DECISION

Vivid Video, Inc. v. Michele Dinoia

Claim Number:  FA0304000155465

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 Michele Dinoia, Pineto, TE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vividtv.com>, registered with The Registry At Info Avenue d/b/a IA Registry.

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.

            Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 24, 2003; the Forum received a hard copy of the Complaint on April 25, 2003.

On April 28, 2003, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the domain name <vividtv.com> is registered with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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 April 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 19, 2003 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@vividtv.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 May 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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:

1. Respondent’s <vividtv.com> domain name is confusingly similar to Complainant’s VIVID mark and identical to Complainant’s VIVID TV mark.

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

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

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

FINDINGS

Complainant is one of the world’s leading producers and providers of adult entertainment in a variety of media forms.  Complainant markets its products with the VIVID, VIVID VIDEO and VIVID TV trademarks.  Complainant’s adult products and services include pre-recorded videotapes and DVDs and fee-based online adult broadcasts. 

In November 1984, Complainant adopted the VIVID and VIVID VIDEO trademarks to market and sell its adult entertainment services and goods.  In August 2000, Complainant began using the VIVID TV mark in commerce to designate its adult entertainment television broadcasting services, namely, a cable and satellite television channel featuring adult entertainment programming.

Complainant owns the following trademarks registered with the United States Patent and Trademark Office on the Principal Register:

· VIVID:  Reg. No. 2,415,035 issued on December 26, 2000.

· VIVID:  Reg. No. 2,452,336 issued on May 22, 2001.

· VIVID:  Reg. No. 2,509,991 issued on November 20, 2001.

· VIVID VIDEO:  Reg. No. 2,677,773 issued on January 21, 2003.

· VIVID VIDEO:  Reg. No. 2,677,774 issued on January 21, 2003.

· VIVID TV:  Reg. No. 2,658,514 issued on December 10, 2002.

Furthermore, Complainant developed a website featuring adult entertainment subject matter in December 1994, which prominently displays its VIVID and VIVID VIDEO marks.  Complainant’s website is located at <vivid.com>.  Complainant has also registered the <vividvideo.com> domain name, which re-directs to <vivid.com>.  In addition, Blue Fenway, Inc., a wholly-owned subsidiary of Complainant, previously registered the <vividtv.com> domain name.  The registration was inadvertently allowed to lapse on July 3, 2000.  Subsequently, Respondent registered the <vividtv.com> domain name on August 5, 2002. 

Respondent uses the <vividtv.com> website for a generic search engine website. 

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 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 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 its interests in the VIVID and VIVID TV mark through proof of trademark registration with the U.S. Patent and Trademark Office.  Although Complainant did not receive registration status with the VIVID TV mark until after Respondent registered the <vividtv.com> domain name, Complainant first began commercial use of the VIVID TV mark in August 2000.  Moreover, the U.S. Patent and Trademark Office printout for the VIVID TV mark denotes August 1, 2000 as the first date of use in commerce.  Therefore, Complainant has established its interests in the VIVID TV mark that predates Respondent’s registration of the domain name on August 5, 2002, and thus may use the VIVID TV mark to challenge the registration of <vividtv.com>. 

Respondent’s <vividtv.com> domain name is identical to Complainant’s VIVID TV mark.  The <vividtv.com> domain name contains Complainant’s entire mark with the mere addition of the generic top-level domain “.com.”  Top-level domains are a required feature of every domain name so they are irrelevant when conducting a Policy ¶ 4(a)(i) “identical” analysis.  Therefore, the <vividtv.com> domain name is identical to Complainant’s VIVID TV mark.  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); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Moreover, the Panel also finds that the <vividtv.com> domain name is confusingly similar to Complainant’s VIVID mark.  The addition of “tv” to the VIVID mark draws reference to one of Complainant’s services, an adult entertainment television channel.  As such, the VIVID mark remains the source identifier in the <vividtv.com> domain name and the domain name therefore has the potential to cause consumer confusion.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

Complainant has submitted a prima facie Complaint, included in which are Complainant’s allegations that Respondent has no rights or legitimate interests in the domain name.  Complainant’s allegations shift the burden on Respondent to come forward and articulate its rights or legitimate interests.  Respondent has failed to answer the Complaint and the Panel will thus presume Respondent lacks such rights or legitimate interests in the domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

In addition, without a Response, the Panel will accept all reasonable allegations as true and draw all reasonable inferences in Complainant’s favor.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the <vividtv.com> domain name for a generic search engine website.  This is a common practice whereby domain name registrants profit from the increased traffic a particular domain name brings to a search engine website.  The Panel thus infers that Respondent profits from the use of the domain name.  The descriptive quality of the <vividtv.com> domain name has no connection to the use of the domain name for a search engine website.  The Panel concludes that Respondent uses the <vividtv.com> domain name to capitalize on the goodwill the VIVID and VIVID TV marks have garnered.  Such an opportunistic use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does the use represent a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

Complainant asserts that Respondent is not commonly known by the <vividtv.com> domain name.  Respondent has not come forward to challenge that contention and no evidence on the record shows otherwise.  The Panel finds Respondent’s identity to be Michele Dinoia, the name listed on the WHOIS information page under the categories “Registrant,” “Administrative Contact” and “Technical Contact.”  Therefore, Policy ¶ 4(c)(ii) does not apply in Respondent’s favor.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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"); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <vividtv.com> domain name; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

The circumstances make it evident that Respondent had knowledge of Complainant’s interests in the VIVID and VIVID TV marks.  First, both the marks are registered on the Principal Register of the U.S. Patent and Trademark Office.  Such registration gives Respondent at least constructive knowledge of Complainant’s interests in marks that are confusingly similar and identical to the <vividtv.com> domain name.  Second, Respondent registered the <vividtv.com> domain name after Complainant’s subsidiary had inadvertently allowed the registration to expire.  Complainant advances the inference that Respondent registered the <vividtv.com> domain name to capitalize on Complainant’s oversight in permitting the registration to expire.  Without a Response to refute this contention, the Panel adopts the inference, especially given the use of the domain name as a generic search engine website.  Therefore, the Panel concludes that Respondent’s registration of the domain name, with knowledge of Complainant’s interests in the VIVID and VIVID TV marks, constitutes bad faith registration under Policy ¶ 4(a)(iii).  See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).

Furthermore, Respondent’s use of Complainant’s service marks as the second level domain for a search engine website will most likely confuse consumers searching for Complainant who ultimately end up at the search engine website.  Therefore, Respondent’s commercial use of the <vividtv.com> domain name constitutes bad faith use under Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel finds that Policy ¶ 4(a)(iii) is satisfied. 

DECISION

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

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  May 27, 2003

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