WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc.
Case No. D2000-0706
1. The Parties
Complainant Kill City, Inc. d/b/a Lip Service ("Lip Service") is a California corporation. Complainant Drew Bernstein is the president and sole shareholder of Kill City, Inc. The Complainantsí mailing address is 130 South Anderson Street, Los Angeles, California, 90033.
The Respondent is Action Advertising, Inc., a Florida corporation. Its mailing address is Box 4357, Boynton Beach, Florida, 33424.
2. The Domain Name and Registrar
The domain name at issue is "lipservice.com" (the "Domain Name"). The registrar with which the Domain Name is registered is Network Solutions, Inc., located in Herndon, Virginia, USA (the "Registrar" or "NSI").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complainantís Complaint by e-mail on June 29, 2000. On July 3, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.
On July 3, 2000, the Center sent to the Registrar, NSI, a Request for Registrar Verification. On July 5, 2000, the Registrar transmitted to the Center via e-mail a Registrar Verification Response confirming that the Domain Name is registered with NSI and that the Respondent is the current registrant of the Domain Name. NSIís Response provided the following contact information for the Respondent:
Registrant: Action Advertising Products, Inc. (LIPSERVICE-DOM), Box 4357, Boynton Beach, FL 33424. Administrative Contact, Technical Contact, Zone Contact, Billing Contact: Schwartz, R (RS1364), "email@example.com", Box 4357, Boynton Beach, FL 33424, (561) 753-1014.
The Center completed a Formalities Compliance Review on July 13, 2000, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Supplemental Rules"). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.
On July 13, 2000, the Center transmitted to the parties, with copies to NSI and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of August 2, 2000, by which the Respondent could file a Response to the Complaint.
On August 1, 2000, the Center received Respondentís Response to the Complaint. On August 4, 2000, the Center notified the parties that it would proceed to appoint the Administrative Panel.
On August 5, 2000, the Center received from Complainant a Supplemental Statement of Facts and Law in Reply to Respondentís Response and Complainantís Selection of Arbitrators, to be considered at the sole discretion of the panel pursuant to ICANN Rule 12. The Panel has decided not to accept this additional submission by the Complainants, as it was submitted contrary to the Uniform Rules and consists merely of additional legal arguments that could have been made in the original Complaint. See Document Technologies, Inc. v. International Communications, Inc., ICANN Case No. D2000-0270 (no right of reply under ICANN Rules; "truncated procedure allows for more rapid and cost effective resolution of domain name challenges.")
In view of the Respondentís request for appointment of a three-person panel of arbitrators, on August 29, 2000, the Center provided the parties with a list of five panelists, which each party was asked to rank in order of preference and return to the Center by September 3, 2000. The Center then invited Jonathan Hudis and Mark Partridge to serve as panelists and Dana Haviland to serve as the presiding panelist. On September 11, 2000, after having received from each panelist a Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision Date was September 24, 2000. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant Kill City d/b/a Lip Service is a California corporation with its principal place of business in Los Angeles, California. Complaint, paragraph 2. Complainant Drew Bernstein, the president and sole shareholder of Kill City, Inc., owns the registered trademark LIP SERVICE for menís clothing and womenís clothing. The mark was registered with the U.S. Patent and Trademark Office on February 6, 1990, and achieved incontestable status on July 5, 1996. Complaint, paragraph 12.1.1., Annex 3. The mark LIP SERVICE was first used in commerce by Complainant in 1985. Id. According to Complainant, the mark is used for clothing worn primarily by rock and roll musicians, nightclub goers, and other "fashion freaks." Complaint, paragraph 12.1.1. Similar trademarks incorporating the phrase "lip service" have been registered by several other companies for different purposes, including advertising agency and public relation services, lip balms, and computer software. Response, paragraph5.2, Exhibit A.
