WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bret Kelly v. Meridian Global Ventures

Case No. D2003-0227

 

1. The Parties

The Complainant is Bret Kelly, of Toronto, Ontario, Canada ("Complainant"). Complainantís authorized representative is J. Christa Thomas of Jellinek, Thomas, with offices in Toronto, Ontario, Canada.

The Respondent is Meridian Global Ventures of Gibraltar, Gibraltar ("Respondent"). Respondentís authorized representative is Craig A. Ash of Oyen Wiggs Green & Mutala, with offices in Vancouver, British Columbia, Canada.

 

2. The Domain Name and Registrar

The domain name at issue is <selfpics.org> ("the Domain Name").

The registrar is Tucows Inc. of Toronto, Ontario, Canada ("the Registrar").

 

3. Procedural History

The Complaint was (electronically) filed with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center ("the Center") on March 21, 2003. The hardcopy version of the Complaint was received on March 24, 2003. On March 24, 2003, the Center sent an Acknowledgement of Receipt to the Complainant.

On March 24, 2003, a Request for Registrar Verification was transmitted to the Registrar. On March 24, 2003, the Registrar confirmed by e-mail that the Domain Name is registered with the Registrar, that Respondent is the current registrant of the Domain Name and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") does apply to the Domain Name.

On March 25, 2003, the Center sent a Complaint Deficiency Notification to Complainant, as the Complaint indicated an incorrect name and incorrect contact details for the Registrar. Complainant responded on March 25, 2003, by sending the Center an Amendment to the Complaint.

The Center verified that the Complaint satisfied the formal requirements of the Policy, 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").

On March 26, 2003, a Notification of Complaint and Commencement of Administrative Proceedings was transmitted to Respondent, setting a deadline on April 15, 2003, by which date Respondent could file a Response to the Complaint. The Response was filed with the Center on April 12, 2003 (e-mail), and April 14, 2003 (hardcopy).

On April 23, 2003, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist and the projected decision date was set at May 7, 2003.

 

4. Factual Background

The following facts are established, as they are supported by sufficient evidence, or have not been sufficiently disputed.

Complainant is the owner of two United States trademark registrations for the trademarks GAYSELFPICS and GAYSELFPIX. The services in connection with which the trademarks have been registered and are used are entertainment services, particularly providing an online adult entertainment content website catering primarily to the gay community. Complainant operates a website under the domain names <gayselfpics.com> and <gayselfpix.com>.

The visitors to this website are invited to post (particularly: erotic) photographs of themselves, or to view, against payment, the photographs posted by other visitors.

The Domain Name was registered on April 6, 2000. According to Respondent, it was registered by an individual person who later incorporated Respondent; however, no documents are submitted to verify this. Respondent has, by supplying Internet archive search results, shown that the website under the Domain Name has been operating since September/October 2000.

Respondent, like Complainant, provides services relating to the adult amateur pornography industry, via its website under the Domain Name. As with Complainantís website, the visitor can post photographs of him or herself, particularly photographs of an erotic nature, and add personal information and contact details, or view the photographs and personal information posted by other users of the website.

Complainant states that Respondentís website is primarily aimed at the gay community, as most people accessing the site and posting photos and personal information state that they are either gay or bisexual. Respondent states that its website is not restricted to one segment of the population and that it aims at heterosexuals, lesbians, bisexuals, transgender persons as well as homosexual men.

The photographs posted on Respondentís website show that it is predominantly used by gay men, as argued by Complainant. However, it differs from Complainantís website as women (either lesbian, bisexual or heterosexual) are also invited, and actually do post photographs.

On November 5, 2002, Complainant's authorized representative sent an e-mail to Respondent, claiming that the Domain Name is confusingly similar to the trademarks GAYSELFPICS and GAYSELFPIX and demanding that Respondent would cease and desist from using the Domain Name. Respondentís authorized representative answered by letter on November 15, 2002, in which he summarily rebutted Complainant's assertions and dismissed his demand.

Complainant filed the Complaint on March 21, 2003.

 

5. Applicable Rules

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

"(i) the domain name at issue is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith."

