Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use. – Constructive Notice – Incorrect information.

Complainant registered a United States trademark, VIDEO DIRECT and a design mark incorporating the words VIDEO DIRECT. Complainant uses the domain name, VIDEO-DIRECT.COM. Respondent registered the domain name, “VIDEODIRECT.COM” Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith. 

Held, Name Transferred to Complainant.

Respondent was a mail order company specializing in sexually explicit materials whereas Complainant was an electronics company, which established significant goodwill through its long-standing use of its marks. It is clear that the domain name VIDEODIRECT.COM is identical to the domain name used by Complainant, VIDEO-DIRECT.COM. Respondent’s use of the domain name was confusing in that it could mislead consumers into believing that Complainant was affiliated with the business of providing sexually explicit materials in some way. It is also clear that Respondent had no rights or legitimate interest in respect of the domain name. 

Respondent registered a domain name for which it had no legitimate purpose and no actual use and from which it might be inferred that such registration was for the purpose of disrupting or interfering with the business of Complainant.  Respondent had, at the least, constructive notice of Complaint's use of the VIDEO DIRECT and VIDEO DIRECT DISTRIBUTORS marks.  Also, Respondent did not reply to communications by Complainant to resolve the matter out of court, except that Respondent ceased use of its website at VIDEODIRECT.COM and transitioned its services to another website.  Respondent also provided incorrect information to Network Solutions, Inc. regarding the owner of the registered name. For these reasons, Respondent acted in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to
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Cases referred to
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Panel Decision referred to
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Gray, Panelist: -

The above matter came on for an administrative hearing before the undersigned on June 5, 2000, on the complaint of Video Direct Distributors, Inc., (hereafter “Complainant”) against Video Direct Inc., (hereafter “Respondent”). Robert M. Tyler Esq. Represents the Complainant. The Respondent, having submitted no response, is unrepresented. Upon the written submitted record, the following decision is entered. 

PROCEDURAL FINDINGS
Domain Name: VIDEODIRECT.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Video Direct, Inc.
Date of Domain Name Registration: October 26, 1995
Date Complaint Filed: May 2, 2000
Date of Commencement of Administrative Proceedings: May 2, 2000
Due Date for Response: May 22, 2000
Respondent did not file a response as required by Rule 5(a).
After reviewing the complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM, (THE FORUM), forwarded a copy of the complaint to the Respondent on or about May 2, 2000 in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS, (ICANN), and the Respondent that the administrative process had begun. The Respondent did not file a response as required by Rule 5(a).
On October 26, 1995, Respondent registered the domain name VIDEODIRECT.COM with Domain Name Registrar, Network Solutions, Inc., the entity that is the registrar of the domain name. On May 9, 2000, Network Solutions, Inc. verified that the Respondent is the registrant for the domain name VIDEODIRECT.COM and that, further, by registering the domain name with Network Solutions, Inc., Respondent agreed to the resolution of any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Police and the Uniform Domain Name Dispute Resolution Policy.
FINDINGS OF FACT
The undisputed evidence submitted establishes that:
1. The Complainant has used the name VIDEO DIRECT in its 
electronics business for over 15 years and is incorporated in Virginia.
2. The Complainant owns two federally registered marks: VIDEO DIRECT (United States Reg. No. 1,507,549 issued October 4, 1988) and a design mark incorporating the words VIDEO DIRECT (Reg. No. 1,493,639, issues June 21, 1988.
3. Complainants rights in these marks is established under 15 U.S.C. § 1065.
4. Complainants marks identify its services in various catalogs, flyers, magazines and other forms of advertisements including the Internet website www.video-direct.com.
5. Through its long standing use of its marks, Complainant has established significant goodwill identified by those marks. 
6. Respondent registered the domain name VIDEODIRECT.COM on October 26, 1995.
7. The two domain names are confusingly similar to one another with the only difference being the hyphen between the word VIDEO and the word DIRECT in the Complainants domain name. That difference is insufficient to amount to any legitimate difference in the domain names. 
8. There is no such corporation as “Video Direct, Inc.”, but rather, the Respondent operates under the name “Glamour Video Productions” and that name is the name used when the respondent is called by telephone and further, is the contact name used by Respondent in Network Solutions, Inc. WHOIS database.
9. At the time of registration by Respondent of the VIDEODIRECT.COM domain name, the Respondent had, at the least, constructive notice of the Complainants use of the VIDEO DIRECT and VIDEO DIRECT DISTRIBUTORS marks under 15 U.S.C.§ 1057(c).
10. Respondent is a mail-order company specializing in 
female erotica.
11. The domain name which appears in Respondent’s website (VIDEO DIRECT) and the mark(s) used and owned by Complainant are virtually identical except as above noted.
12. The Respondents use of the domain name is confusing and likely to lead consumers into believing that Complainant is either in the business of sexually explicit materials or affiliated with that business in some way.
13.Contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iv), Respondent, without any provable or ascertainable business purpose, registered the domain name VIDEODIRECT.COM to attract Internet users to its website by creating a likelihood of confusion with the Complainants name.
14.Respondent has no legitimate interest in the domain name 
VIDEODIRECT.COM. 
15.All attempts by Complainant to resolve the matter without resort to these proceedings have gone unanswered by respondent, except that Respondent did cease use of its website at VIDEODIRCT.COM and transitioned its services to another website.
Complainants prayer for relief requests that the domain name VIDEODIRECT.COM be transferred from Respondent to Complainant pursuant to Paragraph 4(I)of ICANN’s Uniform Domain Name Dispute Resolution Policy.

CONCLUSIONS
1. The domain name VIDEODIRECT.COM registered by Respondent on October 26, 1995 is so close as to be identical and confusingly similar to Complainants registered name and mark, to which Complainant has clearly established its prior legal right and to which name Respondent has failed to show or establish any legitimate right or interest whatsoever.
2. Respondent has acted in bad faith by registering a domain name for which it has no legitimate purpose and no actual use and from which it may be inferred that such 
registration was for the purpose of disrupting or interfering with the business of the Complainants.
3. Respondent has acted in bad faith by providing incorrect information to Network Solutions, Inc. regarding the owner of the registered name.
4. Claimant is clearly entitled to the ownership and use of the domain name VIDEODIRECT.COM.

DECISION
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows; 
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME “VIDEODIRECT.COM”, REGISTERED BY THE RESPONDENT VIDEO DIRECT INC. BE TRANSFERRED TO COMPLAINANT VIDEO DIRECT DISTRIBUTORS, INC.
CERTIFICATION
The undersigned certifies that he has acted independently and has no interest in either the business of the Complainant or that of the Respondent and has no known conflict of interest which would interfere in any way with his ability to serve as arbitrator in this proceeding.
Dated; June 5, 2000 Honorable Douglas R. Gray, 
Arbitrator