WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting
Case No. D2001-1391
1. The Parties
The Complainant is Global Media Resources SA, of P.O. Box N4825, Nassau, Bahamas, represented by Dimock Stratton Clarizio LLP, Barristers & Solicitors, of Toronto, Ontario, Canada.
The Respondent is Sexplanets aka SexPlanets Free Hosting, of c/o E-Group, World Trade Centre, Moll di Barcelona, Barcelona 08039, Spain.
2. The Domain Name and Registrar
The disputed domain name is <sexplanets.com>.
The Registrar is Domain Direct, a division of Tucows, Inc., of Toronto, Ontario, Canada.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received in hard copy on November 22, 2001, and by email on December 3, 2001. The Complaint was acknowledged on November 23, 2001, and on November 26, 2001, registration details were sought from the Registrar. On November 27, 2001, the Registrar confirmed that the disputed domain name is registered in the name of "SexPlanets" at the above address; that the language of the Registration Agreement is English and that the Policy applies to the disputed domain name.
On November 30, 2001, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) other than the filing of a version of the Complaint in electronic form. This deficiency was rectified on December 3, 2001.
On December 5, 2001, the Center formally dispatched copies of the Complaint by courier (with enclosures) to the Respondent at the address mentioned above (and to an address in Northern Ireland provided by the Complainant) and by email (without attachments). The Center included with that material a letter dated December 5, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was December 25, 2001. On December 5, 2001, a Response was filed by email and on December 12, 2001, in hard copy. Supplementary material forming part of the Response was filed on December 10, 2001, by email and on December 12, 2001, in hard copy. Receipt of the Response was acknowledged on December 13, 2001.
On December 14, 2001, the Complainant filed an unsolicited Reply and on December 21, 2001, the Respondent filed an unsolicited Rejoinder. The Center reminded the parties that there is no provision in the Rules for supplementary submissions and that it would be in the discretion of the Panel as to whether these submissions would be received.
At the request of both parties, the Center suspended these proceedings until after January 10, 2002.
The Complainant elected to have the case decided by a single-member Administrative Panel ("the Panel") and on January 11, 2002, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of January 25, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the Response was filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings was English.
4. Factual Background
On May 30, 1996, the Complainant registered the domain name <sexplanet.com> and, since June of that year, has used that website as a vehicle for the commercial sale of adult entertainment including photos, websites, videos and goods, featuring "live hardcore sex" and offering photos of "Asians", "bdsm" and "lesbians" and videos of "amateur, "anal", "oral" and "lesbian".
The Complainant claims to be the first site on the Internet to download, live, streaming video. Its site is now claimed to be one of the most popular live show websites available, with between approximately 300,000 and approximately 960,000 hits per month with an average of approximately 700,000. As of November 1, 2001, there were 31,873 members of the website. This site is marketed by affiliate Webmasters with commissions paid for selling memberships to Webmasters who advertise <sexplanet.com>. From 2001 to date, $682,661.21 has been paid in commissions to Webmasters for promoting the site.
On February 2, 1999, Python Communications Inc. applied to register in Canada the trade mark <sexplanet.com>. On October 27, 2000 that mark was registered with registration number TMA536016 for use in association with:
"Providing on-line adult entertainment namely live sex shows, tease shows, sexual pictures and movies, by means of a global computer network; providing adult entertainment, namely live sex shows, tease shows, sexual pictures and movies, on-line over a computer network; adult entertainment services, namely live sex shows, tease shows, sexual pictures and movies, on internet world wide website; sale of adult entertainment namely live sex shows, tease shows, sexual pictures and movies, to providers of on line-adult entertainment" .
That registration was based on use of the mark since at least May 30, 1996. The trade mark registration was licensed to the Complainant by Python Communications Inc. until it was assigned to the Complainant on March 22, 2001.
The disputed domain name was registered in the name of SexPlanets as registrant on October 5, 1998. The address of the Respondent was in Belfast, Northern Ireland. The Administrative, Technical and Billing Contacts were a Mr. Mark Johnson of the same address.
According to the history page at the Respondentís website (the Respondent invited the Panel to visit), the disputed domain name was registered by two friends in the United Kingdom (Mr. Mark Johnson and Mr. Robert Brennan) who later moved to Spain. (They were joined in their enterprise by a Mr. Bartal, an investor). The founders had the idea in 1997 of providing a free hosting site to webmasters wishing to establish adult websites. Amongst the Terms and Conditions imposed on webmasters wishing to take advantage of the Respondentís free hosting service are that the webmaster is responsible for all content on its site and that the webmaster is not to manipulate the Respondentís advertising banners (which appear on the pages of the webmastersí sites and which generate income for the Respondent).
