FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
A. The domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights;
• The Complainant has ownership in the following U.S. trademark registrations:
• VANILLA, for “Magnetically encoded prepaid debit and stored value cards”, Reg. No. 3,228,698, Registration date April 10, 2007.
• VANILLA, for “Non-magnetically encoded pre-paid debit and stored value cards” Reg. No. 3,644,949, Registration date June 23, 2009.
• VANILLA, for “Pre-paid debit and stored value card services, namely, activation, deactivation, processing electronic payments through prepaid debit and stored value cards using a computer-based network”, Reg. No. 3,336,174, Registration date November 13, 2007.
• VANILLA (& Design), for “Magnetically encoded prepaid debit and stored value cards”, Reg. No. 3,349,536, Registration date December 4, 2007.
• VANILLA (& Design), for “Non-magnetically encoded pre-paid debit and stored value cards” Reg. No. 3,750,726, Registration date February 16, 2010.
• VANILLA (& Design), for “Pre-paid debit and stored value card services, namely, activation, deactivation, processing electronic payments through prepaid debit and stored value cards using a computer-based network”, Reg. No. 3,336,190, Registration date November 13, 2007.
• Copies of certificates for the above registrations were provided.
• The domain name in dispute, www.myvanillacard.com, uses VANILLA in attempting to sell pre-paid debit and stored value cards.
• Therefore the domain name is identical to the trademarks and service marks and is used for the identical services for such trademarks in which the Complainant has rights.
B. The Respondent has no rights or legitimate interests in respect of the domain name;
• The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint.
- there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
- the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name;
- the Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
C. The domain name was registered and is being used in bad faith.
• The domain name was registered and used in bad faith by the Respondent. The Respondent intentionally attempts to attract Internet users to the Respondent’s web site or other on-line location, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
THE COMPLAINANT REQUESTS THE LANGUAGE OF THE PROCEEDINGS BE ENGLISH
The Complainant requests that the language of the proceedings be English, and virtually all facts associated with these proceedings support the use of English.
Initially, the registrar's website is provided in English. The Registrar provides services in English. The registrar provides customer service in English. English is the language of the Complaint.
Because the registrar has a Chinese address and the Respondent is claimed to be Slovakian, it is likely that communications between them is in fact in English. Moreover, because of the nature of the Internet, it is more likely that the two parties communicate in English than in Chinese or Slovak. Additionally, the email address for contacting both the registrar and the Respondent are in English that further indicates that both such parties use English.
Most importantly, the domain name is composed of English words, and English is the language used on the relevant domain name's website. No other languages are associated with either the domain name or the relevant website. Therefore it is virtually certain that the Respondent speaks English, and as such these proceedings should be in English.
Finally, the current owner of this domain name has gone to great lengths to make contacting and interacting with them as difficult as possible. The 'whois' information supplied by the registrar lists a Chinese address as the address for the Respondent, and does not provide a working email address. A copy of such ‘whois’ information was provided. Upon contacting the registrar for this UDRP action, the address is now claimed to be in Slovakian. The foregoing types of actions are ones typically taken by a cyber-squatter in order to avoid actions by legitimate owners of trademarks to protect their trademarks. The use of privacy services further illustrates the actions by the Respondent to avoid action against them. Allowing the Respondent to avoid conducting these proceedings in English would further allow the Respondent to cyber-squat on a website that is clearly in English, and only English, and force those that would most likely have an interest in protecting such domain (namely those that speak and conduct business in English) to proceed in a language that would have no relationship to the language used on the website, and a language that is not common in the business world. (So uncommon that popular UDRP providers do not offer services in Slovak.)
For all these reasons, it is also likely and reasonable that the Respondent has adequate knowledge of English such that the proceedings can be in English.
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