WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dreamstar Cash S.L. v. Brad Klarkson
Case No. D2007-1943
1. The Parties
The Complainant is Dreamstar Cash S.L., of Alicante, Spain.
The Respondent is Brad Klarkson, of Fort Lee, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gals4free.com> (the “Domain Name”) is registered with Total Calories dba Slim Names(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2007. On December 28, 2007, the Center transmitted by email to eNom, which was then thought to be the registrar, a request for registrar verification in connection with the Domain Name. By email dated January 11, 2008, eNom advised that the Domain name “is registered through the TOTAL CALORIES INC. registrar credential. Total Calories Inc. is the actual registrar even though eNom has administrative control of the domain name.” By email dated January 15, 2008, the Center then re-directed its request for registrar verification, to the Registrar. On January 21, 2008, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing contact details for the Domain Name.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on January 23, 2008, and January 24, 2008. The Center verified that the Complaint together with the amendments to 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 proceeding commenced on January 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2008.
On February 6, 2008, the Respondent sent an email to the Center enquiring “Where can I respond to this case?” On February 8, 2008, the Center acknowledged receipt of the Respondent’s email, and advised him (by reply email) that his Response should be communicated to the Center by hard copy (one original and four sets of hard copy), and by email to email@example.com. Notwithstanding his email enquiry, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on February 20, 2008. The Panel finds that it was properly constituted. 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.
In view of the contents of the Respondent’s email dated February 6, 2008, the Panel is satisfied that the Respondent has received actual notice of the Complaint.
4. Factual Background
The following information is taken from the uncontested statements made in the Complaint.
The Complainant operates a pornography website at “www.gals4free.net” (the “Complainant’s website”). The Domain Name which resolves to the Complainant’s website, was registered on November 27, 2002, and the Complainant’s website itself went live in December of that year. The Complainant has generated substantial Internet traffic to the Complainant’s website over the period of approximately 5 years it has been operating.
The Complainant referred the Panel to the website at the “www.alexa.com“, where reports on Internet traffic to individual websites are available. The Panel has visited that website, and notes that the Complainant’s website has indeed attracted very substantial Internet traffic. The report on the website at “www.alexa.com“ shows that a significant number of users of the Complainant’s website (15.75%), come from the United States of America. That percentage is almost three times the percentage shown for the next listed country.
The Complainant has also produced some invoices and commission statements relating to its operating the Complainant’s website. These documents date back as far as 2004, and the majority of them are from corporations based in the United States of America. The two that are not, both have Canadian addresses.
The home page of the Complainant’s website prominently features the expression “Gals 4 Free”, and states “The home of free porn pictures and movies”. The expression “Gals4free” appears as part of what appears to be a logo, or device, mark, which features an oval shape with a stylized “Gals” on the bottom left side of the oval, and the word “Free” in the same style script at the top right of the oval. Between the two words, in much larger font and in a different color, is the digit “4”, and to the top left of the oval there is a figure of a woman running or jumping.
The Complainant referred the Panel to the website at “www.archive.org”, where screenshots can be seen showing the Complainant’s website on various dates over the period since December 2002. The pages from the Complainant’s website which are archived at “www.archive.org”, show that the oval device appears to have featured on the Complainant’s website fairly consistently since December 2002.
On December 14, 2007, the Complainant submitted an application to the United States Patent and Trade Mark Office (“USPTO”), to register the wordmark GALS4FREE in International Class 35, for “creating, providing, and maintaining a website featuring adult entertainment and pornography”. The application claimed a first use in commerce in December 2006.
On December 20, 2007, the Complainant’s representative submitted to the USPTO the “pseudo” marks GIRLS FOUR FREE and GIRLS FOR FREE (to assist the USPTO in searching for any conflicting marks).
The Domain Name was registered on December 4, 2007. According to the Complaint, the Domain Name was released on that date by a previous registrar, and a “daughter company” of eNom registered the Domain Name. The Domain Name was placed in an auction the same day, and the Respondent was the successful purchaser at the auction.
The Complainant says that the Respondent has been testing the Domain Name through parking services such as SEDO and Revenue Direct, using landing pages provided by those companies to earn pay-per-click advertising revenue. Some of the sites promoted by these landing pages are identical to sponsors the Complainant promotes on the Complainant’s website.
The Panel has himself checked the website at the Domain Name, and notes that it does indeed consist of a “landing page, with numerous links to third party sites which appear to be predominantly of an “adult”, or pornographic, nature.
5. Parties’ Contentions
The Complainant contends as follows:
1. The Domain Name is identical to the GALS4FREE mark in which the Complainant has rights.
2. The Respondent was never granted any right by the Complainant to use the Domain Name or to use the Complainant’s GALS4FREE service mark.
3. The Respondent is wrongly profiting from the traffic of daily Internet visitors who mistakenly get to the website at the Domain Name because of the Complainant’s online brand name exposure.
4. Some of the websites promoted by the landing pages to which the Domain Name resolves, are identical to sponsors the Complainant promotes through the Complainant’s website. That damages the Complainant’s revenue.