On December 27, 1995, the Respondent registered the Domain Name "lipservice.com" with NSI. Response, paragraph 5.1. Respondent has utilized the Domain Name as a link to other web sites since its registration. Response, paragraph 5.1. Complainant registered the domain name "lip-service.com" on May 20, 1998. Response, paragraph 5.6, Exhibit B, p.3. On August 2, 1999, counsel for Complainant sent a cease and desist letter to Respondent, informing him of Complainantís trademark rights and demanding the transfer of the Domain Name from the Respondent to the Complainant. Complaint, paragraph 12.1.3, Annex 11. Receiving no response from the Respondent, the Complainant then lodged a complaint with NSI under NSIís then-existing dispute resolution policy. Complaint, paragraph 12.1.3, Annex 12. Such complaint, however, was put on hold pending the implementation of the ICANN Policy, under which this proceeding was later brought. Id.
5. Partiesí Contentions
The Complainants contend that the Domain Name registered by the Respondent is identical to Complainantsí registered trademark, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith.
With respect to the second element of their claim, "right or legitimate interest in the domain name", Complainants assert that Respondent has not been authorized to use their trademark, that Respondent has no independent trademark rights or applications filed with respect to the mark, that he is not known by the name "lip service", and that he is not making any legitimate noncommercial use of the Domain Name. They further assert that Respondent is not making a bona fide offering of goods and services under the "lip service" domain name because Respondent uses the name "Slut Dot Com" for Respondentís web site accessed by the Domain Name.
Complainants also assert that Respondent is a cybersquatter who has registered multiple domain names, including the Domain Name and others using registered trademarks, for the purpose of selling them at a profit. They contend that cybersquatting results in dilution of the trademark, and that in this case, the trademark is being used in connection with pornography, and thus also tarnishing the Complainantsí mark. According to Complainant, Respondent is not making any legitimate use of the Domain Name, but "merely holding [it] and waiting to sell it to the highest bidder, and in the meantime, using the Domain Name, and the goodwill inherent in Lip Serviceís trademark to draw visitors to its pornographic site."
Complainants argue that Respondentís registration and use of the Domain Name constitute bad faith under Paragraphs 4(b)(I)(II) and (iv) of the Policy: "Respondent is engaged in the business of cybersquatting, has registered the Domain Name for the purpose of preventing the owner of the trademark from reflecting the mark in a corresponding domain name, and has intentionally attempted to attract, for commercial gain, Internet users to Respondentís web site by creating a likelihood of confusion with Lip Serviceís mark as to the location of Lip Serviceís goods and services on the Internet." Complaint, paragraph 12. 2.3.
Complainants contend that Respondent makes a business of registering domain names for the purpose of selling them to generate a profit and also maintains a web site at which it sells domain names, including domain names incorporating registered trademarks, thus engaging in a pattern of conduct constituting bad faith under both paragraph 4(b)(i) and paragraph 4(b)(ii) of the Policy. As evidence of bad faith under paragraph 4(b)(iv) of the Policy, Complainant alleges that Respondent has registered the Domain Name for purposes not only of sale but also to draw Internet users to Respondentís web site(s) which allegedly contain links to "pornographic materials" and generate advertising income for Respondent. Complaint, paragraph 12.2.3.
Respondent admits that the Domain Name is "virtually identical" to the Complainantsí trademark, but asserts that it has "rights or a legitimate interest" in the Domain Name, and denies that it has registered or used the Domain Name in bad faith.
Specifically, Respondent denies that it is a cybersquatter, and asserts that although it has registered many domain names, it is not in the business of selling domains, but of purchasing domains and deriving income from them through linking its domain names to adult and other web sites. Respondent states that it is " in the business of warehousing and utilizing domains primarily of a generic nature", and that "at no time has Respondent sought to sell or transfer any such domains to any other party, including the Complainants", Response, paragraph 5.1. Respondent argues that Complainant has adduced no evidence of any offer to sell the Domain Name.