The original design of the Respondentís home page (which remained unchanged until some time in 2000) included the name "Sex Planets", followed by "The Only Inter Galactic Online Adult Community" and a series of separate "planets", namely "hardcore planet", "celebrity planet", "teens planet", "toons planet", "anal/oral planet", "bondage/S&M planet", "asian planet", "amateurs planet", "voyeur/spy planet", "fetish planet", "gay planet" and "lesbian planet".
5. Partiesí Contentions
The following is taken from the Complaint.
The domain name registered by the Complainant in May 1996 consists of an invented word made up of the two words SEX and PLANET. These words do not normally have an association and the combination is unique. Registered or unregistered trade-marks that consist of invented words are inherently more readily protected. Such marks are described as strong marks. (See General Motors Corp v. Bellows (1949) 10 C. P. R. 101 (Supreme Court of Canada)).
If prior to registering the disputed domain name in October 1998 the registrant had searched the World Wide Web or the whois directory of Network Solutions Inc. it would have found that a confusingly similar domain name already existed.
There is only a single letter difference between the two domain names. A difference of a single letter between domain names, especially when the difference is a plural is confusingly similar (See Porto Chico Stores, Inc. v. Otavio Zambon (WIPO D2000-1270)).
When contacted by the Complainant about the registration of the deliberately confusing domain name, the Respondent offered to sell the <sexplanets.com> domain name to the Complainant. In an e-mail message sent to David van der Poel of Python Communications (the former owner of the trade-mark registration) by Mark Johnson of SexPlanets on or about September 2, 2000 the following appears:
"If you really consider our free host a threat to your paysite then maybe you should buy us out Ė for the right price we would certainly consider that option however we would only sell for a substantial (and reasonable) sum."
The Respondent is not a licensed user of the trade mark and has never been given any right in the Complainantís SEXPLANET.COM mark. No evidence has been advanced to suggest any legitimate rights in the trade mark.
The effect of the Respondentís registration of this deliberately confusing domain name is to create a likelihood of confusion with the Complainantís domain name, particularly as the Respondent has also tried to simulate the appearance of the Complainantís website in its site design (See DeRisk IT Ltd. v. DeRisk IT, Inc. (WIPO Case No. D2000-1288)).
The Respondent is operating a website at <sexplanets.com>. This site likewise provides adult entertainment including photography, videos and images for "hardcore", "celebrity", "teens", "toons", "anal/oral", "voyeur", "fetish", "amateurs", "S&M", "Asian", "gay" and "lesbian" sites.
The Respondent states that its site is a free host with thousands of sites and millions of visitors; it is not a provider of entertainment, and that it sees no relationship between the businesses. However, the viewer of either the Complainantís or Respondentís sites is linked to the same services and would not distinguish them. The consumer is provided with access to adult entertainment on both sites and although the Respondent may not provide any content to its website, it is essentially offering for sale the same type of products and services as the Complainant.
The registration of the contested domain name by the Respondent more than two-and-a-half years after the Complainant established the highly successful <sexplanet.com> website is a blatant attempt to confuse potential customers and to misappropriate the goodwill built up by the Complaint over many years. The Complainant believes that the <sexplanets.com> website was registered in bad faith, for the purpose of misappropriating the Complainantís goodwill or for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondentís out-of-pocket expenses directly related to the domain name.
The Complainant has rights in <sexplanet.com> arising from its registration of this domain name in May 1996 and the registration of its Canadian trade-mark.
The Respondentís domain name consists of the Complainantís invented word with the plural suffix "s".
The Respondentís use of the name cannot be legitimate because it has appropriated the Complainantís coined name two and a half years after the registration and use of the Complainantís domain name.
The conduct of the Respondent in offering to sell the disputed domain name to the Complainant and in creating the likelihood of confusion between the two domain names are badges of bad faith.
B. The Respondent
The following is taken from the Response.
The domain name <sexplanets.com> was registered in 1998 to provide adult free hosting services to webmasters.
The name "Sex Planets" was based on the free host model set by GeoCities, by then a familiar name on the Internet. The name was chosen to reflect the adult nature of the Respondentís free host site and because planets are bigger than cities. No check was run on would-be similar domain names. The Respondent simply searched for <sexplanets.com>, found it was available and registered it.
The Respondent learned about the existence of <sexplanet.com> from its owner, long after the Respondent had registered the disputed domain name.
SexPlanetsí only purpose is serving communities of webmasters. It does not serve end users. The only end user traffic the site gets is accidental by nature, and is diverted from the site using buttons. This accidental traffic is approximately zero.
Although the Respondent replied to the Complainantís termination request negatively, it did offer cooperation, which included sale of its business, not the domain name.
The Complainant knew from this very email that the Respondent does not compete with it. SexPlanets is a network of free hosts. SexPlanet is an individual adult membership site (content subscription for end users).
The Respondent denies it tried to simulate the appearance of the Complainantís website.