5. The Respondent acquired the Domain Name with the sole purpose of trying to attract Internet users to websites at the Domain Name, for commercial gain, by taking advantage of confusion between the Domain Name and the Complainant’s GALS4FREE service mark and the Complainant’s website. The Respondent is targeting Internet traffic who mistakenly type “.com” instead of “.net” at the end of the Complainant’s <gals4free.net> domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General Principles under the Policy
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
In this case, the Complainant does not rely on any registered trade mark. It claims that it has common law trade mark rights, derived from its use of the expression “Gals4free” over the period since December 2002. (The Complainant has filed an application to the USPTO to register GALS4FREE as a word mark, but that application does not assist – the application was only filed in December 2007, and filing an application does not, in itself, confer any relevant rights on the Complainant.)
The Complainant has produced evidence of substantial use of the expression “Gals4free”, over the period since December 2002. That expression has been used prominently on the Complainant’s website, as part of the oval device mark which the Panel described in section 4 of this decision. The Complainant’s website is commercial in nature, so the Complainant’s use of the expression has clearly been a use in trade.
A not-insignificant proportion of the Complainant’s business appears to have been transacted with United States-based individuals or corporations. The report available through the website at “www.alexa.com” confirms that the United States is the Complainant’s biggest market, and the various invoices and commission statements produced by the Complainant also make it clear that it has been operating commercially in the United States, since at least 2004. The USPTO application is also consistent with the Complainant’s claim to common law, or unregistered, rights in the United States.
There is no doubt that unregistered trade mark or service mark rights may qualify as “rights” in a trade mark or service mark, for the purposes of paragraph 4(a)(i) of the Policy. To establish such common law rights in the United States of America, a complainant must show that the claimed mark has acquired a “secondary meaning”, as an indicator of an association with the complainant or a business operated by the complainant (see, for example, Universal City Studios Inc. v. David Burns and Adam-12.com DC, WIPO Case No. D2001-0784, followed in Maritime-Ontario Freight Lines Limited v. Magic Domain, WIPO Case No. D2007-0202, and in ProCPR, LLC v. Name Administration Inc. (BVI), WIPO Case No. D2007-0823). Generally, a complainant must show that, through long association of the claimed mark with its business, the mark and the business have become synonymous in the minds of the public, submerging any primary meaning of the claimed mark in favor of its meaning as a word identifying the complainant’s business.
Where a claimed common law mark is a dictionary word, or a descriptive expression which is not inherently distinctive, the task of a complainant in establishing the necessary proof of secondary meaning is more difficult. As the Panel put it in a recent three-member Panel decision:
“Being a dictionary word, and not inherently distinctive, there is an onus on the Complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use.”
(Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515.)
On its own, the expression “Gals4free” seems to the Panel to be substantially descriptive of the services provided by the Complainant at the Complainant’s website. “Gals” is a commonly understood (American) English slang expression meaning “girls”, and “4” is a commonly used abbreviation (especially in today’s world of SMS, or text, messaging) for the English word “for”. If “Gals4free” is “translated” in that way, the ordinary meaning it would convey to most English language speakers would be “Girls (on the Complainant’s website), free of charge”. While the relevant service provided through the Complainant’s website is the provision of “pictures of girls” (rather than girls themselves), it will be seen that the expression “gals4free” is at least very close to being purely descriptive of that service.
Having regard to its substantially descriptive function, the Panel is in some doubt that the expression “Gals4free”, on its own, has acquired a secondary meaning, so that it would be understood by a significant number of people as an indicator of the origin of the services provided by the Complainant through the Complainant’s website. To borrow the word used by the Panel in Orbis Holdings Limited v. Lu A Feng and Orbis Search case (supra) to describe the required standard of proof, the evidence of secondary meaning needs to be “compelling”.
But the bar is not set so high for device, or logo marks, which are far more likely to be distinctive of the goods or services of one particular trader than a word mark which is substantially descriptive of those goods or services. In this case, it seems to the Panel to be rather more likely than not that the oval device mark has become distinctive of the services provided by the Complainant through the Complainant’s website. If that is right, the question is whether the Domain Name is confusingly similar to the oval device mark.
Of course a domain name can only consist of an alphanumeric string, and cannot incorporate figurative, or device elements of a complainant’s trademark. In this case, the expression “Gals 4 Free” is undoubtedly the most distinctive part of the oval device mark, and that expression is identical to the Domain Name, both visually and phonetically. The oval device mark also conveys precisely the same meaning as the Domain Name.
While the matter is not entirely free from doubt, the Panel finds, on the balance of probabilities, that the Complainant has common law rights in an oval-shaped device mark which incorporates the expression “Gals 4 Free”, and that the Domain Name is confusingly similar to that device mark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie case showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the oval device mark in which the Complainant has shown that it has rights, and the Complainant has not authorized the Respondent to use its mark (or any expression confusingly similar thereto), whether in the Domain Name or otherwise. Those matters are in combination sufficient to establish a prima facie case under this subparagraph of the Policy, and the evidentiary onus shifts to the Respondent to demonstrate that he has some right or legitimate interest in the Domain Name.
