WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alpine Entertainment Group, Inc. v. Walter Alvarez
Case No. D2007-1082
1. The Parties
The Complainant is Alpine Entertainment Group, Inc. of Florida, United States of America, represented by Marc J. Randazza, Esq. of Florida, United States of America.
The Respondent is Walter Alvarez of Malmo, Sweden, represented by Paul Raynor Keating, Esq. of Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <realspanking.com> is registered with GoDaddy, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2007. On August 2, 2007, the Center transmitted by email to GoDaddy, Inc. a request for registrar verification in connection with the domain name at issue. On August 2, 2007, GoDaddy, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 6, 2007. In accordance with the Rules, paragraph 5(a), and after an extension of time was granted to the Respondent, the due date for Response was September 3, 2007. The Response was filed with the Center on September 3, 2007.
The Center appointed John Swinson, David Quinto and G. Gervaise Davis III as panelists in this matter on October 24, 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.
Both parties have submitted supplemental filings which have been noted by the Panel, and which are discussed by the Panel further below (see paragraph 4.F).
This case involves a refiling of a previous complaint, the decision of which is recorded in Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2006-1392. One of the consequences of the refiling is that it has considerably increased the level of documents produced and arguments made in the dispute, all of which were considered by the Panel. This has necessitated the Panel requesting the Center to notify the parties of extensions of time to the due date for decision until December 4, 2007.
4. Preliminary Issues
A. Decision in the first Complaint: WIPO Case No. D2006-1392
On October 30, 2006, the Complainant previously filed a complaint with the Centre against the Respondent in relation to the disputed domain name (see Alpine Entertainment Group, Inc v. Walter Alvarez, WIPO Case No. D2006-1392). A large number of supplemental filings were provided in this earlier dispute, however the prior three member panel chose to deal with the dispute on the basis of the amended complaint and response only.
In a decision dated January 22, 2007, the prior panel denied the complaint on the basis that the first element was not met. In particular, it was held that the Complainant’s evidence was insufficient to show that the Complainant had proved trademark rights in “Real Spankings”.
At that stage, the Complainant had recently filed a United States of America trademark application which was still pending, and the prior panel decided that trademark applications alone were not sufficient to establish rights in a mark for the purposes of the Policy. The prior panel also took into account that the disputed domain name was originally registered in 1999 (to someone other than the Respondent), and the Complainant only applied for trademark rights in 2006.
While the Complainant also asserted common law rights, the prior panel found that the Complainant had provided almost no evidence of distinctiveness or protectable secondary meaning (such as the length and amount of sales, nature and extent of advertising, media recognition) to support this. The Complainant asserted that it spent considerable economic resources to market its goods under the trademark, but failed to submit such evidence in the actual complaint.
The prior panel also considered the claimed “Real Spankings” mark to be prima facie descriptive, and again decided that there was insufficient evidence provided by the Complainant of unregistered trademark rights necessary to defeat an allegation of descriptiveness.
B. Rehearing of Complaint
In Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703, the Panel referred to Paragraph 15(a) of the Policy which states that a Panelist is required to “decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel found that there were no rules relating to rehearing of a Complaint and concluded that: “It is therefore appropriate to consider by analogy well-understood rules and principles of law relating to the re-litigation of cases determined after a defended hearing.” One of the circumstances which may warrant a rehearing “is the discovery of new evidence which, with the exercise of due diligence, would not have been reasonably available at the time of the original hearing…”.
In the Grove case, the panelist referred to the following considerations in relation to fresh evidence:
“…first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial; second, the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive; third, the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible.”
This case concerns a refiled complaint that involves acts which have occurred subsequent to the decision on the original complaint. As is apparent from the Complainant’s submissions, it bases its case for reconsideration on the “discovery of new evidence” ground.
In Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490 the following general principles were noted: “First, the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy rests on the refiling complainant. Secondly, that burden is high. Thirdly, the grounds which allegedly justify entertaining the Refiled Complaint need to be clearly identified by the refiling complainant.”
C. New Complaint
The Complainant makes the following arguments and submissions relating to the refiling:
The new Complaint filed by the Complainant contains evidence that the REALSPANKINGS trademark has registered in the United States (date of registration is May 15, 2007). The date of first use of this registered trademark is stated to be 1997, which prima facie gives the Complainant trademark rights sufficient for the purposes of the policy. Further, the Complainant’s US registered trademark rights date back to the date of filing (July 6, 2006) which is before the date that the Respondent acquired the disputed domain name.
