The Complainant is AZ Interactive, S.L. of Barcelona, Spain, represented by Eric Gracia González, Spain.
The Respondent is Feniwel, S.A. of Miami, Florida, United States of America.
The disputed domain names <sexywebcam.mobi> and <sexywebcam.tv> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2009. On July 20, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On July 20, 2009, GoDaddy.com, 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” or “UDRP”), 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 on July 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2009. The Response was filed with the Center on August 17, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on August 20, 2009. 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.
The Complainant owns trademarks, registered in Spain in July 2005, for SEXYWEBCAM.COM. The Complainant also operates websites at “www.sexywebcam.com”; “www.sexywebcam.net”; and “www.sexywebcam.org”. The Complainant registered those domain names in 1998. More recently, the Complainant registered domain names <sexywebcam.us> and <sexywebcam.es>. The websites at those domain names offer pornographic related material, particularly targeted at the Spanish market.
The disputed domain name <sexywebcam.mobi> was registered on October 29, 2006, and <sexywebcam.tv> on June 4, 2006 (as indicated by the “creation date” in the WhoIs record). The Complainant provided evidence that, on June 26, 2009 (for <sexywebcam.mobi>) and July 1, 2009 (for <sexywebcam.tv>), the disputed domain names did not revert to active websites. Rather, the disputed domain names <sexywebcam.mobi> and <sexywebcam.tv> reverted to a “parking” page, which contained the statements “This .MOBI domain is parked free, courtesy of GoDaddy.com” and “This page is parked free, courtesy of GoDaddy.com” respectively.
The Complainant provided evidence of the WhoIs details for the disputed domain names as at June 26, 2009 (for <sexywebcam.mobi>) and July 1, 2009 (for <sexywebcam.tv>). On those dates, the disputed domain names were registered in the name of the Respondent. The Registrar confirmed that the Respondent remained the named registrant, by email to the Center dated July 20, 2009.
The Complainant provided archived WhoIs records for the disputed domain name <sexywebcam.mobi>. As those records indicate, on May 22, 2007, that domain name was registered in the name of “Juan Luis Abian” with an address in Madrid, Spain. On June 19, 2007, that domain name was then registered in the name of the Respondent.
The Complainant argues, in effect, that the disputed domain names are identical or confusingly similar to its registered marks. The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no relationship to the Complainant, is not known, commonly or otherwise, by the disputed domain names.
Finally, the Complainant argues that the disputed domain names were registered in bad faith. The Complainant points out that the immediately prior registrant of the disputed domain names had an address in Madrid. The Complainant notes that the administrative and technical contact for the disputed domain names is a “Julian Lario”. The Complainant also provides evidence that a domain name <easyblue.com> (otherwise unrelated to this dispute) is registered with an administrative and technical contact by the name of “Juan Luis Lario Abian” with an address in Madrid, and an email contact comprising the name “jlario”. The Complainant implies that this person is the same as the technical and administrative contact for the disputed domain names. From this, the Complainant doubts the genuine existence of the Respondent, “Feniwel, S.A.”, and suggests that the Respondent knew of the presence of the Complainant in the Spanish market at the time it registered the disputed domain names.
The Complainant also provides evidence that the Respondent is the owner of other domain names reverting to websites that compete with those of the Complainant. As a commercial competitor, the Complainant argues that the Respondent must have been aware of the Complainant.
The Respondent denies the claims made against it. Firstly, says the Respondent, the Complainant's marks are comprised of three common English words which are descriptive or suggestive of adult-oriented web content, and do not entitle the Complainant to rights in these words across the entire world or Internet. The Respondent points out that the disputed domain names do not contain the “.com” element of the Complainant's marks, and claims that the mark is therefore distinct from the disputed domain names. The Respondent says that the Complainant has not provided evidence that its mark is famous or well-known outside of Spain, does not have marks registered in the United States, and is not a compelling target for imitation.
The Respondent claims that it has a right or legitimate interest in the disputed domain names. It has operated websites with adult content since 2006 and the extension of its business to the web camera market is natural. The Complainant had the same opportunity to purchase the disputed domain names but did not do so.
The Respondent denies that it registered the disputed domain names to tarnish the Complainant's mark or to misleadingly divert Internet traffic. Given that the Complainant had never shown an interest in registering the disputed domain names, it cannot say that the Respondent is robbing the Complainant of the opportunity to fully develop its business. The Respondent is not a direct competitor of the Complainant, given that the Complainant dedicates itself solely to the web camera market, whereas the Respondent offers a variety of adult content.
To succeed, the Complainant must satisfy the Panel that, on the balance of probabilities, each of the following elements of paragraph 4(a) of the Policy is met, being that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii)); and
(iii) the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
Each of these elements are addressed in turn as follows.
The Complainant relies on its rights in its Spanish-registered mark for SEXYWEBCAM.COM. The Complainant claims that the disputed domain names are identical or confusingly similar to that mark.
In considering whether a domain name is identical or confusingly similar to a mark, it is well established that the gTLD extension, in this case “.mobi” and “.tv”, are largely irrelevant. That is because those extensions are a technical necessity. However, where the gTLD extension is itself incorporated in a trademark, it obviously ceases to be a technical necessity of the Internet address it represents. Instead it becomes a feature of the mark itself. The incorporation of a gTLD extension in a mark is therefore relevant to determining identity or confusing similarity with a domain name.