The Respondent has failed to file any Response, and that is strictly sufficient for the Complainant to succeed on this part of its Complaint. However for completeness, the Panel notes that there is nothing in the record which would support a claim to a right or legitimate interest under either paragraph 4(c)(ii) or paragraph 4(c)(iii) of the Policy – there is no suggestion that the Respondent, whether as an individual, business, or other organization, has been commonly known by the Domain Name. Nor does it appear that the Respondent has been making a fair or legitimate non-commercial use of the Domain Name, without intent for commercial gain. The sponsored links on the website to which the Domain Name resolves make it clear that the Respondent’s use of the Domain Name to date has been a commercial use.
Nor could paragraph 4(c)(i) of the Policy avail the Respondent. For the reasons set out in section 6 D of this Decision, the Panel finds that the Respondent registered and has been using the Domain Name in bad faith. It follows that the Respondent has not been using the Domain Name in connection with any bona fide offering of goods or services.
No other basis for a right or legitimate interest having been advanced, the Complainant has made out its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
All of the examples of bad faith registration and use set out above, require that the respondent must be guilty of having targeted the complainant or its mark in some way, or at least that the respondent must have had the complainant or its mark in mind when the respondent registered the domain name. (See for example The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743, recently followed by this Panel in Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008.)
In this case, the Complainant is domiciled in Alicante, Spain, and the Respondent appears to be based in New Jersey, in the United States. The Complainant has no registered trademark, whether in the United States of America or elsewhere, and the Respondent had already registered the Domain Name some 10 days before the Complainant made application to the USPTO to register “Gals4free” as a service mark.
The Respondent acquired the Domain Name by bidding at an online auction held on December 4, 2007.
In those circumstances, the critical questions are whether the Respondent was aware of the Complainant and its oval GALS 4 FREE device mark when he acquired the Domain Name, and whether he chose to acquire the Domain Name with a view to exploiting its value as the dominant component of the Complainant’s oval device mark (as opposed to its value as an English expression which would provide an appropriate address for a website providing free access to “adult” pictures of young women).
The point is not free from difficulty, but in the end the Panel concludes that the Respondent probably did know of the Complainant and its oral device mark when he registered the Domain Name. The Panel has come to that view for the following reasons:
1. The Complainant’s website is an English language website, which has been readily accessible to Internet users interested in “adult” websites, for approximately 5 years. The Complainant’s website attracts almost three times as much Internet traffic from the United States, where the Respondent resides, as it does from any other single country.
2. It seems to the Panel to be more likely than not, that someone purchasing a domain name with a name like “gals4free” would have an existing interest in adult-themed domain names and websites, and would therefore be more likely than other Internet users to be aware of major “adult” websites like the Complainant’s website.
3. Referring to the Respondent’s purchase of the Domain Name at auction, the Complainant says: “the only reason it is worth the value it is sold for is because of our established online brand name and advertising efforts over the last 5 years.” The implication of that statement is that the Respondent paid a significant sum of money to acquire the Domain Name at auction. The Respondent has not suggested otherwise. If the Respondent was prepared to pay a significant sum of money to acquire a Domain Name, it seems improbable that he would have done so without first checking whether identical names were registered in other top level domains such as .org, .biz, and .net, or without running a Google (or other Internet search engine) search on “gals4free”. Any such checks would have quickly led the Respondent to the Complainant’s website.
4. Since the Domain Name has been registered, it has simply been linked to landing pages, with sponsored links to third party websites. The Respondent has not made any other apparent use of the Domain Name.
5. The Respondent, although clearly aware of the Complaint, has elected not to file any Response. If the Respondent had been unaware of the Complainant and its mark when he registered the Domain Name, it would have been a simple matter for him to have filed a Response stating that that was the case. Instead, he has elected to remain silent, on matters which are entirely within his knowledge. The Panel is entitled to draw such inferences from that silence as it considers appropriate, including the inference that the Respondent knew of the Complainant’s website and registered the Domain Name for the purpose alleged by the Complainant.
In the absence of a Response, the Panel concludes that the Respondent probably registered the Domain Name for the reason alleged by the Complainant, namely to attract Internet users to a website at the Domain Name, for commercial gain, by taking advantage of confusion with the Complainant’s oval device mark, which includes the words which form the Domain Name. The Panel accepts the Complainant’s submission that some Internet users looking for the Complainant’s website are likely to mistakenly type “.com” instead of “.net” at the end of the Complainant’s Domain Name. If the Respondent was aware of the Complainant and the Complainant’s website (which the Panel finds was probably the case), the Respondent would undoubtedly have appreciated the likelihood of that sort of mistake being made. Equally, he would have appreciated that such mistakes would result in an increase in Internet traffic to the website at the Domain Name, and thus increase the Respondent’s pay-per-click revenue derived from each click on one of the sponsored links at that website.
The circumstances fall squarely within the category of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy.
The Complainant having established all three elements required to be proved under paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
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 <gals4free.com> be transferred to the Complainant.
Dated: March 5, 2008