Sports Venue Foundation d/b/a DBA Upper Valley Aquatic Center v. Vyacheslav Podolsky
Case No. D2014-1531
1. The Parties
The Complainant is Sports Venue Foundation d/b/a DBA Upper Valley Aquatic Center of Vermont, United States of America, represented by Downs Rachlin & Martin, PLLC, United States of America.
The Respondent is Vyacheslav Podolsky of Lenengradskaya obl.ast, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2014. On September 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2014.
The Center appointed Alistair Payne as the sole panelist in this matter on October 24, 2014. 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.
On October 17, 2014 the Complainant filed a supplemental filing. The Center acknowledged receipt of the supplemental filing on October 20, 2014.
4. Factual Background
The Complainant operates an aquatic and fitness centre located at White River Junction, Vermont in the United States. It first registered the trade name Upper Valley Aquatic Center for its aquatic center with the Vermont Secretary of State on or around May 7, 2007 and re-registered the trade name on May 25, 2012. It currently trades as the “Upper Valley Aquatic Center,” and as “UVAC.” The Complainant first registered the disputed domain name on or around December 3, 2007 and used it to resolve to its main website and for email purposes until the end of July 2014.
On or before July 30, 2014, the disputed domain name was transferred to the Respondent without the Complainant’s authorisation or knowledge. Email addresses for the Complainant’s personnel, all of which used the disputed domain name were also disabled and the Complainant’s business activities have been disrupted as a result by compromising its ability to organize events and promote swim lessons and other classes scheduled for the autumn of 2014.
The Complainant has made various attempts to recover the disputed domain name and had its counsel write to the Respondent which letter was sent by email and by courier to a physical address in Russian Federation which the courier company advised did not exist.
The Respondent has subsequently used the disputed domain name to resolve to a website which contains a copy of the Complainant’s website from the period just prior to transfer but also contains numerous links to unauthorised third party websites.
5. Parties’ Contentions
The Complainant submits that the Complainant has used the name or mark UVAC since at least February 2009 and owns unregistered or common law rights as a consequence of this usage. It says that this mark stands for the mark UPPER VALLEY AQUATIC CENTER and has been used extensively in connection with its swimming and fitness facilities and related services, including the provision of swimming lessons and fitness classes and for hosting events. Its website at “www.uvac-swim.org”, which is now found at “www.uvacswim.org”, has had approximately 36,250 unique visitors since it was launched and the Complainant also owns the , , and domain names.
The Complainant submits that it is widely known by its customers and third parties as UVAC and has submitted evidence in this regard concerning its usage. It says that it has over 2,100 members, a number that has grown from just over 1,000 in 2010, which was its first full year of operation using the UVAC name or mark and it notes that approximately 50,000 non-members per year also use Complainant’s services. The Complainant sends email newsletters prominently displaying the UVAC Mark to approximately 1,650 of its members each week and it also distributes promotional materials via email and direct mail bearing the UVAC mark to approximately 8,000 former members and 13,000 prospective members.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s UVAC name and mark because it wholly incorporates the mark and the only other element is the non-distinctive word “swim”. The Complainant submits that the inclusion of the “word” swim only serves to exacerbate a likelihood of confusion in this case because it relates to the Complainant’s core activity. As a consequence the Complainant says that the disputed domain name is confusingly similar to its UVAC mark.
The Complainant says that when the disputed domain name was fraudulently transferred to the Respondent,
that the Respondent had no rights whatsoever in the UVAC mark, or any similar mark and that the Complainant has never licensed or authorised the use by the Respondents of the UVAC mark and is not commonly known by the UVAC mark or name either. Although the disputed domain name initially resolved to an error page the Complainant says that the Respondent has subsequently used the disputed domain name to resolve to a website which contains a copy of the Complainant’s website from the period just prior to transfer but also contains numerous links to unauthorised third party websites. This it says is not bona fide use and is likely to cause confusion, and to deliberately mislead web users into clicking on
links, presumably to the benefit of Respondent.
