WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VisionApp Inc. v. John Oboye / Hulmiho Ukolen, Poste restante

Case No. D2018-0413

1. The Parties

Complainant is VisionApp Inc. of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

Respondent is:

1. John Oboye of Prague, Czech Republic; and

2. Hulmiho Ukolen, Poste restante of Helsinki, Finland.

Complainant states that according to the WhoIs, the disputed domain names were registered by John Oboye¹, and according to the Registrar, the registrant of the disputed domain names is Hulmiho Ukolen, Poste restante. Both addresses and telephone numbers provided for each registrant appear to be fictious. Hereinafter both registrants will be referred together as “Respondent”.

2. The Domain Names and Registrar

The disputed domain names <invisionap.com> and <invisonapp.com> (the “Domain Names”) are registered with Gransy, s.r.o. d/b/a subreg.cz, Czech Republic (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint.

An email was sent by the Center to the Registrar on March 13, 2018, asking for clarification of these contact details, and the Registrar sent its reply to the Center on March 14, 2018. The Center sent an email communication to Complainant on March 16, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 20, 2018.

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 Respondent of the Complaint, and the proceedings commenced on March 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2018.

The Center appointed Clive L. Elliott Q.C as the sole panelist in this matter on April 26, 2018. The Panel finds that it was properly constituted. 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.

4. Factual Background

Complainant was founded in 2011. It has its headquarters in New York, United States of America. It has a global workforce in more than 20 countries.

Complainant is the registered owner of the INVISION trademark around the world, including the United States of America, the European Union and India (the “Complainant’s Mark”):

Complainant operates what is said to be the world’s leading design collaboration platform under Complainant’s Mark, allowing developers to create apps and websites for mobile devices, tablets, wearables and the web. This platform includes intuitive tools for prototyping, task management, and version control.

According to WhoIs the Domain Names were registered as follows:

(a) <invisonapp.com> - September 3, 2014; and

(b) <invisionap.com> - November 6, 2014.

5. Parties’ Contentions

A. Complainant

Complainant contends that its products have been used by over three million people at tens of thousands of companies, including eighty percent of companies in the Fortune 100. Complainant further contends that as a direct result of its success, it has a valuation of at least USD 900 million.

Complainant states that it actively promotes its platform through its website, blog, and social media; with over 100,000 followers at both Facebook and Twitter. It also asserts that it has also been widely recognized with numerous awards.

Complainant asserts that as a result of its success, as well as the amount, volume, and geographic extent of its users, Complainant’s Mark is a very strong mark with inherent goodwill.

Complainant notes that the Domain Names were registered more than two years after Complainant secured its first trademark registration for Complainant’s Mark in 2012. Complainant also asserts that the Domain Names are being used to redirect visitors to a variety of websites, including “www.edmunds.com”, and “www.afternic.com” where the Domain Name <invisionap.com> is being offered for sale for USD 2,700 and the Domain Name <invisonapp.com> is being offered at USD 6,850.

Based on the information available to Complainant, it contends that there has never been any relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Names and further, Respondent does not appear to be or ever have registered to use Complainant’s software or platform. There is no evidence that Respondent has either rights or a legitimate interest in the Domain Names.

Complainant contends that the Domain Names are confusingly similar to Complainant’s Mark and Complainant’s own domain name and website address as “www.invisionapp.com” (“Complainant’s domain name”). The Domain Name <invisonapp.com> incorporates Complainant’s Mark entirely as well as the “app” suffix used by Complainant in Complainant’s domain name. The only distinction between Complainant’s domain name and Respondent’s Domain Name <invisonapp.com> is that Respondent’s Domain Name omits the second internal “I” in the term “invision.”

Similarly, the Domain Name <invisionap.com> incorporates Complainant’s Mark entirely as well as the “app” suffix used by Complainant in Complainant’s domain name. The only distinction between Complainant’s domain name and Respondent’s Domain Name <invisionap.com> is that Respondent’s Domain Name omits the second “p” from the term “app.”