As the Complainant filed for its trademark prior to the Respondent registering the disputed domain name, the Policy requires the Complainant’s trademark rights to prevail. Registration in the trademark register is prima facie evidence that the mark is or has become distinctive.
The Complainant contends that the issuance of a previously pending trademark application is sufficient to represent changed circumstances in order to warrant a full review on the merits of a re-filed complaint.
New evidence of bad faith
The Complainant also introduces new allegations that the WHOIS information provided by the Respondent is false. The Complainant states that at the time of filing the original complaint, the Complainant was unaware of the false nature of the WHOIS information provided by the Respondent.
The Complainant has also become aware of acts of the Respondent which it alleges constitute bad faith, such as the infringement of other trademarks, and notes that the Respondent’s website now displays the name of the Complainant as well as a link to the Complainant’s website.
Misrepresentations made by the Respondent
The fresh Complaint alleges that the Respondent made various misrepresentations in the first response, which were likely to have misled the prior panel. For example, the Respondent’s representation that a State trademark registration has no legal significance; that the then pending federal trademark would never perfect; and that the Respondent intended to launch a spanking fetish website from the disputed domain name.
The Respondent also misrepresented that it was the registrant of the disputed domain name from a date pre-dating the Complainant’s development of common-law trademark rights and application for federal trademark rights, when in fact the Respondent registered the domain name on October 6, 2006. This misrepresentation appears to have directly influenced the Panel’s decision in the prior case.
Breach of Natural Justice
The new Complaint alleges that the panel in the original dispute misinterpreted the UDRP and the decisions on which it relied.
Additionally, the Complainant in the original dispute was attacked with a charge of Reverse Domain Name Hijacking. This was in effect a counter-claim, but the Complainant was not provided with an opportunity to respond to the counter claim. Rule 10(b) demands that a panel ensure that each party is given a fair opportunity to present its case. Failing to provide the Complainant with an opportunity to respond to the counter-claim was a breach of natural justice, notwithstanding that the prior panel ultimately rejected the charge of Reverse Domain Name Hijacking.
D. New Response
The Respondent makes the following arguments and submissions relating to the refiling:
The acceptance of a refiled case is exceptional and the Complainant’s burden is high.
The Respondent states that the original decision was not hastily made, nor was there any clear error made, and the issues raised in that case are identical to those in this Complaint. The facts of the Creo case (where the refiling was allowed) were unique and very different to this case, as it concerned the conduct of the Respondent after the decision which could not have been anticipated during the initial action. Here, the Complainant was wholly in control as to what material the original complaint contained. The new Complaint is nothing more than the Complainant attempting to have a “second bite at the apple”.
The Respondent contends that the only distinction between the prior case and this Complaint is the Complainant’s newly acquired trademark registration. The Respondent claims that the trademark application was rejected twice because the trademark was considered to be purely descriptive. The application was only granted after it was amended based on exclusive and substantial use for the past five years and because the Complainant submitted evidence of acquired distinctiveness. This evidence, in the Respondent’s opinion, is inconclusive of substantial exclusive and continuous use.
The presence of the Complainant’s registration does not change matters - the registration is prima facie evidence and remains subject to challenge (which is exactly the same challenge that took place in the first case). All of the same information was known by the Complainant and was considered and unanimously rejected by the prior panel, which precludes this case from falling within any exception to refiling.
If the current Complaint is allowed, its contents should be limited only to new elements. Much of the new evidence submitted by the Complainant relates to the issue of secondary meaning, and this information should be excluded as it was known to the Complainant prior to submitting the first complaint.
The registration of the Complainant’s trademark post-dates the date that the Respondent registered the disputed domain name and accordingly is not a new fact. It is also irrelevant to the Respondent’s activities in Sweden.
The Complainant’s submissions to the US Patent and Trademarks Office (in amending its trademark application) is an admission that the mark is descriptive, and as a descriptive mark, it is not entitled to any rights absent a strong showing of secondary meaning - the fact that the US Patent and Trademarks Office registered the mark does not alter this requirement. Accordingly, the first element of paragraph 4(a) of the Policy is still open to challenge.
New allegations of bad faith
The WHOIS information on the Respondent is correct, and even if it were incorrect, it would not have assisted the Complainant in the prior case as they failed on the first element. This cannot be grounds for refiling.
