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Generic Top Level Domain Name (gTLD) Decisions |
La Vision Gmbh v. Computers, Parts &
Repairs Inc.
Claim Number: FA0408000306695
PARTIES
Complainant
is La Vision Gmbh (“Complainant”),
represented by Timothy Walton, 800 West El Camino Real, Suite 180,
Mountain View, CA 94040. Respondent is Computers, Parts & Repairs Inc. (“Respondent”),
1808 Victory Boulevard, Glendale, CA 91201.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lavision.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Hon.
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 2, 2004; the Forum received
a hard copy of the
Complaint on September 17, 2004.
On
September 16, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <lavision.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby
agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution
Policy (the “Policy”).
On
September 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 12, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent
via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing
contacts, and to postmaster@lavision.com by e-mail.
A
timely Response was received and determined to be complete on October 6, 2004.
On October 13, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Hon. Richard B.
Wickersham, Judge (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant has been making commercial use of its
LA VISION mark for more than a decade.
Complainant began using the domain name <lavision.de> in
1996. The Wayback Machine at
<http://web.archive.org/web/*/lavision.de> (showing records of usage
since December 19, 1996). Registrations
of the trademark are ongoing in jurisdictions around the world, including the
United States and Germany. The United
States Patent and Trademark Office published the mark for opposition and the
deadline for opposing the registration is
September 20, 2004.
The
Respondent does not appear to intend any legitimate use for the domain
name. Since registration, nothing more
than a single page with an email link seeking “comments” has appeared at the
address.
<http://web.archive.org/web/*/lavision.com> (showing records of
usage since April 28, 1999). There has
been no bona fide offering of goods or services. There is no indication that Respondent has ever been commonly
known by the mark LA VISION or the domain name <lavision.com>, has
made any demonstrable preparations to use the domain name, or acquired any
intellectual rights in the name. The
current use does not constitute “fair use” as that term is used in copyright
and trademark law because there is no use at all.
From
all appearances, Respondent registered the domain name primarily for the
purpose of selling, renting, or otherwise transferring
the domain name
registration to an owner of the trademark or service mark or to a competitor of
the owner of the trademark or service
mark, for valuable consideration in
excess of out-of-pocket costs directly related to the domain name.
Respondent cannot argue that there is any
legitimate noncommercial or fair use because there has been no use.
Respondent’s complete lack of any legitimate use of
the domain name indicates that the domain name was registered or acquired
primarily
for the purpose of selling, renting, or otherwise transferring the
domain name registration to the owner of a trademark or service
mark for
valuable consideration in excess of the Respondent’s out-of-pocket costs
directly related to the domain name.
B.
Respondent
The
term “la vision” has a lot of different meanings in many different languages.
Respondent is an ISP that has a considerable amount
of Hispanic customers. Respondent plans on using the term “la
vision” on a future project for its Hispanic customer base. The domain will represent “the vision” as
Respondent sees it for its Hispanic members.
The Spanish translation of “la vision” means the future vision, a
concept Respondent plans to offer its customers.
Respondent has registered several domain names that
it has used throughout its business existence.
Respondent is constantly growing as a company and has many directions
that it has yet to develop. Respondent
has rightfully registered the domain name <lavision.com> and has
future plans for its development.
Respondent’s customer base is largely Hispanic and Respondent plans on
using this domain name to help its company grow in the future.
Respondent has registered this domain name in the
hopes of future growth for its company.
Complainant has made mention that it has marketed its company under the
same name, however, utilizing a different TLD.
It doesn’t make sense that Respondent should forfeit its interest in a
domain name that it has rightfully registered to shore up the
hindsight in a
German company’s marketing near-sightedness.
Complainant has been conducting business under the domain name
<lavisioninc.com>. Complainant
has attempted to purchase Respondent’s interest in the domain name <lavision.com>
to which Respondent has refused.
