BODIS owner fends off UDRP on domain

The owner of and received a UDRP for the domain

Complainant in this case is VIP Me Enterprises LLC, based in Nevada.

They state that it has been using its registered service-mark VIPME in commerce since April 4, 2013 by advertising third party goods and services on its website and also on the Apple Store.

The Respondent provided a full qualifying response to the National Arbitration Forum, stating the following:

“Respondent states that it is a subsidiary of, a world-wide fashion flash sale online retailer, and that it operates its website through the Domain Name, offering for sale women’s apparel and accessories.

Respondent denies that the Domain Name causes confusion in the marketplace and contends that Complainant’s Mark is a plain word service mark used in connection with different services unrelated to Respondent’s services, and the goods Complainant sells, caters to a different clientele, and utilizes different channels of trade.

Respondent points out that Complainant’s website at <> invites visitors to the website to obtain Complainant’s mobile application (“App”) directing them to the Apple App Store to download the App.  The App publishes deals 20%-30% off for VIP bottle services in night clubs.  No services or detailed description of services are offered on Complainant’s website in connection with Complainant’s Mark.

Respondent goes on to say that its own website uses a stylized VIPME mark with a distinct visual appearance including a slanting font with an overarching design of a flower. The stylized mark integrates into the overall look and appearance of Respondent’s website to give a luxury appearance.

This stylized mark, Respondent points out, is in contrast with Complainant’s Mark, where it is in the form of “ViPme,” and uses two different fonts in connection with a martini glass.  Respondent contends that this does not give the same impression as compared to Respondent’s own use. The overall appearance and feel of Complainant’s website is therefore quite different from that of Respondents.

Respondent denies Complainant’s characterization of its use of the Domain Name is to advertise goods and services for third parties online on the internet, and says further that it uses the Domain Name to provide on-line retail store services to allow its customers access to its website for flash sales of non-branded women’s apparel and women’s fashion products. A visitor to Respondent’s website purchases women’s apparel products directly from Respondent.

Respondent contends that, given the different services offered by Complainant and Respondent, the parties are not in direct or indirect competition and they do not provide overlapping services, and claims that Complainant has not provided evidence to support its allegation of causing confusion.”

Clive Elliott Q.C. Panelist, stated:

“Respondent contends that the original registration of the Domain Name predates Complainant’s use of the VIPME mark and maintains that Complainant has failed to provide evidence suggesting that Respondent acquired the Domain Name while knowing of or targeting Complainant’s Mark. The Panel accepts that there is a paucity of evidence to support Complainant’s argument on the question of bad faith. On the other hand, Respondent points to prior use of the key part of the Domain Name the initials “VIP” in 1994 and 2003 respectively by its parent company. This was well before any use or registration of Complainant’s Mark by Complainant.

Accordingly, there is no evidence of any disentitling knowledge on Respondent’s part. If anything there is evidence in the other direction. Accordingly, The Panel is unable to draw an inference Respondent targeted Complainant, and thereby registered or acquired the Domain Name in bad faith.”

For those reasons, the transfer of the domain to the Complainant, was denied.

For the full text of this UDRP decision, click here.

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