WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BAOL, s.r.o v. PrivacyProtect.org / Private Person, dariusz marek zientara
Case No. D2012-0318
1. The Parties
The Complainant is BAOL, s.r.o of Prague, Czech Republic represented by The Law Office of D. Gill Sperlein, United States of America.
The Respondent is PrivacyProtect.org of Nobby Beach, Australia and Private Person, dariusz marek zientara of Porto, Portugal.
2. The Domain Name and Registrar
The disputed domain name <belami-boys.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 20, 2012.
The Center verified that the Complaint together with the amended 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 February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2012.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on March 26, 2012. 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 is the producer of high quality gay erotica and has been for nearly twenty years.
The Complainant is the exclusive licensee of the following trade and service marks (collectively, “the BEL AMI” mark) registered with the United States Patent and Trademark Office (USPTO):
No. 2,181,754 - BEL AMI. Registration date: August 18, 1998
Class 9 - Pre-recorded video tapes featuring adult entertainment, cinematographic films featuring adult entertainment
Class 16 - Books in the field of adult entertainment, calendars, and photographic prints
No. 2,183,332 - BEL AMI. Registration date: August 25, 1998
Class 35 - Wholesale distribution of photographs, pre-recorded video tapes, cinematographic films, and printed publications
No. 2,291,608 - BEL AMI. Registration date: November 9, 1999
Class16 - Magazines in the field of adult entertainment; greeting cards and postcards
No. 2,540,972 - BEL AMI. Registration date: February 19, 2002
Class 42 - Entertainment services, namely providing paid access to a members-only website for the purpose of viewing information, photographs, and video images of male models
No. 3,395,245 - BELAMIONLINE. Registration date: March 11, 2008
Class 35 - Online retail store featuring books, calendars, cards, and pre-recorded DVDs
Class 38 - Online entertainment services, namely streaming video and pay-per-view video provided via website
Class 42 - Online entertainment services, namely providing a website to subscription members for the purpose of viewing information, photographs, and video images of male models
The Complainant has been using the BEL AMI mark in international commerce in connection with production and distribution of adult entertainment content since 1993. The Complainant owns overwhelming common law trademark rights to the BEL AMI mark established by nineteen (19) years of continuous and widespread use including use on the Internet.
The Complainant owns the domain name registration for <belamionline.com>, from which it operates its main website. The Complainant owns registrations to over ninety other domain names containing the BEL AMI mark and operates websites relating to various aspects of its business at many of them including, <allaboutbelami.com>, <belamicash.com>, <belamifriendfinder.com>, <belamilite.com>, <belamilive.com>, <belamimodels.com>, <belamimodelsearch.com>, <belamipromo.com>, <belamistudios.net>, <belamivideo.net>, <belamivod.com>, <buybelami.com>, <buybelami.eu> and <mybelami.com>.
The website operated at “www.belamionline.com” has subscribing members in 130 different countries. Numerous brick and mortar as well as online DVD stores sell BEL AMI dvds worldwide. The Complainant has distribution agreements in the United States, the European Union, Australia, South Africa, and Canada and retails its products worldwide. The Complainant has won numerous Industry awards for products and services distributed under the BEL AMI brand. BEL AMI earned five 2010XBIZ Awards citations, including GLBT studio of the year, and five nominations at the 2010GayVN Awards. They won the award for best marketing company image. They have also won awards at the Cybersocket awards including Movie of the Year in 2012. Company founder George Duroy, has been inducted into the GayVN Awards Hall of Fame for his work as the director, producer and creative force behind the BEL AMI brand. The BEL AMI mark has achieved strong secondary meaning in the relevant marketplace.