Respondent is not in the market of selling its domain name registration
since it could impact the growth of Respondent’s own organization.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
Complainant asserts that it has been using its LA
VISION mark in commerce for over a decade and that it has pending trademark
registrations
in multiple jurisdictions worldwide, including Germany and with
the United States Patent and Trademark Office.
The Panel finds that Complainant’s long-term use of the LA VISION mark
and its pending trademark applications establish Complainant’s
rights in the
mark pursuant to Policy ¶ 4(a)(i). See
SeekAmerica
Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered
by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications); see also
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)
(noting that the Policy “does not distinguish between registered and
unregistered trademarks and
service marks in the context of abusive registration
of domain names” and applying the Policy to “unregistered trademarks and
service
marks”); see also Great
Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001)
(“The Policy does not require that a trademark be registered by a governmental
authority
for such rights to exist.”).
Complainant argues that the <lavision.com>
domain name registered by Respondent is identical to Complainant’s LA VISION
mark because the domain name incorporates Complainant’s
entire mark, deviating
only by the addition of the generic top-level domain (gTLD) “.com.” The Panel determines that the mere addition
of a gTLD to Complainant’s mark is irrelevant and insufficient to negate the
identical
nature of the domain name. See
Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com>
domain name is identical to Complainant’s BODY
BY VICTORIA mark). Furthermore, the Panel finds that the domain
name is identical to Complainant’s mark, and the Panel concludes that this is
sufficient
to satisfy Policy ¶ 4(a)(i).
See Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104
(eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the
conjunctive rather than disjunctive sense in
holding that “mere identicality of
a domain name with a registered trademark is sufficient to meet the first
element [of the Policy],
even if there is no likelihood of confusion
whatsoever”).
Complainant alleges that Respondent is not commonly
known by the <lavision.com> domain name or the LA VISION
mark. Therefore, the Panel determines
that Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to Policy
¶ 4(c)(ii). See Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known
by the domain name prior to registration of the domain name to
prevail").
Complainant asserts that the <lavision.com>
domain name registered by Respondent resolves to a single webpage seeking comments
and that, therefore, Respondent has not used the
disputed domain name in
connection with a bona fide offering of goods or services. Furthermore, Complainant argues that the
current use of the domain name does not constitute a fair use of the domain name,
because
there does not appear to be any use at all. Thus, the Panel determines that Respondent’s use of a domain name
identical to Complainant’s mark to divert Internet users to Respondent’s
website is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant
to Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457
(Nat. Arb. Forum May 6, 2003) (holding
that Respondent’s use of Complainant’s mark and the goodwill surrounding that
mark as a means of attracting Internet users
to an unrelated business was not a
bona fide offering of goods or services); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored
by Respondent hardly
seems legitimate”).
Complainant
asserts that Respondent registered the <lavision.com> domain name
primarily for the purpose of selling the domain name registration to
Complainant for an amount in excess of Respondent’s
out-of-pocket
expenses. See CBS Broadcasting Inc. v. Worldwide Webs, Inc.,
D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the
offer or sale of domain names, without more, such
as to justify a finding of
bad faith under the Policy. However, the fact that domain name registrants may
legitimately and in good
faith sell domain names does not imply a right in such
registrants to sell domain names that are identical or confusingly similar
to
trademarks or service marks of others without their consent”); see also Pocatello
Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb.
Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad
faith is some accompanying evidence
that the domain name was registered because
of its value that is in some way dependent on the trademark of another, and
then an offer
to sell it to the trademark owner or a competitor of the
trademark owner"); see also Marrow
v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should
not “put much weight on the fact that it was the Complainant who contacted
Respondent to see if it was interested in selling the domain name”).
Complainant contends that Respondent’s
use of the <lavision.com> domain name solely to display a single
webpage seeking comments constitutes passive holding of an infringing domain
name. The Panel determines that
Respondent’s passive holding of the disputed domain name is evidence of bad
faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that merely holding an infringing domain name without active use
can constitute use in
bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that Respondent made no use of the domain name or website that
connects with the
domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lavision.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: October 25, 2004
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