The Complainant has not shown a pattern by the Respondent of registering domain names to prevent the owner of the trademark from reflecting those names in corresponding domain names. In any event, this would not have assisted the Complainant in the prior case and is not new evidence.
The Respondent does not deny the existence of a link on its website to the Complainant’s website, but does deny that this shows bad faith. The link was included in a list of seven entries relating to spanking sites, and if anything is evidence that the mark is used in a descriptive fashion. The inclusion of the link is not evidence of bad faith as it was determined by the search provider (Google/Yahoo) and not the Respondent.
Alleged misrepresentations made by Respondent
The Respondent did not make the misrepresentations alleged by the Complainant.
A State trademark registration does not have any significance in the UDRP context absent strong showing of secondary meaning. The Panel did in fact address the alleged Colorado filing and found it lacking. They then stated that the “strong evidence” of secondary meaning was also lacking.
The disputed domain name was first registered in December 1998, and has been continually used since that time to portray adult content relating to spankings and corporal punishment. The Respondent acquired the domain name in October 2006 in an arms-length transaction using the escrow services of Escrow.com.
The Respondent still has an intention to launch a better site at the disputed domain name but has chosen not to until this matter is finalized. The prior panel considered all facts and supplemental filings but still found the Complainant’s case lacking. The prior panel were experienced and sophisticated panelists and they cited ample authority for their position.
Breach of Natural Justice
The was no breach of natural justice. The Respondent refers to Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703, where the panelist, Sir Ian Barker QC, stated, “In a case where a party has had every opportunity to put forward its case, there is no suggestion that the Panel acted in disregard of principles of natural justice; there should not be another opportunity.”
Viewed in a most favorable light, the Complainant’s arguments relating to a breach of natural justice amount to a disagreement with the panel’s decision.
E. Decision on re-hearing the fresh complaint
The Panel considers that the new Complaint is based both on new evidence in relation to the acts which formed the basis of the original complaint, and on acts which have occurred subsequent to the decision on the original complaint (Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490).
The new evidence is the evidence that the United States trademark REALSPANKINGS has now registered. Given that the prior case failed on the first element, the new evidence of trademark registration is likely to have an important influence on the result of the case, although it may not be decisive. The registration of the REALSPANKINGS trademark is not challenged by the Respondent.
This new evidence was not in existence at the time of the earlier decision and was therefore unable to be considered by the prior panel in relation to its original finding under the threshold first element of the Policy. The Panel therefore finds that the refiled Complaint should be heard by the present Panel.
The Panel also considers that subsequent to the original decision, the Complainant has become aware of acts of the Respondent that may constitute bad faith. These include the alleged infringement of other trademarks and the links on the Respondent’s website to the Complainant’s website. Although each of these acts alone may not be sufficient to constitute a basis to re-hear this dispute, when considered together with the registration of the US trademark they are sufficient, in this Panel’s view, to constitute a good reason to re-hear this dispute.
The Panel has accepted a supplemental filing from the Respondent’s representative that the Respondent does in fact reside in Sweden. The Panel does not accept the Complainant’s allegation that the WHOIS information provided by the Respondent for the original complaint was false.
The Panel does not consider that there has been a breach of the rules of natural justice. This Panel considers that the prior panel decided the case on the basis of the evidence presented to them and in accordance with the Rules and Policy. As stated in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703:
“After all, it was the Complainant who failed to provide sufficient information that might have discharged the onus of proof. A Complainant should “get it right” the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules.”
The learned panel in that case, in declining to consider a fresh complaint on its merits, also concluded by observing that while the complainant should have presented all of its evidence the first time, it chose not to do so. This may be distinguished to some extent from the situation in the present case in which the Complainant, while it may have chosen the original time of filing, has nevertheless presented new and probative evidence which was not in existence at that point, and of which the previous panel did not have the benefit in rendering its earlier decision.
On balance, the present Panel believes that the circumstances of the case are such as to warrant a re-examination on the merits, and the Panel therefore finds that the re-filed Complaint should be heard.
F. Supplemental filings
Both the Complainant and Respondent have made a number of supplemental filings (similar to the first complaint). The Panel has considered all of these supplemental filings but, except for the supplemental filing made by the Respondent’s representative on November 14, 2007, the Panel has chosen to decide this Complaint on the basis of the Complaint and Response only. The supplemental filings were repetitious, voluminous and unhelpful.
