WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RK Netmedia, Inc. v. Graham Lawton
Case No. D2011-0495
1. The Parties
The Complainant is RK Netmedia, Inc. of Miami Beach, Florida, United States of America, represented by Randazza Legal Group, United States of America.
The Respondent is Graham Lawton of Dorval, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <milfhunters.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2011. On March 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 17, 2011, 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 March 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on April 21, 2011. 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.
4. Factual Background
The Complainant has registered a United States trademark for MILFHUNTER in international class 41 for entertainment services in the nature of photographic images, pictures, slide shows, live and pre-recorded video and audio recordings, articles and information involving adult-oriented subject matter transmitted through a global computer network. The Complainant filed its application for that mark on September 26, 2003. The mark was published for opposition on January 4, 2005, and having received no opposition to registration, the United States Patent and Trademark Office issued protection for the United States Trademark number 2,936,139 on March 29, 2005. The Complainant provided evidence of the registration of that mark. The Complainant also claims to have common law rights in that mark established by continuous use of its mark on the Internet since 2002.
The disputed domain name was registered on March 14, 2002, and the Registrar (in communications to the Center) replied (to a query of when the current registrant registered or acquired the registration of the disputed domain name) referencing the aforementioned date of registration.
5. Parties’ Contentions
The Complainant refers to its registered rights in the mark MILFHUNTER and also claims common law rights in that mark. In relation to its common law rights, the Complainant says that such rights have been established by its continuous use of that mark on the Internet commencing in 2002. The Complainant says that its mark is famous and has invested considerable economic resources to market services under this mark. The relevant marketplace strongly and universally associates the name and trademark MILFHUNTER with the services that the Complainant provides. Internet users who navigate their browsers to the disputed domain name would likely be misled to believe that the disputed domain name is in some way connected and associated with the Complainant.
The substance of the disputed domain name and the substance of the Complainant’s trademark are identical, except for the addition in the disputed domain name of a single character, i.e., “s”, to the Complainant’s mark. This is a distinction without a difference. Even if the Panel determines that it is a difference, it is a difference of such minor importance that it cannot dispel the confusing similarity between the Complainant’s trademark and the disputed domain name, a similarity the Respondent seeks to exploit for commercial gain.
There are no facts that could bring a reasonable person to the conclusion that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent must have been aware of the Complainant’s mark, and registered the disputed domain name in defiance of this knowledge. The disputed domain name resolves to websites that directly compete with the Complainant’s state and federal trademark rights.
The Complainant says that the disputed domain name has been registered and used in bad faith. The disputed domain name incorporates the Complainant’s trademark entirely with only the addition of an “s” to make the trademark plural and thus the Panel should find that the Respondent is taking advantage of Internet users who mistype a domain name when they try to access the Complainant’s website, or who misidentify the source or sponsorship of sites that the Respondent chooses to promote. The Complainant says that the Respondent is using the disputed domain name, and that even planned use is sufficient for the purpose of the Policy. Even so, the Respondent has provided no outward indication that any future legitimate use of the domain name is intended. No “coming soon” or “under construction” page can be found at the disputed domain name, thereby demonstrating that the Respondent’s current illegal use is the only planned use for the domain name.
The Complainant says that the Respondent is using the disputed domain name for commercial gain. The Respondent’s “website” is not an original creation. Rather the Respondent has registered the disputed domain name and then entered it in a domain monetization program by redirecting visitors to a pay subscription service. Use of the disputed domain name to take advantage of such confusion, constitutes bad faith registration and use under Policy, paragraph 4(b)(iv). The commercial gain described in the Policy, paragraph 4(b)(iv), does not require that the Respondent receives actual gain. The Respondent may gain through any “unfair competing conduct” that, because it harms the Complainant, could eventually benefit the Respondent. Even if users may become aware that the cybersquatting websites are not sponsored by the Complainant, commercial gain may well accrue to the Respondent if the services he offers for sale (directly and indirectly) are purchased by those visiting its website. This commercial gain both harms the Complainant and unjustly enriches the Respondent.
The Respondent has also demonstrated bad faith by actively hiding his registration of the disputed domain name. More specifically, when the Respondent lost possession of the disputed domain name to a domain name hijacker, he filed an in rem action in the U.S. District Court for the District of Oregon. See Lawton v. Milfhunters.com, Case No. 1:04-cv-3102 (D. Or. 2004). Although the Respondent named the Complainant as a party to that action (clearly evidencing the Respondent’s awareness of the Complainant’s property interest in the disputed domain name), no attempt was made to serve a summons or copy of that complaint on the Complainant, nor were any steps taken to permit the Complainant to participate in those proceedings. Rather, the Respondent sought recovery of the disputed domain name through purely procedural means, by using the reviewing court’s subpoena power to discover the identity of the party who had hijacked the disputed domain name, and then securing an injunction against that particular party, requiring transfer of the disputed domain name back to the Respondent – all without ever communicating with the Complainant.
The Respondent’s conduct of his suit to recover the disputed domain name, without ever seeking to notify the Complainant thereof, clearly demonstrates his desire to avoid the notice of the Complainant, who would surely have opposed his ownership of the disputed domain in that suit. The Complainant only learned of the Respondent and his prior action naming the Complainant when an insurance carrier recently brought the action to its attention in quoting a media liability policy, noting that the Complainant had been a defendant in that action and inquiring as to its disposition.
