WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VitalSource Technologies LLC v. WhoisGuard, Inc. / Sang Tran, Allebooksstore and Nguyen Tong

Case No. D2020-1714

1. The Parties

The Complainant is VitalSource Technologies LLC, United States of America (“USA”), represented by Waller, Lansden, Dortch & Davis, LLP, USA.

The Respondents are WhoisGuard, Inc., Panama / Sang Tran, Allebooksstore, Viet Nam and Nguyen Tong, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <ebookvital.net>, <vitalebooks.com>, and <vitalsource.store> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2020. On June 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2020, 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 amendment to the Complaint on July 6, 2020. On July 16, 2020, the Complainant submitted a request to include additional domain names to the dispute.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 29, 2020.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 10, 2020. 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

The Complainant provides the delivery of digital books via its webpage available at <vitalsource.com> since 2005. It is the owner of, amongst others, the following registrations (Annex M to the Complaint):

- USA Trademark Registration No. 3055780 for VITAL BOOK, registered on January 31, 2006, in classes 21, 23, 26, 36, and 38; and

- USA Trademark Registration No. 3526152 for VITALSOURCE, registered on November 4, 2008, in class 38.

The disputed domain names, <ebookvital.net>, <vitalebooks.com>, and <vitalsource.store>, were registered on March 27, 2020, April 4, 2020, and May 8, 2020, respectively. All of the first disputed domain names resolved to webpages offering digital books and copied the contents of the Complainant’s official webpage (Annexes O, P, and Q to the Complaint). Presently no webpage resolves from the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are under common control as they (a) share the same registrar; (b) share the same privacy protection service; (c) share the same naming pattern; (d) have been used in connection with identical or substantially identical landing pages (Annex B to the Complaint); (e) have been used in connection with webpages that contained identical or substantially identical privacy policies and website terms of use (Annex C to the Complaint); and (f) which depicted in the respective webpages a footer stating “Copyright (c) by VitalEbooks 2020”.

The Complainant asserts to be a well-known provider of digital books and e-textbooks to students and educators in the USA and around the globe, being used by more than 7,000 institutions and counting with 15,400,000 users worldwide (Annexes J and K to the Complaint), which resulted in the widespread recognition of the Complainant and its VITALSOURCE trademark (Annex J to the Complaint).

According to the Complainant all of the disputed domain names are confusingly similar with the VITALSOURCE trademark since they either characterize the reproduction thereof entirely or of its dominant part in association with the descriptive term “book” which is associated with the Complainant and is therefore apt to increase the confusing similarity and undue association between the disputed domain names and the Complainant. The Complainant further asserts to have identified customer complaints indicating actual confusion with the disputed domain names (Annex S to the Complaint).

As to the absence of rights or legitimate interests, the Complainant submits that:

i. it has never granted the Respondents rights to use the VITALSOURCE trademark; nor has it granted to the Respondents authorization, permission, or license to use the Complainant’s trademarks;

ii. the Respondents are not related to, affiliated with, endorsed by, nor otherwise associated with the Complainant;

iii. the Respondents have clearly accessed the Complainant’s website and copied contents thereof which characterizes both constructive and actual knowledge of the Complainant and of the Complainant’s trademark rights; and

iv. the Respondents have used the disputed domain names to lure Internet users into providing their payment information to the Respondents with no evidence that the Respondents will actually render services or provide any goods in return, which does not characterize a bona fide offer of goods or services under the Policy.

As to bad faith registration of the disputed domain names the Complainant submits that the Respondents had actual knowledge of the Complainant’s trademark, which is evident from the content on the websites that resolved from the disputed domain names which were intentionally registered to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites at the disputed domain names.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation of multiple respondents in a single administrative proceeding

The Complainant requests under paragraph 3(c) and 10(e) of the Rules that this Panel accept multiple respondents in a single proceeding in view of the facts enumerated at paragraph 5.A. above.

Section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the three disputed domain names dealt with at the same procedure, given that they relate to the same trademark and share the same registrar, the same privacy protection service and same naming pattern; as well as have been used in connection with identical or substantially identical webpages (Annex B to the Complaint) that contained identical or substantially identical privacy policies and website terms of use (Annex C to the Complaint); and which depicted a footer stating “Copyright (c) by VitalEbooks 2020”.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

B. Request for the addition of domain names

As to the Complainant’s request made on July 16, 2020, to add additional domain names to this dispute, the Panel found it necessary to clarify the nature of the request (e.g., as described in WIPO Overview 3.0 section 4.12.2, to understand whether the additional domain names were registered before or after the filing of the Complaint) by way of Panel Order to the Parties on August 27, 2020. The Complainant subsequently withdrew its request to add additional domain names to the dispute and therefore the Panel need not decide on the initial request.

C. Identical or Confusingly Similar

The Complainant has established rights in the VITAL BOOK and VITALSOURCE trademarks.

The Panel finds that the disputed domain names, <ebookvital.net>, <vitalebooks.com>, and <vitalsource.store>, reproduce the Complainant’s marks either entirely or the dominant part thereof. The addition of “e” and “s” in the second disputed domain name and the inversion of vital and book at the first disputed domain name are insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, section 1.7).

The Panel decides that the disputed domain names are confusingly similar to the Complainant’s trademark and the first element of the Policy has therefore been established.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondents.

In that sense, the Complainant indeed states that it has never granted the Respondents rights to use the VITALSOURCE and VITAL BOOK trademarks; nor has it granted to Respondents authorization, permission, or license to use Complainant’s trademarks and that the Respondents are not related to, affiliated with, endorsed by, nor otherwise associated with the Complainant.

Also, the lack of evidence that the Respondents are commonly known by the disputed domain names and the absence of any trademarks registered by the Respondents corresponding to the disputed domain names corroborates the absence of any rights or legitimate interests in the disputed domain names.

Moreover, given the evidence submitted, the Respondents have used the disputed domain names to lure Internet users into providing their payment information to Respondents with no evidence that the Respondents actually rendered services or provided any goods in return, what does not characterize a bona fide offer of goods or services under the Policy.

The Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found in view of the use of the disputed domain names to create a direct affiliation with the Complainant and its business, as seen above. In the present circumstances, the Panel finds the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations.

Other factors that corroborate the Panel’s finding of the Respondent’s bad faith are: (i) the choice to retain a privacy services to conceal the true identity of the Respondents; (ii) the provision of what appears to be false or incorrect WhoIs information; and (iii) the absence of a formal Response by the Respondents.

Furthermore, the present passive holding (with evidence of prior fraudulent use) of the disputed domain names does not prevent a finding of bad faith registration and use in the circumstances of this case.

For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.

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 disputed domain names, <ebookvital.net>, <vitalebooks.com>, and <vitalsource.store> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: August 31, 2020