that he has purchased since the late 1990s.
Respondent did not register, and has not used, the Domain Name in bad faith. Respondent simply registered an available common word domain name meaning “sale.” There is simply no evidence Respondent registered the Domain Name with Complainant’s trademark in mind.
Respondent’s common word domain <vendita.com> provided users of the web site the opportunity to locate general topics of interest through the use of PPC links. Respondent’s legitimate interest is bolstered by the fact that it uses the Domain Name to display general and descriptive advertising links. Such use is not illegitimate.
Absent direct proof that a common word domain name such as <vendita.com> was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. Complainant has proffered no evidence demonstrating that Respondent targeted its trademark and all the evidence demonstrates that there was no such targeting. Respondent has registered many other common Italian dictionary word domain names.
Complainant made an informed decision to create its business under the name “Vendita” when it knew that the Domain Name was already registered and unavailable. Had Complainant believed it had rights to the Domain Name it should have taken action in 2006. This extremely long delay in taking action bars the Complaint under the Doctrine of Laches which has been recognized under the Policy. See New York Times Co. v. Name Admin., Inc., FA1349045 (Nat. Arb. Forum, Nov.17, 2010).
Even if the Panel does not deny the Complaint on the basis of laches, Complainant’s silence for almost 7 years since the trademark was created raises the inference that Complainant did not believe Respondent’s registration and use of the Domain Name was in bad faith.
Reverse Domain Name Hijacking is established here by the lack of any evidence that Respondent targeted a trademark and the likelihood that Complainant was aware the evidence was lacking when it filed the Complaint.
C. Complainant’s additional submission
Complainant repeated its objection to the reception of the Response; submitted that the doctrine of laches has no application under the Policy; and repeated its contentions in the Complaint, pointing out that the Respondent’s website does not display general and descriptive advertising links, as Respondent asserts. Complainant’s Director of Administration declared that Complainant became aware of the Domain Name in 2010 and attempted to buy it from Respondent in August and November, 2011, without receiving any reply.
Complainant has failed to establish all elements necessary to entitle it to the relief sought.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) the Domain Name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Domain Name is clearly identical to Complainant’s registered VENDITA trademark, the gTLD “.com” being inconsequential.
Complainant has established this element.
Rights or Legitimate Interests
In light of the Panel’s findings in relation to the next element, it is unnecessary to address this element.
Registration and Use in Bad Faith
The word “vendita” is a common dictionary word meaning “sale” in Italian.
The Domain Name was registered by Respondent on November 28, 1996, over 9 years before Complainant claims to have first used its VENDITA trademark (on January 7, 2006), over 16 years before Complainant’s trademark rights arose by virtue of its US application for trademark registration (on December 17, 2012) and over 17 years before that registration (on July 23, 2013) and the filing of this Complaint (on August 12, 2013).
The Panel does not accept that the defense of laches has any place in proceedings under the Policy and respectfully adopts the following words of the learned Panelist in BREAD & Butter GmbH & Co. v. Paul E. Grindle, WIPO Case No. D2013-1195 (September 5, 2013):
“The non-applicability of the defense of laches (i.e. undue delay) in UDRP proceedings has long been recognized by UDRP panels, over many years and a large body of jurisprudence. See e.g., in addition to this panel’s earlier-mentioned decision in Chocolaterie Guylian, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, and cases cited therein. While this Panel is aware that a small number of UDRP panelists have, on occasion, sought to put this question in issue (see e.g. Laminex, Inc. v. Yan Smith, NAF Claim No. FA1470990), this Panel sees no compelling reason to disrupt or depart from years of well settled UDRP jurisprudence on this point.”
There is no evidence to suggest that Respondent had Complainant or its non-existent mark in mind when he registered the Domain Name, one of numerous common dictionary words Respondent has registered as part of its business.
Under these circumstances, insofar as the Domain Name redirects to or is otherwise associated with a visibly commercial webpage unrelated to Complainant, for services unrelated to those provided by Complainant, Respondent’s use of the Domain Name does not give rise to any inference of bad faith use.
Of the three cases cited by Complainant in support of its contention that Respondent has engaged in a pattern of conduct preventing complainants from reflecting their marks in corresponding domain names, two were rejected, as Complainant rightly concedes. In the third, Pifer d/b/a/ Colchester Rubber Co., Inc. v. Stenzel, FA588409 (Nat. Arb. Forum, Dec. 27, 2005) the domain name was registered in 1999, the trademark was registered in 2003 and, despite this, a finding of bad faith registration and use was made because the domain name had not been used since registration.
That decision was based on the principle of “passive use” formulated in Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) and followed in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000). In each of those cases, however, the trademark rights existed prior to registration of the domain name and the respondent was found likely to have been aware of the trademark at the time of registration. Thus, none of those cases support the decision in the Pifer case and this Panel does not accept that case as establishing a pattern of conduct on the part of Respondent.
Accordingly, there is no evidence of bad faith registration and use of the Domain Name by Respondent.
Complainant has failed to establish this element.
Reverse Domain Name Hijacking
But for Complainant’s citation of Pifer d/b/a/ Colchester Rubber Co., Inc. v Stenzel, this Panel might well have made a finding in the present case of Reverse Domain Name Hijacking. However, it is conceivable that Complainant, in reliance on that case, could have held a genuine belief that it might have succeeded in this case despite the lapse of so many years after the Domain Name was registered until Complainant acquired trademark rights in VENDITA.
Accordingly the Panel declines to make a finding of Reverse Domain Name Hijacking.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L Limbury, Presiding Panelist James Bridgeman, Panelist Bruce E. O’Connor, Panelist
Dated: September 30, 2013