Complainant submits that Respondent’s registration of the Domain Names attempts to take advantage of common typo-squatting mistakes likely to be made by users seeking information and resources relating to Complainant who mistype Complainant’s domain name into their web browsers.

The addition of “app” and/or “ap” to Complainant’s Mark in the Domain Names does not alleviate any confusion, because Complainant’s domain name uses the suffix “app.” Moreover, “app” is a descriptive word of Complainant’s INVISION goods and services. Also, the inclusion of the generic Top-Level Domain (gTLD) indicator “.com” does not distinguish the Domain Names from Complainant’s Mark.

Complainant contends that Respondent’s attempt to sell the Domain Names for USD 2,700 and USD 6,850 is further evidence of Respondent’s bad faith registration and use of the Domain Names.

Complainant believes that Respondent has failed to make its actual contact information available in both the public and the Registrar’s private Whois records for the Domain Names, instead providing false contact details in each, thereby purposefully concealing Respondent’s true identity to make it difficult for any interested third-party to locateRespondent for purposes of lawfully pursuing the Domain Names. Complainant submits that the failure to provide any such information is further evidence of Respondent’s bad faith registration of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established to the satisfaction of the Panel that Complainant’s Mark has been used since approximately 2011 in relation to Complainant’s design collaboration platform, permitting developers to create apps and websites for a range of devices for use on the web. Complainant asserts, without dispute from Respondent, that while headquartered in New York it operates in 20 countries around the world. It has registered from in or about 2012 Complainant’s Mark in a number of jurisdictions including the United States of America, the European Union and India.

Complainant argues that the addition of “app” and/or “ap” to Complainant’s Mark in the Domain Names does not alleviate any confusion, given that Complainant’s domain name uses the suffix “app.” Further, Complainant argues that “app” is a descriptive word of Complainant’s INVISION goods and services.

There is clear merit in these submissions and in the absence of any attempt to refute them it is found that:

a) Complainant has rights in respect of Complainant’s Mark.

b) The Domain Names are for all intents and purposes the same as Complainant’s Mark; but certainly confusingly similar.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

In terms of whether Respondent has rights or legitimate interests in the Domain Names, Complainant asserts that Respondent’s registration of the Domain Names amounts to an attempt to take advantage of common typo-squatting mistakes likely to be made by users seeking information and resources relating to Complainant. That is, on the basis that they are likely to mistype Complainant’s domain name into their web browsers.

Given the obvious similarity between Complainant’s Mark and the Domain Names; and Respondent’s failure to identify the basis upon which it registered or acquired the Domain Names there is no reliable basis for the Panel to infer that Respondent’s conduct is legitimate.

Accordingly, it is found that Respondent has no rights or legitimate interests in the Domain Names.

The Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Complainant submits that Respondent has attempted to sell the Domain Names for USD 2,700 and
USD 6,850 respectively and that this provides evidence of Respondent’s bad faith registration and use of the Domain Names.

Complainant further submits that Respondent has failed to make its actual contact information available in both the public and the Registrar’s private Whois records for the Domain Names. It asserts that Respondent, has provided false contact details and that the purpose for doing so is to conceal Respondent’s true identity, thereby making it difficult for any interested third-party to locateRespondent for purposes of lawfully pursuing the Domain Names. Complainant argues that this is further evidence of bad faith registration of the Domain Names.

The Panel concludes that there is a prima facie basis for alleging that Respondent has been less than forthcoming and transparent in terms of its/their identity. Further, it is reasonable to infer that Respondent has sought to sell the Domain Names for an amount greater than their face value.

In the absence of any attempt to refute these allegations, the Panel finds that the third limb of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <invisionap.com> and <invisonapp.com> be transferred to Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: May 16, 2018

¹ According to the evidence submitted in the Complaint, at the time of the filing of the Complaint, the publically available WhoIs showed the Registrant to be John Oboye.