WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jenna IP Holding Company LLC v. Mobile Alive Pty Limited
Case No. DAU2006-0013
1. The Parties
The Complainant is Jenna IP Holding Company LLC, c/o Anamaria E. Cashman, of Scottsdale, Arizona, United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Mobile Alive Pty Limited, c/o Gary Diamond, of Ultimo, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <clubjenna.com.au> is registered with Bottle Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2006. On October 19, 2006, the Center transmitted by email to Bottle Domains a request for registrar verification in connection with the domain name at issue. On October 23, 2006, Bottle Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response November 20, 2006. The Response was filed with the Center on November 20, 2006.
Supplemental filings were filed by the Respondent on November 21 and 22, 2006, and by the Complainant on December 1, 2006.
The Center appointed Alan L. Limbury, James A. Barker and Dan Hunter as panelists in this matter on January 25, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel has taken the Respondent’s supplemental filings into account because they were submitted only marginally later than the Response and, because those filings gave details not previously provided to the Complainant of the licence arrangements on which the Respondent relies. The Panel has also taken the Complainant’s supplementary filing into account insofar as it addresses that issue.
4. Factual Background
The Complainant owns the intellectual property associated with Jenna Jameson, the professional name of one of the world’s most famous porn stars. Since 1999, Complainant has operated a website at “www.clubjenna.com” on the domain name <clubjenna.com>. It has registered three trademarks in the United States of America, including No. 2694485 CLUB JENNA, registered on March 11, 2003, for entertainment services in class 41, namely providing visual images and articles in the field of adult entertainment via a global computer network, the Internet or the world wide web. On August 10, 2006, the Complainant applied to register CLUB JENNA as a trademark in Australia (in two trademark applications, each for classes 9, 35 and 41, with Trademark Numbers 1129028 and 1129029 respectively). These applications remain pending.
Respondent was incorporated in New South Wales, Australia, on January 28, 2004. On March 21, 2006, it registered the disputed domain name <clubjenna.com.au>, which resolves to a website displaying images of Jenna Jameson, offering adult ring tones and images for downloading to consumers’ mobile phones.
Following a cease and desist letter from the Complainant’s lawyers dated August 1, 2006, which sought transfer of the disputed domain name, the Respondent’s lawyers asserted that the Respondent was licensed to display Jenna Jameson images on its website and stated:
“We are instructed by our client that it has invested a significant amount of money in marketing the content of the website, “clubjenna.com.au”, and that in relinquishing the domain name our client would forfeit considerable expenditure (in the order of some $85,000).
In such circumstances your client would become the ultimate beneficiary of marketing, promotion and advertising expenses expended by our client to date. Our client considers that this would amount to an unjust enrichment particularly when it considers that it was and is entitled to be the holder of the domain name…”
5. Parties’ Contentions
The Complainant says the disputed domain name is identical to its registered mark CLUB JENNA and that the Respondent has no rights or legitimate interests in the disputed domain name. In this regard the Complainant says the Respondent’s website hosts a “knock-off” or counterfeit of its own website at “www.clubjenna.com”, designed to appear as if it were being operated by the Complainant and to appear as if the goods and services being offered for sale were the genuine goods and services of the Complainant, whereas the images of Jenna Jameson and other material displayed on the Respondent’s website are not authorized by Complainant. The Complainant says this use and the “thinly veiled offer to sell the disputed domain name for $80,000” [sic] demonstrate bad faith registration and use of the disputed domain name.
The Respondent says it offers and retails mobile related services. It markets content (including wallpapers, ringtones, screensavers, videos and games), which is sent to wireless devices including mobile and cellular phones. It also markets chat and dating services.
The Respondent says it has legal rights to market Jenna Jameson content and to use the Jenna Jameson name in relation to the marketing of that content. It did prominently display copyrighted images of Jenna Jameson and the CLUB JENNA trademark on its website, as it was entitled to do under a licence derived from Mac & Bumble, the copyright holder of the content. Mac & Bumble licensed Media Rights America, which licensed Trans World Sales, which, in turn, licensed the Respondent. In one of its supplementary filings, the Respondent produced the relevant correspondence evidencing the first and third of these arrangements.
The Respondent says the disputed domain name refers to a product that the Respondent sells or a service that the Respondent provides, so the Respondent was eligible to register the disputed domain name.
The Respondent denies the Complainant’s assertions of bad faith and in particular denies attempting to extort $80,000. The Respondent says there was no bad faith in registering and using the domain name as content was legally obtained with full rights to market it.
C. Complainant’s Supplementary Submission
The Complainant has provided a copy of its licence to Mac & Bumble and says that it does not authorize sublicensing. It maintains its contention that the content of the Respondent’s website was unauthorized.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to establish three elements:
1. The Complainant has rights in a name, trademark or service mark, with which the Respondent’s domain name is identical or confusingly similar (paragraph 4(a)(i)); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii); and
3. The Respondent registered or is subsequently using the domain name in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
There is no dispute that the disputed domain name <clubjenna.com.au> is identical to the Complainant’s registered trademark CLUB JENNA. The TLD elements, “.com.au” are to be disregarded as inconsequential.
The Panel finds that the Complainant has established this element of its case.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), as is the case under the UDRP, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. However, once a complainant has made a prima facie showing, the burden of proof shifts to the respondent to show by providing concrete evidence (i.e. more than mere personal assertions) that it has rights to or legitimate interests in the domain name at issue. Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
Whether or not the Respondent was authorized to display any content relating to Jenna Jameson, the Complainant did not authorize the Respondent to register a domain name incorporating its CLUB JENNA mark. The Respondent is not commonly known by the disputed domain name. This amounts to a prima facie case.
The Respondent relies primarily on its alleged licence to display content as demonstrating its legitimate interest in the disputed domain name. It is unnecessary for the Panel to determine whether or not the Respondent was validly licensed to display Jenna Jameson related content at its website. Even if it were so authorized, the Panel does not accept that this would demonstrate rights or legitimate interests in the domain name <clubjenna.com.au>, which carries with it the false representation that it is the Australian domain name of the Complainant. The right to display images does not provide any rights or legitimate interests in the domain name through which those images are displayed, where the domain name incorporates the Complainant’s trademark.
The Respondent also relies on the connection between the domain name and the content of its website as fulfilling the eligibility criteria for registration. However, as footnote 2 to paragraph 4(a)(ii) of the Policy makes clear, rights and legitimate interests in a domain name are not established merely by satisfying the eligibility criteria.
The Panel is satisfied that the Respondent has not demonstrated that it has rights and legitimate interests in the disputed domain name and accordingly the Complainant has established this element of its case.
C. Registered and Used in Bad Faith
It is unnecessary to decide whether the reference to $85,000 was an offer to sell the disputed domain name to the Complainant.
Internet users would expect a website at the disputed domain name to be the Australian website of the Complainant. Accordingly, whether or not the Respondent had a licence to display the content of its website, the Panel finds that the Respondent has used the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s United States of America registered CLUB JENNA mark as to the endorsement of its website. This is evidence of both bad faith registration and bad faith use according to the example provided in the Policy, paragraph 4(b)(iv).
The Panel finds that the Complainant has established this element of its case.
Since the Complainant has applied to register in Australia the CLUB JENNA mark (under Trademark Numbers 1129028 and 1129029), and for all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <clubjenna.com.au> be transferred to the Complainant.
Alan L. Limbury
James A. Barker
Dated: February 7, 2007