The Respondent’s representative submitted a supplemental filing on November 14, 2007 advising that the Respondent does not reside in Barcelona, Spain, and in fact resides in Sweden. This supplemental filing has no impact on the Complainant. The Panel has considered this supplemental filing and taken it into account when making its decision.
5. Factual Background
The Complainant is a United States company which provides adult entertainment services.
The Complainant filed a trademark application in the United States Patent and Trademark Office on July 6, 2006 over REALSPANKINGS. That mark registered on May 15, 2007.
The Complainant is the registrant of the domain name <realspankings.com>, which was registered on March 25, 1998.
The Respondent became the registered owner of the disputed domain name <realspanking.com> on October 6, 2006. The Respondent was not the first registrant of the disputed domain name. The disputed domain name was first registered in December 1998. The Respondent acquired the domain name using the escrow services, Escrow.com. The prior owner has stated in an email filed with the Complaint that he sold the Respondent the domain name only and not any related business or content from the previous website.
6. Parties’ Contentions
The Complainant makes the following submissions and arguments:
Identical or confusingly similar
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has registered and unregistered common law trademark rights (being US registration no. 3,242,000 and Colorado registration no. 20061445869, and common law rights established over 9 years of continuous use). The disputed domain name is identical to the trademark, except for the deletion of an “s”.
The Complainant’s US registered trademark rights date back to the date of filing (July 6, 2006), which is before the date that the Respondent acquired the disputed domain name.
As the Complainant filed for its trademark prior to the Respondent registering the disputed domain name, the Policy requires the Complainant’s trademark rights to prevail. Registration in the trademark register is prima facie evidence that the mark is or has become distinctive.
The Complainant’s State trademark registrations are also sufficient to establish rights under the UDRP.
The Complainant has common law rights in the trademark, through continued operation of its “www.realspankings.com” website since 1998, extensive spending related to the marketing of goods under the trademark, and the registration of thirty-five other websites which contain variants of the trademark.
The relevant marketplace strongly and universally associates the name and trademark REALSPANKINGS with the services provided by the Complainant, and even if it is argued that the mark is descriptive, it has achieved strong secondary meaning in the relevant marketplace. According to an expert in the field who filed a declaration with the US trademark application, the mark can only identify the Complainant.
Users who visit the website at the disputed domain name would be misled into believing it was in someway connected or affiliated with the Complainant. This is known as “initial interest confusion”. Such confusion has already occurred between the Complainant’s domain names and the disputed domain name. The Respondent’s website directly infringes of the Complainant’s trademark rights.
Rights or legitimate interest
The Respondent cannot show legitimate rights or interests in the disputed domain name.
The Respondent had actual or constructive knowledge of the Complainant’s mark when it registered the disputed domain name because of the Complainant’s application for trademark registration and common law rights.
The Respondent has not made any good faith or legitimate use of the disputed domain name, but only seeks to attract, for commercial gain, users to its pay-per-click website featuring links to third party websites which offer competing products and services. Pay-per-click sites and domain parking pages (as used by the Respondent) are not bona fide offerings of goods or services. Given the low quality of the generic parking page and links to sites containing content that the Complainant cannot control, the Respondent’s conduct may cause irreparable harm to the Complainant.
The Respondent chose to register the disputed domain name because of the likelihood of confusion (i.e. consumers making a typographical error in relation to the mark) and to bring additional traffic to the Respondent’s website.
In the previous case between the parties, the Respondent misled the panel by claiming that it registered the disputed domain name from a date pre-dating the Complainant’s common law trademark rights and that it had the intent to launch a spanking fetish website, however, the Respondent has not launched such a site.
The Respondent has infringed other third party trademarks by registering domain names such as <coachstore.com> and <gameboygames.com>. The Respondent has therefore engaged in a pattern of cybersquatting, which may be evidence of bad faith.
The Respondent has provided falsified information as to his address, which can constitute bad faith.
The Respondent makes the following submissions and arguments:
Identical or confusingly similar
Under paragraph 4(a)(i) of the Policy, the Complainant must show that the domain name is identical or confusingly similar to a mark in which the Complainant has rights.
The Respondent argues that the Complainant has no rights in the phrase, “real spankings”.