The Respondent has demonstrated bad faith by refusing delivery of the Complainant’s attempts to communicate, or otherwise failing to respond to the Complainant’s cease and desist demands. On December 17, 2010, the Complainant sent to the Respondent a demand letter wherein the Complainant outlined its rights in and to the disputed domain name and requested transfer of the disputed domain name. The Respondent refused delivery of the Federal Express envelope in which a hard copy of the Complainant’s demand letter was sent, and failed to respond to the electronic copy that was sent to the email address provided in the WhoIs record for the disputed domain name. Panels have found that failure to respond to a cease and desist letter or other communications is a factor in considering bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed as follows.
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s registered mark. However, the Panel finds that it is confusingly similar. The only relevant difference between the Complainant’s mark and the disputed domain name is that the latter adds an “s”. This is a trivial difference and, as such, has little capacity to distinguish the Complainant’s mark. In similar circumstances, previous panels have found confusing similarity. See e.g. Fannie May Confections, Inc. v. Domain Contact 2 (FANNIEMAYS-COM-DOM), WIPO Case No. D2006-0813, where the then panel noted that: “It is also well established that the addition of an ‘s’ to the mark does not avoid a finding of confusing similarity.” See also Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; and, in somewhat similar circumstances to this case, Global Media Resources SA v. Sexplanets aka SexPlanets Free Hosting, WIPO Case No. D2001-1391.
For these reasons the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a disputed domain name in one of the following circumstances:
“(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.”
By submitting no response, the Respondent has not provided evidence to support any of these circumstances. There is otherwise no evidence to support such circumstances in the case file. The Complainant argues, and provides evidence, that such circumstances are not present in this case. By doing so, a prima facie case has been established against the Respondent which remains unanswered.
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview 2.0), the consensus of UDRP panels have found that “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Respondent in this case has failed to come forward to rebut the case against it. As such, and in the absence of any other evidence in the Respondent’s favor, the Panel finds that the Respondent lacks rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For a finding of bad faith under paragraph 4(a)(iii) of the Policy, there must be some evidence that the Respondent was aware of the Complainant and sought to take advantage of its mark. See e.g. Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, WIPO Case No. D2008-0641. This usually means that the Complainant must, in fact, have had a mark when the disputed domain name was first registered.
In this case, the Complainant had no registered mark when the disputed domain name was created in 2002.
Therefore in the circumstances of this case, the Complainant would inevitably fail, unless the Complainant can demonstrate rights in a common law mark when the disputed domain name was registered or demonstrate that the disputed domain name was registered with the Complainant’s (then) future rights in mind. The Complainant claims that it had rights subsisting at the time the disputed domain name was registered, established by the Complainant’s continuous use of its mark on the Internet since 2002. However, the Panel notes that the Complainant’s certificate of its United States registered mark indicates a first use in commerce in 2001 – not 2002. The Complainant’s evidence also suggests that it first registered its own domain name correspondent to its mark on October 27, 2001. As such, the evidence suggests that the Complainant’s use of the term “milfhunter” may have began in 2001. The Complainant also provides evidence of its website “from the Internet Archive at its first available date in March 20, 2002” and reviews of its website as at 2011.
Taken together, this is not strong evidence, in the Panel’s view, that the Complainant had established sufficient reputation in a common law mark in early 2002, when the disputed domain name was registered. As noted in the WIPO Overview 2.0, to establish rights in a common law mark, “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition”.
The Complainant provides little such evidence to establish that its mark had obtained secondary meaning in 2002. Even if the Complainant’s relevant “use” can be taken to have immediately commenced in October 2001 (immediately after the registration of its own domain name), this would have left only around 5 months between its first use and the registration of the disputed domain name. Establishing a reputation in a mark is not something that occurs overnight. In the absence of any substantial marketing or Internet presence prior to the registration of the disputed domain name, there is little evidence in this case from which an inference of such a reputation in early 2002.
There are other factors that go against the Complainant’s case. The Complainant’s mark is comprised of what appear to be two descriptive terms (the terms “hunter” and “milf” – the latter which has a particular pornographic connotation). While those terms, taken together, have obviously been sufficient for a registered mark to be granted in 2005, the use of them would require at least some material evidence of secondary meaning in March 2002, when the disputed domain name was registered. Separately, it is also notable that the Complainant has taken a substantially long period – almost 10 years - to bring a Complaint. While such a delay does not, by itself, prevent the Complaint from succeeding, such a factor does make the Complainant’s case more difficult. See e.g. Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139. The Complainant’s delay does not suggest that the registration of the disputed domain name significantly disrupted its business.
The Panel acknowledges that the disputed domain name, as evidenced by the Complainant, resolves to a website competing with the services offered by the Complainant. This is evidence that supports a finding of bad faith use. However, under paragraph 4(a)(iii) of the Policy, there must additionally be evidence of bad faith registration. For the reasons set out above, the Panel considers there insufficient such evidence in this case.
For the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: May 9, 2011