[Indexed as: Video Direct Distributors v. Video Direct]
[Indexed as: videodirect.com]
National Arbitration Forum
Administrative Panel Decision
Case No. FA0005000094724
Commenced: 2 May 2000
Judgment: 5 June, 2000
Presiding Panelist: Honorable Douglas R. Gray
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. Respondents 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 ICANNs 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 Respondents 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 ICANNs 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
ICANNs 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
Domain Name Transferred