The Complainant is Vudu, Inc., United States of America (“United States”), represented by Drinker, Biddle & Reath, LLP, United States.
The Respondent is WhoisGuard, Inc., Panama / K Blacklock, United Kingdom, self-represented.
The disputed domain name <vudo.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2019, 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 September 19, 2019.
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 September 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2019. On October 4, 2019, the Respondent requested an extension to file a Response. On October 4, 2019, the Center granted the automatic four-day Response extension until October 14, 2019. The Response was filed with the Center October 14, 2019. On November 4, 2019, the Respondent and the Complainant sought to submit supplemental filings, and on November 5 and November 7, 2019, the Respondent made further email communications that will be treated as supplemental filings.
The Center appointed W. Scott Blackmer, Nicholas Smith, and The Hon Neil Brown Q.C. as panelists in this matter on November 4, 2019. The Panel finds that it was properly constituted. Each member of 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.
The Complaint describes the Complainant as a content delivery and media technology company that offers VUDU-branded interactive media services and devices, delivering television shows and movies to more than 25 million users throughout the United States. The Complainant is organized as a corporation under the law of the United States state of Delaware and is headquartered in Sunnyvale, California, United States. According to the online database of the Delaware Department of State, Division of Corporations, the Complainant was incorporated on April 27, 2005. (It is now a subsidiary of the publicly traded retail giant Walmart, Inc.)
The Complainant operates a website using the domain name <vudu.com>. The Complaint emphasizes that this domain name was registered on October 28, 1995. This fact is uncontested, but it is also irrelevant and misleading, as this domain name was owned by other parties for more than a decade (as shown by WhoIs records through early 2007 furnished by the Respondent), and in any event the Complainant did not come into existence until 2005. The Complaint claims that the Complainant began to use a VUDU mark in offering services “at least as early as 2007”, although without furnishing historical supporting evidence of screenshots, sales, publicity, or media recognition. The Complainant’s trademark applications specifically claimed September 7, 2007, as the date of first use in commerce. Thus, the record does not support any use of the VUDU mark by the Complainant, even as a common law mark, before late 2007.
The Complainant did not obtain trademark registrations until 2011 and 2013, as follows:
|
MARK |
JURISDICTION |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
VUDU (standard characters) |
United States |
3934677 |
March 22, 2011 |
|
VUDU (stylized letters) |
United States |
4380412 |
August 6, 2013 |
The Registrar reports that the Domain Name was registered on September 8, 1999. At the time the Complaint was filed, the Respondent’s contact details were masked with a domain privacy service, but the Registrar identified the Respondent as the registrant when notified of the Complaint. The Respondent, an individual residing in Cumbria, England, United Kingdom, claims that he is the original and continuous registrant of the Domain Name. The Response attaches a WhoIs record of the Domain Name from March 2005, when it was registered with a different registrar, listing the same Respondent at the same postal address and showing the same original creation date of the Domain Name.
The Complainant attaches a screenshot of the landing page at times associated with the Domain Name, which displays “sponsored” or pay-per-click (“PPC”) advertising links for streamed movies and links with misleading labels such as “My Vudu Account” and “Vudu Sign In”. The Complainant reports that some of these lead to sites that attempt to insert malware onto user’s devices. The Respondent reports his repeated attempts to redirect the Domain Name to a host server that merely presents an error message, as the Respondent states he has never developed an associated website or deliberately parked the Domain Name for PPC advertising.
The Respondent presents evidence of registering other similar domain names at approximately the same time he registered the Domain Name, including <ivudu.com> in March 1999 and <voodu.com> in February 2000, thinking to offer Internet services such as free email using homophones of “voodoo” to suggest a “cool magic”. The Response attaches a 2003 screenshot from the Internet Archive’s Wayback Machine of the free email service signup page that the Respondent offered for a time through a website using the <voodu.com> domain name. The Respondent states that he did not develop this business further but retained the three domain names, including the Domain Name, for their possible resale value.
The Complainant contends that the Domain Name is confusingly similar to its VUDU marks, differing by only a single letter. The Complainant denies that the Respondent has permission to use the marks or any other grounds for claiming rights or legitimate interests in the Domain Name, which has been used in bad faith to divert Internet users for commercial gain through PPC advertising links.
The Respondent does not contest the Complainant’s trademarks but points out that the Complainant and its marks came along years after the Respondent registered the Domain Name. The Respondent had its own legitimate reasons for registering the Domain Name and two other domain names constructed from homophones of the word “voodoo”, long before the Complainant existed, so there could not possibly have been bad faith in the registration of the Domain Name. The Respondent expresses regret over the recent PPC use of the Domain Name and says that he has tried to stop it.