The Complainant has a trademark registered in the United States. There is no evidence of a trademark, or even an application, existing in any other jurisdiction. The Respondent is a Swedish citizen and resident. As such, the Respondent’s right to use the disputed domain name is derived from the laws of Sweden and the European Union.
Under European law, a trademark must be capable of distinguishing the goods and services of one company from those of others. When a trademark is descriptive (e.g. common words used in language), it cannot serve to identify a single source absent substantial evidence of secondary meaning.
The Complainant’s US registration was initially refused as descriptive, and was only granted because the Complainant submitted an affidavit of “acquired distinctiveness”. Even if the US trademark is valid, it only creates a prima facie basis for asserting a trademark for the purposes of the Policy, and if challenged there must be clear evidence of strong secondary meaning. The Respondent has a right to challenge the Complainant’s prima facie evidence of trademark rights. If the primary significance of a mark is to describe the type of product, then it is generic and never valid, or if it describes services, then it is considered descriptive. Descriptive marks require strong secondary meaning. The Complainant makes numerous references to spanking on its website, which is entirely descriptive. The Complainant’s websites and marketing promote the descriptive nature of the phrase and do not promote any goodwill in the trademark.
The addition of the word “real” does not diminish the descriptiveness of the trademark, as it merely means “genuine” or “an actual thing”. The obvious connotation of the words together is “real photos or images of spanking”.
Use of a particular term by others indicates that the mark is generic or descriptive, and a WHOIS search for registered domains shows over 491 domain names using the term real spankings (86 of which are active). There are millions of pages using and promoting the phrase, while the Complainant’s page does not appear in the first page of Yahoo results. The Complainant acknowledges that the phrase appears in other domains but asserts such use is infringement, however, many of these users have been registered from as early as 1998.
The burden of secondary meaning (where the primary significance of a term is to identify the producer and not the product) is high where the mark consists of words in common use. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, unsolicited media coverage, exclusivity of use, consumer surveys and media recognition.
An examination of the evidence provided by the Complainant adds nothing to the assertions that the term is descriptive and has been used descriptively by the Complainant. Revenue figures are provided as “estimates”. Reference is made to “millions” of unique visitors to the website, but no traffic logs or other evidence is provided. Visits to the Complainant’s site are not sufficient to show secondary meaning as those visitors can come from a number of sources, including automatic redirects, or searching for descriptive advertisements. In fact, this only shows the notoriety of a descriptive term and not goodwill associated with a mark. The declaration of any expert is limited to opinion and hearsay.
The Respondent uses the disputed domain name in its generic and descriptive sense by directing users to content and information relating to adult entertainment and photos relating to spanking. The term “real spanking” is merely being used to describe what is being sold on the website.
Rights or legitimate interest
The disputed domain name is generic or descriptive, and this fact alone can establish rights or legitimate interest by the Respondent. The Respondent purchased, registered and commenced use of the domain name before it had any notice of the Complainant’s asserted mark and before notice of the complaint.
Where the disputed domain name is generic or descriptive, and in particular where it comprises no more than a single, short, common word, the rights/interest question is more likely to favor the Respondent.
None of the authority used by the Complainant to support its contention that the Respondent’s use is not legitimate because it links to various third party commercial sites is correct. The Respondent knows of no decision which states that the use of a domain name within the pay-per-click or direct navigation context shows by itself a lack of legitimate interest - in fact, panels have held that it is legitimate and the Complainant must do more to establish bad faith.
The Complainant has not provided any evidence that the mark is famous, or well known to the public at large in any jurisdiction. There is no evidence the Respondent knew or should have known of the Complainant’s mark.
The current and historical websites for the disputed domain name show photos, videos and other information relative to spankings in a sexual context. The Respondent acquired the disputed domain name for use in connection with other adult oriented sites and plans to build the site and not merely use it for pay-per-click. The current page is improved from that which first appeared and while not the finished result, it shows preparation and progress has been delayed from the threat of litigation.
The Complainant must establish both bad faith registration and bad faith use of the domain name. The bad faith element of the Policy is an element of specific intent. The Respondent argues that there is no evidence of bad faith in the current dispute.
The Complainant’s assertion of bad faith is premised on the Complainant’s unsupported claim that it holds the exclusive right to use the words “real spankings” in connection with photos and videos of people being spanked, however this is incorrect.
