DECISION

Vivid Video, Inc. v. Chris Tennaro a/k/a Vivid Revolution

Claim Number: FA0209000126646

PARTIES

Complainant is Vivid Video, Inc., Van Nuys, CA (“Complainant”) represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria, LLP.  Respondent is Chris Tennaro a/k/a Vivid Revolution, Brandon, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <vividrevolution.com>, registered with Register.com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 27, 2002; the Forum received a hard copy of the Complaint on September 30, 2002.

On September 30, 2002, Register.com confirmed by e-mail to the Forum that the domain name <vividrevolution.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 October 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 21, 2002 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@vividrevolution.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <vividrevolution.com> domain name is confusingly similar to Complainant’s registered VIVID mark.

Respondent does not have any rights or legitimate interests in the <vividrevolution.com> domain name.

Respondent registered and used the <vividrevolution.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Vivid Video, Inc., is the holder of several service and trademarks for its VIVID mark (e.g., U.S. Reg. No. 2,415,035). Complainant first registered this mark on December 26, 2000 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and has used it in commerce since December of 1994. Complainant also holds service mark applications for the VIVID VIDEO mark (e.g., U.S. Ser. No. 76/393626, filed on April 8, 2002). Complainant operates under its family of marks as a producer and provider of “adult” entertainment. Complainant adopted the use of its distinctive “Vivid” and “Vivid Video” marks in 1984 to designate its adult motion pictures, and continues to use those marks in relation with its online interactive website today. Complainant has operated a website at <vivid.com> since April 11, 1991, and registered <vividvideo.com> on March 16, 1996, redirecting that page to their original <vivid.com> website.

Respondent, Chris Tennaro a/k/a Vivid Revolution, registered the <vividrevolution.com> domain name on October 19, 2001 and is not licensed or otherwise authorized to make any use of the VIVID family of marks for any purpose. Respondent uses the disputed domain name to feature “adult” entertainment and web design, as well as other goods and services in the field of “adult” entertainment. Respondent’s home page also features a photograph of a former “Vivid Girl” (a term used to describe female performers under contract with Complainant).

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

Identical and/or Confusingly Similar

Complainant has established rights in its VIVID mark through registration on the Principal Register of the USPTO, as well as via continuous and widespread use of the mark worldwide. 

Respondent’s <vividrevolution.com> domain name is confusingly similar to Complainant’s registered VIVID mark.  The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com” after the mark, and the addition of the word “revolution”.  As top-level domain names are a standard feature for any domain name, its addition does not prevent a finding of confusing similarity.  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).

The addition of the word “revolution” to Complainant’s registered VIVID mark also fails to differentiate the disputed domain name from Complainant’s mark.  The dominant feature of the disputed domain name is Complainant’s distinctive VIVID mark.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY SHOP trademark).  Furthermore, the fact that both Complainant and Respondent operate within the same industry underscores the fact that the generic word “revolution” does not distinguish the disputed domain name from Complainant’s registered and distinctive VIVID mark.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that Respondent and [Complainant] operate within the same industry”).

Accordingly, the Panel finds that the <vividrevolution.com> domain name is confusingly similar to Complainant’s registered VIVID mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon a complainant. Under Policy ¶¶ 4(c)(i-iii), a respondent can rely on a “bona fide offering of goods or services” connected with the disputed domain name, the fact that it has been “commonly known by the domain name,” or that it is making a “legitimate noncommercial or fair use of the domain name” to demonstrate a right or legitimate interest in a domain name.  If a complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims a respondent could make under Policy ¶¶ 4(c)(i-iii), thereby shifting the burden to the respondent.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

It is neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), when the holder of a domain name that is confusingly similar to an established mark diverts Internet users its own competing website.  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).  Complainant has shown that Respondent’s website offers “adult” services and goods in direct competition with Complainant’s business. Additionally, the disputed domain name initially resolves to a web page that features a photograph of a former “Vivid Girl”, inferring that the website is related to Complainant in some fashion. By using a confusingly similar domain name to divert Internet users and potential customers attempting to reach Complainant, Respondent is not making a bona fide offering of goods or services nor using its domain name for noncommercial or fair use.

 

Complainant has not given Respondent permission or consent to use its VIVID mark. Furthermore, Respondent’s registration of the disputed domain name occurred years after Complainant initially registered its distinctive VIVID mark and began using it in commerce.  Respondent is not commonly known by the name <vividrevolution>. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); 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").  

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the disputed <vividrevolution.com> domain name in bad faith.  Bad faith use and registration under Policy ¶ 4(b)(iv) is shown by registration of the domain name to “intentionally attempt to attract, for commercial gain, Internet users…by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location.” See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Accordingly, the Panel finds that Respondent both registered and used its <vividrevolution.com> domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <vividrevolution.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: November 14, 2002

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