Given the obvious impossibility of a finding of bad faith registration in these circumstances, the Respondent asks the Panel to enter a finding of Reverse Domain Name Hijacking against the Complainant.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The Complainant and the Respondent each submitted Supplemental Filings. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
The Supplemental Filings in this case merely amplify arguments made in the initial pleadings, speculate about the opposing party’s motives in the course of the UDRP proceeding, and offer further details about the links on the landing page associated with the Domain Name. None of this is material to the decision, as will be clear from the discussion below. Hence, the Panel will disregard the Supplemental Filings in the discussion that follows.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. The Complainant indisputably holds registered VUDU trademarks, and the Domain Name is very similar visually and phonetically, differing only in the final letter. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
For purposes of the first Policy element, it is not relevant whether the Complainant acquired or registered those trademarks after the registration of the Domain Name; they suffice to furnish the Complainant’s standing. The timing may, of course, be relevant for other elements under the UDRP.
The Panel concludes that the Complainant has established the first element of the Complaint.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case on its trademark rights, confusing similarity, a lack of permissive use, and the sporadic use the Domain Name for a PPC landing page rather than a developed, relevant website. This shifts the burden to the Respondent.
The Respondent in this case states that his interest in the Domain Name was for its generic value as suggestive of the dictionary word “voodoo”, indicating magic, as with two other similar domain names that the Respondent registered at about the same time, one of which was used for a free email service. The Respondent never developed a corresponding website for the Domain Name over the succeeding years but indicates that he ultimately retained the Domain Name for its potential resale value as a short homophone of a “cool” dictionary word.
UDRP decisions involving undeveloped websites, or domain names parked at PPC landing pages, have typically analyzed the second element by examining the nature of the domain name, any actual or demonstrably planned use to date, and the status and fame of the relevant mark. These factors help panels assess the probability that the respondent chose the domain name for its generic rather than trademark value. See WIPO Overview 3.0, sections 2.9 (“Do ‘parked’ pages comprising pay-per-click links support respondent rights or legitimate interests?”) and 2.10 (“Does a respondent have rights or legitimate interests in a domain name comprised of a dictionary word/phrase or acronym?”).
In this case, the Complainant had no trademark at the time the Respondent registered the Domain Name or for many years thereafter. The Respondent’s interest in the Domain Name at the time of registration could not have been in the “trademark value” of the Domain Name in relation to the Complainant but rather in its generic value.
Accordingly, the Panel finds in favor of the Respondent on the second element. This is dispositive of the Complaint, as the Complainant must prevail on all three elements, but because of the request for a finding of Reverse Domain Name Hijacking the Panel will proceed to consider the third element, bad faith, as well.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
However, this simply cannot be true in this case, given the timing of events. The Respondent claims to be the original 1999 registrant of the Domain Name, and his registration of similar domain names in the same time period tends to corroborate that claim. The Complainant has offered no evidence to the contrary. The Complainant did not exist until 2005, and by its own account the Complainant did not start using the VUDU mark until late 2007. Despite the Respondent’s plans to sell “voodoo” Internet services in 1999, there is no suggestion in the record that the Respondent had any sort of precognition concerning the Complainant’s VUDU trademark that only came to market some eight years later. See WIPO Overview 3.0, section 3.8. Subsequent trademark infringement via a PPC site may, of course, be actionable on other grounds, but it does not by itself satisfy the UDRP requirement for establishing bad faith at the time of the registration of the Domain Name.
The Respondent’s protested innocence regarding the sporadic PPC use of the Domain Name is a recurring issue in UDRP proceedings, even if there is no malicious hacking as the Respondent suggests may have occurred. This is because an undeveloped website is often automatically parked by default by a registrar or web hosting company, with PPC revenues going to the registrar or host unless the registrant subscribes to a paid parking program, and some search engines display PPC links alongside default error messages. A registrant remains ultimately responsible under the registration agreement for content associated with the domain name and is always at some risk because of these practices unless the registrant takes affirmative steps within a reasonable time, such as redirecting the domain name to an active site or displaying an “under construction” page. Thus, the Respondent’s arguments against a finding of bad faith use would not necessarily prevail in a case such as this. See WIPO Overview 3.0, section 3.5. Here, however, the issue is immaterial, because the Complainant cannot establish bad faith as required at the time of the registration of the Domain Name.
The Panel concludes that the Complainant has not met its burden of persuasion on the third element of the Complaint, bad faith.
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).
The Complainant entirely sidesteps the glaring deficiency in its case on the second and third elements of the Complaint. The Domain Name is a homophone of a dictionary word, and it was registered long before the Complainant or its trademark existed. The Complaint repeatedly emphasizes the registration of the Complainant’s domain name in 1995 to suggest that the Complainant has senior rights, without disclosing that this registration was by an unrelated party. The Complainant evidently acquired that domain name in 2007 and began using VUDU as a mark in September 2007, as it claimed in its applications to the United States Patent and Trademark Office. The Complaint insinuates that the Respondent’s change of registrar and IP addresses over time is somehow significant, but the Complainant does not explain how it is significant and offers no evidence or argument whatsoever that the Respondent is not, as claimed, the original and continuous registrant of the Domain Name. Even without glancing at the WIPO Overview 3.0, counsel for the Complainant should have recognized from the plain language of the Policy that at the time of registration the Respondent could not have been attacking a trademark that did not exist and was not in contemplation for years to come.
The Panel finds that the Complainant brought the Complaint in bad faith, in an attempt at Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Presiding Panelist
Nicholas Smith
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: November 15, 2019