Respondent also denies that it is a distributor of pornography on the Internet, and states that it owns "numerous domains, some of which are linked to adult web sites." Respondent asserts that it has utilized the Domain Name which is the subject of this proceeding continuously since registration as a link to adult entertainment sites not owned by the Respondent, which Respondent states deal with a "literal" [i.e., sexual] interpretation of the generic term "lip service", Response, paragraph 5.1.
Respondent further contends that although the Complainantsí trademark and the Domain Name are nearly identical, the similarity is not confusing, for several reasons: Respondent has never used the Domain Name in connection with the sale of clothing, the LIP SERVICE mark is not famous or distinctive, several other similar registered trademarks use the term "lip service", and the phrase "lip service" is a generic term. Citing dictionary definitions of the phrase "lip service" as an "insincere agreement" or "insincere expression of respect", Respondent contends that these definitions "more aptly describe" Respondentís use of the domain name than Complainantsí use of the trademark, Response, paragraphs. 5.1, 5.2.
Respondent contends that it has a right or legitimate interest in the Domain Name because it has used the Domain Name in its business for approximately five years and because the name "lipservice.com" is appropriate for its use as a link to adult entertainment sites. Respondent argues also that the fact that some of the other domain names registered by the Respondent may be identical to trademarks owned by others is, in itself, insufficient evidence of an intent to profit from or abuse such trademark rights.
Respondent denies that it has registered or used the Domain Name in bad faith.. Respondent contends that the trademark is not famous or distinctive, that Respondent had no knowledge of the Complainantsí trademark until receipt of their Ďcease and desist letter" four years after Respondentís registration and commencement of use of the Domain Name, and that a domain name holder is not required to undertake prior trademark searches in every country of the world. Respondent denies that use of a domain name to link to an adult entertainment web site and utilize banner advertisements to generate income constitutes bad faith use.
Finally, Respondent contends that Complainants have provided no evidence that Respondent engages in a pattern of registering the trademarks of others as domain names, have not shown that Respondent registered the Domain Name for the purpose of disrupting the business of a competitor, and have not shown that Respondent intentionally attempted to create a likelihood of confusion with Complainantsí mark.
6. Discussion and Findings
Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:
- that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- that the respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
(a) Identity or confusing similarity of domain name and trademark
The Panel finds that the Domain Name "lipservice.com" registered by the Respondent is identical or confusingly similar to the Complainantsí "Lip Service" trademark, differing only in the addition of the ".com" suffix and eliminating the space between the two words. The Panel thus finds that the Complainants have proved the first element of their claim under Paragraph 4(b) of the Policy.
(b) No legitimate interest in domain name
Paragraph 4(c) of the Policy sets forth, without limitation, three examples whereby a domain name registrant may show a right or legitimate interest in a domain name:
(i) before any notice of the dispute to you of the dispute, your 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: or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, only the first example is at issue, as Respondent concedes the inapplicability of (ii) and admits that its use of the Domain Name is for commercial gain.
Respondent states, and Complainants have offered no evidence to the contrary, that the Domain Name has been continually in use for a web site containing links to adult entertainment sites generating advertising revenue for Respondent since its registration in 1995. Complainants contend, however, that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services because the web site of Respondent which is accessed by the Domain Name does not display the Domain Name or the name "Lip Service", but rather utilizes the name "Slut Dot Com". However, the Policy does not specify that a domain name must itself be displayed on the registrantís web site in order for there to be a legitimate interest in its use in connection with a bona fide offering of goods and services.
Complainant next contends that Respondentís interest in the Domain Name is not legitimate because Respondent is a cybersquatter, hoarding and attempting to sell domain names for a profit and preventing trademark holders from using the domain names. Respondent correctly points out, however, that Complainants have produced no evidence of any offer by Respondent to sell the Domain Name to Complainants or others. Complainantsí exhibits include copies of a web site, "erealestate.com", operated by Respondent, which shows that Respondents register and purchase domain names, but does not evidence sales or offers to sell. Complaint, Annex 10. Annex 10 of the Complaint also contains copies of pages from a web site "dnsresearch.com" offering domain names for sale, which Complainants allege is somehow linked to Respondentís "erealestate.com" web site, but there is no evidence that Respondent operates the "dnsresearch.com" web site or that it has any interest in the domain names listed there for sale.