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondentís rights or legitimate interests to the domain name for the purpose of paragraph 4(a)(ii) above.

 

6. Partiesí Contentions

A. Complainant

Complainant states that his trademarks GAYSELFPICS and GAYSELFPIX are well-known trademarks.

Complainant contends that the sole difference between his trademark GAYSELFPICS and the disputed Domain Name is the word GAY, that this difference is immaterial, and that given the fact that both parties are working in the online adult entertainment business catering to the gay community, the Domain Name is confusingly similar to the trademark.

Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant argues that Respondent, when it registered the Domain Name (April 6, 2000), must have been aware of Complainantís existence, as Complainant started to use the trademark GAYSELFPICS in April 1998, two years before the Domain Name was registered, while Complainant's website is one of the highest traffic adult entertainment websites on the internet, and both Complainant and Respondent conduct business in the same industry.

Furthermore, Complainant states that the Domain Name was registered and is being used in bad faith, as Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainantís mark, while Complainant also states that the Domain Name was registered primarily for the purpose of disrupting the business of a competitor, namely Complainant's business.

B. Respondent

Respondent denies that the Domain Name is confusingly similar to either of Complainantís trademarks. The designation "selfpics" is merely a combination of the terms "self" and "pics," the word "self" meaning "of oneself," the element "pics" (or "pix") being a slang reference for "photographs." The term "selfpics" or "selfpix" is clearly descriptive, and is commonly used in this descriptive sense by many parties, apart from Complainant and Respondent. If one enters the designation "selfpics" into a search engine such as Google, several hits are generated and on several of the websites the search engine refers to, the terms "selfpics" and "selfpix" are used in relation to "self photographs."

The omission of the term "gay" in the Domain Name (as compared to the trademarks) is not immaterial. This first portion of the trademarks plays a dominant and controlling role in the consumers' perception of that mark; it indicates that the services provided on the corresponding website are directed to gay persons, and not to heterosexual persons; the term "gay" acts to preclude any possibility of confusion between the Respondent's Domain Name and the Complainant's trademarks.

Respondent argues that it has rights and legitimate interests in respect of the Domain Name, as it was chosen by Respondent's predecessor (the individual who according to Respondent registered the Domain Name) because it was clearly descriptive of the services proposed to be offered on the corresponding website, and because it was an easily remembered domain name having regard to those services (a website allowing its users to post and view "self pics"). Respondent and its predecessor did not have any knowledge of Complainant, his websites or his trademarks until November 5, 2002, when Respondent received the e-mail sent by Complainant's authorized representative.

Respondent states that it has legitimate rights or interests in respect of the Domain Name, as it has established its use of the Domain Name in connection with a bone fide offering of its "selfpics" services.

Respondent contends that the Domain Name was not registered and is not being used in bad faith, as Respondent and his predecessor had no knowledge of the existence of Complainant, his website or his trademarks until the November 5, 2002, e-mail sent by Complainantís authorized representative. Complainant did not even file his trademark applications until July 27, 2001, long after the Domain Name was registered and after the use of the Domain Name in connection with services had commenced. Respondent contends that the Domain Name could not have been registered primarily for the purpose of disrupting the business of a competitor, as Respondent's predecessor who registered the Domain Name was not even aware of Complainant when the Domain Name was registered, whereas it is difficult to understand how the registration of the Domain Name could have been intended to disrupt the Complainant, given that Complainant had by then already registered two domain names (<gayselfpics.com> and <gayselfpix.com>) which corresponded exactly to his two trademarks.

Respondent furthermore denies that by using the Domain Name it attempts to attract, for financial gain, internet users to its website by creating a likelihood of confusion with Complainant's mark, as at the time of registration of the Domain Name it was not aware of Complainant, his marks and his website, while there is no likelihood of confusion as the terms "selfpics" and "selfpix" are not exclusively used by Complainant, but are instead in widespread use by numerous parties in a descriptive manner.