At the time the disputed domain name was acquired, the Respondent did not know that the Complainant had filed a trademark application or had any rights in relation to the phrase. The Respondent only knew that the phrase was widely used in its ordinary meaning. Such knowledge cannot be implied. The Respondent did not acquire the disputed domain name to interfere with the Respondent’s business. Even if the Respondent was aware of the mark, it may not be seen as evidence of bad faith registration as the term is descriptive and because the mark did not have notoriety or fame.
The Complainant has not provided evidence of actual knowledge that the Respondent registered the disputed domain name with the Complainant in mind. Constructive knowledge is inconsistent with the Policy. In this case, constructive knowledge cannot be entertained as the trademark application was submitted a short time before the Respondent acquired the disputed domain name and the Respondent resides in Sweden while the Complainant is in the United States.
The disputed domain name was first registered in 1998 and has been continually used to provide photos and videos relating to spankings, and the Complainant was aware of this since at least 1998 but failed to raise any objection.
Given the nature of a generic or descriptive domain name, it is difficult to conclude that there can be a deliberate attempt on the part of the Respondent to confuse.
The disputed domain name is not a typo of the Complainant’s domain name, but merely the singular root version of the term.
The offering of disputed domain name for sale for more than out-of-pocket costs does not constitute bad faith - it must be shown that the Respondent registered it primarily for the purpose of selling it to the Complainant (where the intention exists at time of registration). This is not the case here. The email was sent after receiving notice of the Complaint but without receiving the actual Complaint and affirms the Respondent’s right to own the disputed domain name. The email only includes a desire not to incur further legal costs and seeks to resolve the matter informally by way of settlement.
The Respondent did not register the disputed domain name to prevent the Complainant from using it in its business. The Complainant could have acquired it at the same time as the Respondent did, but chose not to do so. The Respondent holds other adult oriented domain names and obtained the disputed domain name to add to those sites.
The Respondent did not register other domain names with an intention to act in bad faith or infringe on the legitimate rights of others. No pattern of preventing trademark owners from using the corresponding domain name has been shown. These allegations do not have any relation to this case.
The inclusion of a link to the Complainant’s website on the Respondent’s website is not evidence of bad faith as it is not the result of any intentional act of the Respondent. The sponsored links included on the website are not controlled by the Respondent. They are determined by the search provider (Google/Yahoo) and by the activities of advertisers who pay Google/Yahoo to have their advertisements appear whenever keywords are entered as a search term. Having apparently gone out of its way to place its link in a 2nd or 3rd level link on the web page, the Complainant cannot now claim that this is evidence of bad faith.
7. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
Both the Complainant and the Respondent have focused their energies on arguing the question of whether the Complainant has rights in the mark REALSPANKINGS. The Panel considers the new evidence that the trademark REALSPANKINGS has now registered in the United States Patent and Trademark Office (USPTO) to be sufficient to show that the Complainant has rights in the mark. It is not necessary to consider any evidence of secondary meaning.
The disputed domain name differs from the Complainant’s trademark only by the absence of the “s” after “spanking”. In Fannie May Confections, Inc. v. Domain Contact 2 (FANNIEMAYS-COM-DOM), WIPO Case No. D2006-0813, the Panel stated, “It is also well established that the addition of an “s” to the mark does not avoid a finding of confusing similarity.” The Panel in this dispute considers that the reverse is also true.
The Panel also notes the decision in Alpine Entertainment Group, Inc. v. Daniel Griffin, Kimberly Hall (a.k.a Kimberly Litvak) c/o Alpha Marketing Group, LLC, WIPO Case No. D2007-0034, where the domain names <realspankingcouple.com> and <realspankingscouple.com> were held to be confusingly similar to the Complainant’s REAL SPANKINGS mark. In that case, the Panel stated:
“A simple reading of the disputed domain names shows clearly that they are confusingly similar to the Complainant’s mark. Under a long line of cases changing the plural to the singular or adding an additional word or phrase when the dominant feature of the disputed domain names is the complainant’s mark does not obviate any confusion. E.g., Adobe Systems Incorporated v. Jeff Bluff, Online RX Sales LLC, WIPO Case No. D2006-1475.”
The gTLD “.com” has no distinguishing capacity and does not alter the value of the trademark represented in the domain name (Telecom Personal, S.A., v. NAMAZERO.COM, Inc, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the requirements of the Policy, paragraph 4(a)(i), are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice 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 non-commercial 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.” (Policy, paragraph 4(c)).