As for the complaint that the Respondent provides "various adult entertainment including photos, websites, videos and goods, and that it features "live hardcore sex" and offers photos of "Asians" "bdsm", "lesbians"; and videos of "amateur, "anal", "oral" and "lesbian". This is not so! All such buttons, banners and art send traffic away from SexPlanets Ė not to SexPlanets. The intent of such art is to redirect accidental non-webmaster traffic outside our site!
Other links lead to articles about erotica art. They do not lead to any commercial erotica art. Other links lead to external advertisers. Since our site gets next to no non-webmaster traffic, and despite the fact that this was our design for over a year, we are yet to make a single sale from any of the links on our site. Since all such goods are sold by external vendors, this fact can be corroborated directly with them!
The Respondentís total income from the entire system is around $45,000 per month.
As for the Complainantís remark about our registration of the domain three years ago in order to benefit from his successful adult site, we would like to again refer the arbitrator to our initial design, as was deployed until less than a year ago, and as can be seen we never had ANY intention, will, desire or intent to compete with him.
At the time we registered the domain and started our business we were not aware of the Complainantís existence until we heard from him for the first time! We did not register the domain in order to sell it. We did so in order to operate it. We invented a new concept of offering webmasters to start their own free hosting platform Ė free of charge Ė with us!
The cases cited in the Complaint are misleading and irrelevant. In WIPO Case No. D2000-1270 the company had a trademark long before the competitor procured the domain or started to act under their name on the Internet. In our case, the trademark was granted years after we had our domain and business in place. In that case the intention was to underline a successful brand by offering same products/services. In our case we did not know about the existence of the Complainant, he never had a trademark when we registered our domain and we are not offering his services or products!
In WIPO Case No. D2000-1288, the web site copied content/design/words from the Complainantís site to his own! We are again talking about the rendering of identical services and products. In our case we are not talking about similarity in services and we never copied or were otherwise inspired by sexplanet.com or any other site authored by the Complainant.
The domain name was not registered or acquired for the purpose of selling, renting, or otherwise transferring its registration to Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant. It was purchased in good faith and naivety to be a free hosting site for adult webmasters; any attempt on our behalf to sell it to the Complainant was the result of his approach to us and was done in good faith and as a legitimate business dealing.
The domain name was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct. Respondent has registered the domain years before such trademark was granted while Complainant never tried to register the domain for over two years since the acquiring of his original domain name.
At the time of registration, we had no idea such a domain existed! We were experimenting with a game of words on "geo cities" (note the pluralÖ) which was also a free host but not for adults and was and still is a household name in this industry (unlike sexplanet!!!) - to reflect our dealing with sex, and wanting to be bigger than just "cities"; we never searched for conflicting domain names because back then, especially for private individuals, these words were non-existent in the vocabulary!
At the time of registration, the Complainant had no trademark whatsoever on his brand, and hence we could not have been in breach thereof.
Complainant and Respondent are not competitors and/or the domain name was not registered by Respondent primarily or otherwise or at all in order or with the intention to disrupt Complainantís business.
The domain name was not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondentís 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 the Respondentís web site or location or of a product or service on the Respondentís web site or location.
The Complainant has ignored for over two years the registration of the disputed domain name despite its similarity to his. This to show just how naïve and unsophisticated both parties were with this regard back in the early days of the commercial net.
The Respondent is making a legitimate and fair use of the domain name, without intent for commercial gain from or by misleadingly diverting consumers or to tarnish the trade mark at issue.
The only side who has bad intentions and bad faith in this case is the Complainant, who had a chance to register sexplanets.com for two years and decided not to do so, and only upon learning how big and successful we are decided to go after our domain in search of hijacking all our traffic for the mere cost of an arbitration.
The Respondent has immediately upon registration started to operate the domain with a unique and special program of "start your own free hosting". The SexPlanets brand is known by all major players in this industry as a free hosting site for adult webmasters. SexPlanet is known by all major players in this industry as an Adult Content pay site for end users!
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel received the supplementary submissions in order to determine whether or not to admit them. The Reply does not raise evidence not reasonably available to the Complainant at the time of its initial submission, nor arguments by the Respondent that the Complainant could not reasonably have anticipated. For the reasons given in Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151), this Panel does not admit the Reply, nor the Respondentís Rejoinder.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).
Respondent concedes that the disputed domain name is identical to Complainantís registered trademark SEXPLANET.COM and the Panel so finds.
The Complainant has established this element.
The Complainant is the proprietor of the Canadian registered trade mark SEXPLANET.COM, which was assigned to the Complainant on March 22, 2001. The Complainant has not authorized the Respondent to use that mark nor to register the disputed domain name. However, the disputed domain name was registered on October 5, 1998, before the application to register the trade mark was filed.