The relevant comparison in this case then, is between the Complainant's mark as a whole (SEXYWEBCAM.COM) and the relevant part of the disputed domain names (“sexywebcam”). The disputed domain names are not identical to the Complainant's mark. The Panel finds however that they are confusingly similar. The primarily distinctive element of the Complainant's mark is incorporated as a whole in the disputed domain names. They are similar on an overall impression. They are also phonetically and visually similar. The Panel considers that the average Internet user would naturally assume an association between the Complainant's marks and the disputed domain names.
The Respondent argues against a finding on this ground on the basis that the Complainant's marks are made up of conjoined “common English words that are descriptive or suggestive” of the content of the Respondent's website. That argument is misplaced. The relevant comparison is between the Complainant's mark as a whole and the disputed domain names. The Respondent provided no evidence that the conjoined term “sexywebcam” is either common or descriptive. And even if it were, the Complainant has obtained a registered mark for that term. In these circumstances, the Panel believes that the Complainant is entitled to a presumption that its mark is distinctive in a trademark sense.
The Respondent also argues that the Complainant's mark is not well-known outside of Spain, and that its marks are not registered in the United States where the Respondent is based. Again, these contentions are not relevant to a finding on this ground. The Complainant is not required to prove that it has rights in the entire world. It is enough that it has rights in one jurisdiction, which is what the Complainant has shown.
For these reasons, the Panel finds that the Complainant has established this first element.
The Respondent rests its claim to rights or legitimate interests in the disputed domain names on the fact that it has, since 2006, provided adult content over the Internet. The suggestion is that the nature of its business, together with the claimed suggestive or descriptive nature of the disputed domain names, mean that the Respondent has a legitimate interest in them.
The difficulty with this argument is that the Respondent provides little evidence to support it. It seems plain that the term “sexywebcam” cannot be found in a dictionary, and so is not generic is that sense. No evidence is provided that the conjoined term “sexywebcam” is generic or descriptive. No evidence is provided of the use of that term by third parties, which might demonstrate that it has the descriptive value suggested by the Respondent. While the Panel believes that the term “sexywebcam” may have descriptive connotations, no evidence is provided that it is, in fact, used in that way.
The Respondent also suggests that the Complaint should be denied because the Complainant “showed no interest in purchasing the disputed domain names when they were up for sale”. In essence, this is a “first come, first served” argument. There is nothing in the Policy that allows this to be used as a ground for denying a complaint. The Policy itself is designed to avoid a “first come, first served” approach to acquiring domain names, where the circumstances set out in paragraph 4(a) of the Policy are made out.
There is otherwise no evidence that the Respondent has rights or legitimate interests in the disputed domain names, including evidence of the kinds set out in paragraph 4(c) of the Policy that illustrate examples of such rights. The Panel considers that it would be difficult for the Respondent to establish rights or legitimate interests, given the Panel's findings on the issue of bad faith, as set out below.
For these reasons, the Panel finds that the Complainant has established this second element.
It is central to a finding of bad faith that there is evidence that the Respondent intentionally targeted the Complainant, and sought to unfairly exploit the value of the Complainant's mark. The circumstances of this case go towards such a finding. Those circumstances suggest that the Respondent was aware of the Complainant, and registered the disputed domain names because of their pre-existing association with the Complainant. The reasons the Panel has come to this conclusion are as follows.
Firstly, the Complainant has been in business since 1998 – around 8 years before the registration of the disputed domain names. Its rights in its mark pre-date the registration of the disputed domain names.
Secondly, the Complainant and Respondent are both in the same business of offering adult content on-line. The Respondent claims that they are not direct competitors because it offers a wider variety of adult content beyond the “web camera” business. But the fact that the Respondent claims to have a wider scope of business does not mean the parties do not directly compete. Both offer adult content on-line, in the same general field that will directly compete for the business of Internet users. By its own admission, and inferentially from the nature of the disputed domain names, the Respondent is seeking to expand into the “web camera” market. Such an expansion will itself more obviously compete with the same services offered by the Complainant.
Thirdly, there appears to be some relationship between the Respondent, and the immediately previous registrant of the disputed domain names. The Response is signed in the name of “Juan Luis Lario Abian”. The Complainant provides evidence that the previous registrant of <sexywebcam.mobi> was “Juan Luis Abian”, with a contact address in Madrid, Spain. The Complainant also provided evidence of that person's name in an email address connected with the Respondent. The Respondent did not explicitly address this link. The Respondent provided (unexplained) evidence that it has registered the fictitious name, “Juan Luis Lario Abian” in the State of Florida. That evidence seems at odds with the name of the Respondent's purported representative in the Response. The Panel admits to finding the parties evidence on the identity of Juan Luis Lario Abian unclear and cryptic. But, regardless of whether a real person or not, the evidence suggests a continuing link between the previous and current registrants. The significance of this link is that the previous registrant had an address in Madrid, Spain. This suggests that the Respondent may have had some connection with Spain, and therefore a direct awareness of the Spanish market, to which the Complainant's business is targeted.
Fourthly, the Complainant provided evidence of having a substantial presence on the Internet, including the registration of a number of gTLDs incorporating the term “sexywebcam”. It seems unlikely that the Respondent, doing business on the Internet in the same general field as the Complainant, would have been unaware of the Complainant before it registered the disputed domain names.
Finally, in the absence of any evidence that the conjoined term “sexywebcam” has or is used in a descriptive sense, there is an inference that the Respondent registered it because of its association with the Complainant. The Respondent provided little concrete evidence that that term has any other association.
For these reasons, the Panel finds that the Complainant has established this third element.
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 names <sexywebcam.mobi> and <sexywebcam.tv> be transferred to the Complainant.
James A. Barker
Dated: September 3, 2009