The Complainant filed its USPTO trademark application on July 6, 2006. The Respondent acquired the domain name on October 6, 2006. The Complaint states under the Policy each new registration or transfer of a domain name constitutes a new registration: see Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609.
The Respondent has not been granted a license or authorization by the Complainant to use the Complainant’s trademark in relation to the disputed domain name. There is nothing before the Panel to establish that the Respondent is commonly known by the disputed domain name.
The Respondent asserts that it has rights in the disputed domain name because it acquired the domain name before it had notice of the Complainant’s trademark or the Complaint. The Respondent also asserts that its right or legitimate interest in the disputed domain name derives from the Respondent’s use of the corresponding website to offer exactly what is described in the domain name - access to “real spanking” in a sexual context, in the form of images, video, cartoons and text.
The Respondent furnished evidence, by way of website screenshots, that the domain name is being used to provide images, video and cartoons of spanking. These screenshots are from web archive pages from November 14, 2006, which are no longer accessible from the main <realspanking.com> page.
The Complainant also provided a screenshot, dated June 13, 2007, which showed the disputed domain name being used to provide links to a range of other spanking sites, including the Complainant’s website and websites of the Complainant’s competitors.
The Panel visited the disputed domain name on November 20, 2007, and found the layout of the current website to be consistent with the screenshot provided by the Complainant. The Panel found that the disputed domain name no longer provides access to spanking videos and images directly, but rather resolves to a website that provides links to third party sites. Some of the links provided are relevant to the adult entertainment industry generally (though not all relate to spanking) and some are completely unrelated to adult entertainment or spanking, for example, there are links for “business cards” and “student loans”. Many of these unrelated links appear to lead nowhere; they simply take Internet users around in circles to pages with yet more unrelated links.
The current use of the domain name, and the evident use since June 13, 2007 (prior to the commencement and notice of this dispute), undermines the entire basis for the Respondent’s claimed legitimate interest in the domain name being the use of the domain name in the descriptive sense. Whether or not the term “real spanking” any longer properly describes the nature of the material provided on the Respondent’s website, it is evidently not being used to describe goods or services offered by the Respondent himself. Rather, it is being used in connection with what appear to be a ‘grab-bag’ collection of links, some of which relate to spanking, some of which do not, and some of which the Respondent himself seems to argue are posted and controlled by third parties as part of a pay-per-click (PPC) revenue arrangement. In this Panel’s view, a purported description of links that merely ‘appear’ on a website as part of such a PPC arrangement does not of itself constitute grounds for establishing rights or legitimate interests in a disputed domain name. However the content of a website may be determined under such arrangements, an assertion of descriptive rights or legitimate interest by a Respondent does not sit comfortably with a denial of knowledge or responsibility for the presence of said content.
Furthermore, while “real” and “spanking” may individually be dictionary terms, there is a question as to the rather particular combination of these two specific terms in the domain name at issue. While it may have been a coincidence, the likelihood of this is not enhanced by the Respondent’s subsequent use of the domain name as a PPC site.
The Respondent argues that use of a domain name within the pay-per-click or direct navigation context does not, by itself, show a lack of legitimate interest. Nor indeed in this Panel’s view does it necessarily establish such interest. The Panel also refers to a number of previous panel decisions that have held that it is not a fair use of the domain name or a use in connection with a bona fide offering of goods or services, where:
- the Respondent does not offer goods or services of its own; and
- the Respondent’s website provides a number of sponsored links to a variety of unrelated sites or sites that compete with the Complainant; and
- the Respondent, in all likelihood, derives a revenue from these links:
Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertiebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990; Sanofi-aventis v. Mircea Timbusan, WIPO Case No. D2007-0981; F. Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946.
The Panel refers in particular to F. Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946, where it was stated:
“As it appears from Annex 5 to the Complaint, the Respondent is using the domain name at issue to redirect users to a website consisting of a search engine composed of sponsored links. Within the powers granted to the Panel under the Policy, the Panel has ascertained that the disputed domain name still lead to the same website mentioned in the Complaint. Some of the links contained in the website advertise products in competition with XENICAL, or at least referring to the same field of application (weight loss). Other links make reference to many products, including XENICAL.
According to Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, “using the Domain Name to mislead users by diverting them to a search engine (..) does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”.