Assuming, in the Complainantís favour (although the evidence is by no means satisfactory):
- that the Complainant was using to distinguish its services in Canada the unregistered trade mark SEXPLANET.COM from May 30, 1996 (as well as and as distinct from using the domain name <sexplanet.com> to enable Internauts to connect their computers to that of the Complainant); and
- that the mark had become distinctive of the Complainantís services in Canada by the time of the registration of the disputed domain name in 1998,
there is no evidence that the Respondent was aware of the Complainant nor of the Complainantís use in Canada of the trade mark nor of the Complainantís domain name prior to the Respondentís registration of the disputed domain name.
The Panel does not accept that, as at October 5, 1998, the Complainantís common law Canadian trade mark was so well known that the Respondent, then in the United Kingdom, is likely to have been aware of it.
The Complainant argues that it is likely the Respondent was aware of the Complainantís website before registering the disputed domain name. On all the material before the Panel, the Panel is not prepared to draw such an inference.
The Panel accepts that the Respondent simply chose its desired domain name, enquired whether it was available and, finding that it was, registered it. The combination of the words SEX and PLANETS is not so improbable that, in the context of adult web sites, it could only have come to the Respondentís founders because they were aware of the combination devised by the Complainant of SEX and PLANET. The Panel accepts the Respondentís explanation as to how the name was chosen because the original web page design, long before this dispute arose, accords with that explanation.
Having registered the disputed domain name without knowledge of the Complainant, its mark or its domain name, the Respondent immediately commenced using it to further its business plan of providing bona fide free hosting services to webmasters in exchange for advertising revenue generated from banners displayed on the adult sites hosted. It was almost 2 years later that the Complainant first approached the Respondent. The Panel concludes that the Respondent has demonstrated its rights and legitimate interests in the disputed domain name within paragraph 4(c)(i) of the Policy.
The Complainant has not established this element.
Bad faith registration and use
Some two years after the Respondent registered the disputed domain name, the Complainant approached the Respondent and the Respondent suggested the Complainant might buy out the Respondent. The parties are in heated disagreement as to whether this was an offer to sell the disputed domain name or an offer to sell the Respondentís business.
It is not necessary to resolve this issue because, even if the Respondent was offering in 2000 to sell the disputed domain name, in the absence of a finding that the Respondent was aware of the Complainant, its mark or its domain name at the time of registration in 1998, the conclusion cannot reasonably be drawn that sale at a profit to the Complainant was the primary purpose of the Respondent in registering the disputed domain name.
The question arises whether, having been put on notice of the Complainantís trade mark in 2000, the Respondent has thereafter intentionally attempted to attract Internauts to its site by creating a likelihood of confusion with the Complainantís mark. The Respondent stands to benefit from every Internaut visiting any of the sites hosted by the Respondent so that even if some Internauts, seeking the <sexplanet.com> site, stray unintentionally to the Respondentís site, it could be tempting to divert that traffic to one of the sites hosted by the Respondent. A finding of bad faith use under these circumstances would constitute also evidence of bad faith registration, under paragraph 4(b)(iv) of the Policy.
However, in Shirmax Retail Ltd./D'etaillants Shirmax Lt'ee v. CES Marketing Group Inc. (eResolution case AF-0104), panelist Sorkin said:
"Öthe Panel is not required to assign substantial weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved".
In commenting on this passage, the Panel in Passion Group Inc. v. Usearch, Inc. (eResolution case AF-0250) said:
"This approach accords with the Policy by enabling a finding of bad faith registration to be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which the domain name was registered. Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within 4(b)(iv). It is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith."
This approach was followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava (WIPO Case No. D2000-0905).
Here, the Panel finds the evidence positively establishes good faith registration and accordingly it is unnecessary to determine whether the Respondent has used the disputed domain name in bad faith after having become aware of the Complainantís trade mark and website.
The Complainant has not established this element.
Reverse domain name hijacking
Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, Respondent must show either that Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith (See Sydney Opera House Trust v. Trilynx Pty. Ltd., (WIPO Case No. D2000-1224) and Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151)) or that the Complaint was brought in knowing disregard of the likelihood that the Respondent possessed legitimate interests (See Smart Design LLC v. Hughes (WIPO Case No. D2000-0993)).
Here the Respondent informed the Complainant in 2000 of the facts as now found by the Panel. The Complainant waited until it had obtained ownership of the trade mark before commencing this proceeding. Despite this, the Panel does not regard the Complainant as having acted in bad faith in bringing this proceeding, in light of the similarity in content between the Complainantís website and those hosted by the Respondent and the interpretation which the Complainant placed upon the Respondentís offer to sell out to the Complainant.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel states that this proceeding is outside the scope of the Policy. The Complaint is therefore denied.
Alan L. Limbury
Dated: January 24, 2002