Finally, Respondent requests the Panel to declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding (Reverse Domain Name Hijacking, Rules, Paragraph 15(e)), as Complainant, after receiving a letter from Respondent's authorized representative dismissing the claims, nonetheless proceeded with the Complaint, despite there being no possibility of success under the Policy, in an attempt to hijack Respondent's valuable Domain Name or to harass Respondent.

 

7. Discussion and Findings

A. Trademark rights

Complainant has provided sufficient evidence of its rights to the United States trademarks GAYSELFPICS and GAYSELFPIX ("the Trademarks"). The Panel notes that the Trademarks have been in use since (GAYSELFPICS) April 19, 1998, and (GAYSELFPIX) December 20, 1999, but were only filed on July 27, 2001, and registered on October 29, 2002. This implies that Respondent, when registering the Domain Name on April 6, 2000, could not have become aware of the Trademarks by consulting the USPTO register.

Complainant has failed to found his assertion that the Trademarks are well-known. The single Ė undisputed Ė remark that Complainant's website receives approximately 360.000 unique visitors per month, is insufficient, given the absence of any other information, such as data on the websiteís relevant market share.

B. Confusingly similar

The Panel finds that the Domain Name is not confusingly similar to the Trademarks.

In the first place, the Panel is of the opinion that the term "selfpics" is a purely descriptive term. The term "self," in the connotation of both the Trademarks and the Domain Name, means "of oneself," and the term "pics" is a commonly used slang word (especially on the Internet, on adult content websites as well as on other websites) for "photographs."

A small-scale investigation on the internet shows that the term "selfpics" is quite commonly used on the internet to indicate photographs of oneself (particularly erotic photographs), while the use of this English term can also be seen on websites using other languages than English, such as German and Dutch. The term "selfpics" should therefore be regarded as a word for "photographs of oneself" in Internet jargon.

Therefore, the Trademarks are, if not entirely, then to a large extent, descriptive, referring to (particularly erotic) self-photographs of gay men.

In the Panelís opinion, this very high degree of descriptiveness of the Trademarks makes it doubtful whether the validity of the Trademarks would be upheld if challenged in the appropriate court of law. In any case, this implies that the scope of protection of the Trademarks is very limited, probably only to identical or nearly identical (typing Ďerrorsí) domain names. For this reason the Domain Name - which is at least as descriptive as the Trademarks and which does not include the word Ďgayí - and the Trademarks cannot be considered confusingly similar. In view of this, Complainantís argument that the fact that the parties are both in the online adult entertainment business and both cater to the gay community is irrelevant.

For completenessí sake, it is mentioned that the presence of the ".org" suffix in the Domain Name is immaterial, as it only indicates that the Domain Name is registered in the ".org" gTLD.

As Complainant has not established that the Domain Name is confusingly similar to his trademarks, the Complaint fails.

This means that the Panel does not have to consider whether the Respondent has rights or legitimate interests in the Domain Name, and whether the Domain Name was registered and is being used in bad faith.

C. Reverse Domain Name Hijacking

Respondent has asked the Panel to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative procedures.

Rule 15(e) states that the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding, if it finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain name holder. 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.

To prevail on such a claim, it has been held that a Respondent must show knowledge on the part of the Complainant of Respondentís right or legitimate interest in respect of the domain name at issue and evidence of harassment or similar conduct by Complainant in the face of such knowledge. (See e.g. Plan Express Inc. v Plan Express (WIPO Case D2000-0565), Sydney Opera House Trust v. Trilynx Pty. Ltd., (WIPO Case D2000-1224).

The Panel finds that Respondent has failed to provide such evidence. Although Respondentís authorized representative replied to the cease and desist e-mail sent by Complainantís authorized representative with the November 15, 2002, letter, he only summarily rejected Complainantís claims and did not provide (most of) the argumentation brought forward in the Response. Furthermore, Respondent has not provided any evidence that Complainant was convinced that Respondent had unassailable rights or legitimate interests in the Domain Name, but nonetheless filed the Complaint, nor that Complainant merely filed the Complaint to harass Respondent.

The request to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding is therefore dismissed.

 

8. Decision

The Complaint is dismissed.

 


 

Wolter Wefers Bettink
Sole Panelist

Dated: May 7, 2003