Complainants also contend that the Respondent has no legitimate interest in the Domain Name because Respondentís use of the Domain Name results in dilution and/or tarnishment of their trademark. Causes of action for trademark dilution and tarnishment, however, involve in-depth analysis of factual and legal issues more suitable for resolution by an arbitrator or a court, and are beyond the scope of jurisdiction of the Panel in this ICANN administrative proceeding, which is limited to a summary determination of whether the Complainant has proven the elements of a claim under the Policy. See Bridgestone Firestone, Inc., et al., v. Myers, ICANN Case No. D2000-0190; cf. Avery Dennison Corp. v. Sumpton, 189 F. 3d 868 (9th Cir. 1969) (cybersquatting dilution and tarnishment claims presented issues of fact that could not be decided on summary judgment); see also WIPO Report, April 30, 1999, paragraph. 172 ("[G]ood faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the procedure"). 1
In view of the evidence showing that the Respondent has used the Domain Name for several years in connection with web sites providing advertising links to adult entertainment web sites, and because the term "lip service" is susceptible of a meaning that is arguably, as Respondent has asserted, "apt" for the services offered, the Panel finds that the Complainants have failed to carry the burden of proof as to Respondentís lack of "right or legitimate interest" in the Domain Name under Paragraph 4(a) (ii) of the Policy.
(c) Bad faith registration and use of the domain name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The first example above is inapplicable, because there is no evidence that Respondent registered or acquired the Domain Name primarily for the purpose of selling it to the Complainants or a competitor. Complainants have produced no evidence of any offer by Respondent to sell the Domain Name to anyone. Similarly, the second example above is inapposite, because the evidence is insufficient to show that the Respondentís registration or use of the Domain Name was intended to prevent the Complainants from utilizing their mark in a domain name. The third example does not apply because the parties are not competitors, and there is no evidence the Respondent registered the Domain Name for the purpose of disrupting the Complainantsí business.
The fourth example presents a closer question, whether the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site or the web sites of others, by creating a likelihood of confusion with the Complainantsí mark as to the source or sponsorship of the web site or services offered by the Respondentís web site. Certainly the Respondent had constructive knowledge of the Complainantsí federally registered trademark, whatever the state of its actual knowledge. However, the evidence also shows that the term "lip service" used in the Respondentís Domain Name is not an arbitrary or coined term nor a distinctive trademark, but a common English phrase susceptible of more than one meaning or connotation, which can be and is used in many commercial contexts, and that one of those connotations is, as Respondent argues, "apt" for the adult entertainment advertising engaged in by Respondent on the web site accessed by the Domain Name. For this reason, the Panel finds that the evidence is insufficient to establish bad faith registration and use under Paragraph 4(b)(iv) of the Policy.
The Policyís list of examples of bad faith registration and use is not intended to be exhaustive, and the Panel has considered all other arguments made by the Complainants in this regard. As discussed above, however, on the evidence presented, we find that Complainant has not met its burden of proving that the domain name was registered and is being used in bad faith, as required by Paragraph 4(a)(iii) of the Policy.
For all of the foregoing reasons, it is the decision of the Panel that the Complainants have not satisfied their burden of proving all the elements of the claim under the Policy, and that the Complainantsí claim for transfer of the Domain Name "lipservice.com" is therefore denied.
Jonathan Hudis Mark Partridge
Dated September 28, 2000
1. Although facts showing intentional tarnishment could be relevant to a claim by Respondent of a legitimate interest under Paragraph 4(c) (iii) of the Policy, or to the issue of bad faith, Complainant has not presented evidence sufficient to support a finding of intentional tarnishment.