As for bad faith, the Complainant submits that that Respondent hijacked the disputed domain name through the manipulation of password access and that this amounts to registration and use in bad faith. It notes that the factors in an earlier hijacking case (see Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D2004-0955) are almost all present in this case. In addition the Complainant says that now that the disputed domain name resolves to a website containing a copy of the Complainant’s website together with unrelated third party links, that the Respondent is using the disputed domain name for the purpose of attracting users to the site, disrupting the flow of business to Complainant’s substitute website, and/or confusing web users into clicking on the links to third party websites. It goes on to submit that this is no doubt part of a larger scheme by Respondent to generate traffic and income through sponsored links and/or to obtain personal information from, or otherwise defraud web users. The Complainant asserts that this amounts to evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant made a supplementary filing on October 17, 2014 on the basis that the disputed domain name had previously resolved to an error message but had changed after the commencement of the proceedings and now resolved to a website with content and third party links. The Panel finds that the change in circumstances and new evidence is relevant and important to the case and justifies the admission of the supplementary filing to these proceedings.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its use of UVAC as a trade mark or trade name in relation to its swimming center. The UVAC mark or name is used in its printed materials, in communications to its public, in advertisements and on merchandising wear and on signage and has been used in this way according to the declaration of its Executive Director at least since early 2009. The Complainant has over 2,100 members using its UVAC facility, a number that has grown from just over 1,000 in 2010, which was its first full year of operation using the UVAC name or mark. It notes also that approximately 50,000 non-members per year use the Complainant’s services. The Complainant sends email newsletters prominently displaying the UVAC name or mark to approximately 1,650 of its members each week and it says that it distributes promotional materials via email and direct mail bearing the UVAC mark to approximately 8,000 former members and 13,000 prospective members. Although this degree of use may be considered modest in corporate terms, in the context of a not for profit community sports facility the Panel finds that this degree of usage is sufficient to support a finding of trade mark rights under the Policy.
The Panel agrees with the Complainant that in circumstances that the disputed domain name wholly contains the Complainant’s UVAC mark and trade name, that the addition in the disputed domain name of the generic word “swim” together with a hyphen does not distinguish the disputed domain name for the quite distinctive UVAC mark and trade name and accordingly that the disputed domain name is confusingly similar to the Complainant’s mark. As a result the complaint succeeds under the first element of the Policy.
The Complainant has submitted that the disputed domain name was fraudulently transferred to the Respondent without its knowledge or authorisation. It says that the Respondent does not appear to be commonly known by UVAC and that it has neither permitted nor licensed the Respondent to use the disputed domain name containing its UVAC mark. While at first the disputed domain name resolved to an error page, it now resolves to a website at which there is a copy of the Complainant’s site together with third party links to unrelated commercial websites.
There is nothing before the Panel to rebut the Complainant’s case that the Respondent has no rights or legitimate interests in the disputed domain name. For the reasons below it appears to the Panel that the Respondent has set out to deprive the Complainant of the disputed domain name and to use it for its own purposes and commercial gain as if it is the Complainant. This is not legitimate conduct and the Panel finds that the complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The circumstances enumerated under paragraph 4 of the Policy that are expressed as being evidence of bad faith do not specifically include the fraudulent transfer of a domain name. However in Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D2004-0955 a case in which there was also an unauthorised transfer of a domain name, the UDRP panel found that on the basis that the circumstances in paragraph 4 were non-exhaustive, the following facts were sufficient to demonstrate registration and use in bad faith under this element of the Policy:
(a) The respondent knew or ought to have known that the domain name was in use and had been used for many years in connection with an active website;
(b) The respondent gained access to the NSI ownership database through improper (likely fraudulent) means;
(c) The respondent changed the ownership records for the domain name covertly, without any notice to the rightful owner;
(d) The respondent used misleading and false contact information when it changed the ownership records;
(e) The respondent failed to respond to correspondence from the complainant, and never offered any explanation or justification for its conduct;
(f) The respondent has disrupted the legitimate business activities of the complainant, depriving it of access to the domain name and website it had created and maintained for more than 10 years;
The current case concerns very similar circumstances. It appears that the Respondent knew of the Complainant’s use of the disputed domain name in connection with its website as, in particular, it otherwise would not have been able to make a copy of the Complainant’s content for its site. It seems likely that the Respondent gained access to the disputed domain name through improper or fraudulent means and without the Complainant’s knowledge which enabled it to change the ownership records for the disputed domain name without notifying the Complainant. It then appears to have used false contact information when it changed the ownership records, namely a mailing address in Russia that according to Federal Express does not exist. The Respondent subsequently failed to respond to correspondence from the Complainant. Finally, it has clearly disrupted Complainant’s legitimate business activities by depriving it of access to the disputed domain name and to its website which has disrupted its operations and method of communication with its user community and the public.
In addition the Panel finds, on the balance of probabilities, that the Respondent has, under paragraph 4(b)(iv) of the Policy, intentionally attempted to attract, for commercial gain, Internet users to its website at the disputed domain name by creating a likelihood of confusion with the Complainant’s UVAC mark and by copying the Complainant’s website so that Internet users arriving at it falsely think that they have arrived at the Complainant’s website. It appears more likely than not that the Respondent benefits from the unrelated third party links added to the Respondent’s website.
In these circumstances the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the complaint succeeds under the this element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Date: November 5, 2014