In the light of the foregoing and absent any Respondent’s contrary argument, the Panel concludes that the Respondent’s use of the disputed domain name to access a search engine containing several sponsored links referring to weight loss products and services originating from different entities, is not legitimate nor fair. On the contrary, said use is clearly made with the intent to misleadingly divert consumers and/or to tarnish the trademark at issue.”
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent argues that there is no bad faith because the Respondent is not attempting to confuse Internet users and is using the disputed domain name in a descriptive sense only. However, there is no evidence that the Respondent is using the website to provide or offer his own “real spanking” materials and therefore using the domain name to describe the goods and services provided by him on the website. The Respondent’s arguments must fail for the same reasons as those given above.
The Respondent argued in the original case and continues to argue in this case that it has an intention to launch a better spanking fetish website from the disputed domain name. The Respondent does not appear to have directed its energies towards developing the intended website and in fact has removed the former (now archived) “real spanking” pages and replaced them with the current website containing only sponsored links. Even if the Respondent’s largely unsupported contentions in this regard were to be accepted, and the Respondent was in fact, like the Complainant, specifically engaged (or intending to become so) in the business of spanking fetish content delivery, this would only beg additional questions as to the Respondent’s likely knowledge of the Complainant’s existing business in that area.
As stated above, the disputed domain name was registered before the Complainant acquired registered trademark rights in the “REALSPANKINGS” name (the disputed domain name was acquired by the Respondent on October 6, 2006 and the Complainant’s trademark was registered on May 15, 2007). Despite this, the Panel finds it difficult to believe that the Respondent, in light of his evident Internet-savvy (not to mention claimed plans for future use of the disputed domain name), had no knowledge of the Complainant’s “www.realspankings.com” website, or the Complainant’s growing reputation in the “Real Spankings” name at the time of acquiring the disputed domain name. This is all the more so in light of the rather specific nature of the two terms combined in the disputed domain name.
In annexes to the Complaint, the Complainant provided evidence of the popularity of the Complainant’s “www.realspankings.com” website. The Complainant also provided evidence that the Respondent’s website linked to the Complainant’s website. This evidence, together with strong similarity between the Complainant’s mark and domain name and the Respondent’s domain name, demonstrates a likelihood that the Respondent knew of the Complainant’s website and associated business when it registered and used the disputed domain name
If, as the Panel believes is likely, the Respondent knew of the Complainant’s “www.realspankings.com” website and business at the time of registering the disputed domain name, then it must have at least suspected that the Complainant would have registered trademark rights in the name. This is further supported by the fact that at the time that the Respondent acquired the disputed domain name, the Complainant had already filed a trademark application in the United States Patent and Trademark Office one month before. According to the Complaint, the Complainant also had common law trademark rights in the name (see also, Alpine Entertainment Group, Inc. v. Daniel Griffin, Kimberly Hall (a.k.a Kimberly Litvak) c/o Alpha Marketing Group, LLC, WIPO Case No. D2007-0034).
It is evidence of bad faith that the Respondent nevertheless used that name to attract Internet users to the Respondent’s website, knowing that the Complainant had not authorized it to do so (F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066).
It is also evidence of bad faith that the Respondent then used the disputed domain name to link to websites that competed with the Complainant’s site (F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066; Philip Morris Incorporated v. Eddy Fitch, WIPO Case No. D2002-0869; F. Hoffmann-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946). The Respondent was in all likelihood generating a revenue by providing these links to third party sites. The Respondent itself alluded to the use of the website at the disputed domain name as being within the pay-per-click context.
The Panel concludes that the Respondent was using the disputed domain name to intentionally divert traffic to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark.
The Panel recognizes that the registering of multiple domain names which are similar to known trademarks may be evidence of bad faith. However, the Panel does not consider it necessary to take into account the Respondent’s registration of <coachstore.com> and <gameboygames.com> when determining bad faith in the present dispute.
For the above reasons, the Panel finds that paragraph 4(b)(iv) is satisfied in this case and that the registration and use of the disputed domain name has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
It may well be that court litigation would offer these two rather entangled parties an opportunity to argue further regarding this domain name or other issues, but this Panel believes that the above considerations do justice to the particular case record before it under the specific criteria of the Policy.
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 <realspanking.com> be transferred to the Complainant.
G. Gervaise Davis III
Dated: December 4, 2007