BEL AMI is a famous mark, especially within the adult entertainment community.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has well established rights, since the domain name comprises the BEL AMI mark, owned by the Complainant, added with the descriptive word “boys”. It is well established in previous UDRP proceedings that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The BEL AMI mark, used in connection with erotic film production and distribution, can only identify the Complainant and Internet users navigating to the disputed domain name would be misled to believe that the disputed domain name is in some way connected to and affiliated with the Complainant. This is known as “initial interest confusion” (see, Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206). When someone navigates to the disputed domain name, he sees a variety of movies including BEL AMI movies which he is invited to download for free. While the user can navigate through many pages of movies belonging to other producers on the left side of the page, the right side of the page consistently shows BEL AMI or BEL AMI related products. All of these movies are illegal versions of the movies which infringe the Complainant's copyrights. This misuse of the BEL AMI mark has certainly created confusion between the Complainant’s and the Respondent’s domain names. Given the fact that the Complainant does a significant portion of its business online, this could create a crisis in the marketplace - and not only for the Complainant.
The Complainant submits that the Respondent has neither rights nor legitimate interests in the disputed domain name. The Complainant further submits that under the UDRP, once the Complainant asserts that the Respondent has no rights or legitimate interests with respect to the disputed domain name, the burden shifts to the Respondent to provide “concrete evidence that it has rights to, or legitimate interest in the domain name at issue” (see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). In the Complainant’s view the Respondent is unable to provide any of this evidence.
The Complainant described the manner in which the Respondent operates the website resolving to the disputed domain name to earn revenue. Internet users are invited to click on links to download (infringing) copies of erotic movies. The files containing these movies are stored on “www.filesmonster.com” or “www.oron.com”, a type of websites commonly referred to as cyberlockers. When the user attempts to download the infringing file it may do so for free but at a very slow download speed and in multiple parts that it must then string back together. If it wishes to download the movie as a single file and at a faster rate, it can pay a subscription fee to the cyberlocker. The cyberlockers in turn pay a portion of this subscription fee to the Respondent – which all in all is an illegitimate business.
The Complainant strongly asserts that the Respondent registered the disputed domain name in defiance of this knowledge and did so because of the likelihood of confusion with the Complainant’s mark, which would bring a significant amount of typographical error traffic as well as search engine traffic to the Respondent’s website.
The Respondent has made neither a good faith nor a legitimate use of the disputed domain name. The Respondent has selected the name to intentionally attempt to attract, for commercial gain, Internet users to the website hosted at this domain name by creating a likelihood of confusion with the Complainant’s mark and the Complainant’s URL as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website location or of the products or services on the Respondent’s website or location. When an Internet user navigates to the disputed domain name, the user finds itself looking at a website that appears to be affiliated with the Complainant. The offending website displays box covers and promotional images of gay erotic movies including BEL AMI movies.
Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith.
The Complainant’s common law rights were established as early as in 1993. The Complainant was internationally famous in the relevant marketplace while the Respondent registered the disputed domain name in 2011. This clearly showing that this was registration in bad faith.
The Respondent selected (and uses) the disputed domain name only because it is similar to the Complainant’s trademarks. Therefore, due to user confusion, the website will generate traffic so that the Respondent can receive commercial gain from earning affiliate fees from cyberlockers in relation to users who originally intended to visit the Complainant’s website or locate legitimate retailers selling the Complainant's DVDs. This is not a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy.
The Complainant underlined that providing false information at the moment of registering a domain name has been held to constitute bad faith. The Respondent, upon registration, used a privacy service hence it is reasonable to infer that the Respondent has used a privacy service in order to mask its identity to make it more difficult for a lawsuit (which could result in damages of USD100,000) to be filed against him under the ACPA.
The Complainant does not need to show actual confusion: rather, the potential or reasonable confusion is sufficient. Where the domain name is likely to cause “initial interest confusion” such that users might abandon their efforts to find complainant's products, it is irrelevant that the users eventually realized that the website they reached is not the website they were seeking.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places the burden on the Complainant to prove the presence of the following three separate elements:
(i) the disputed domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
A complaint may only be admitted if the above criteria are met simultaneously, which in this Panel’s view are in the present case.
A. Identical or Confusingly Similar
The Complainant has proven that the disputed domain name <belami-boys.com> is identical or confusingly similar to the name, trademarks and service marks of the Complainant. The confusing similarity of the disputed domain name <belami-boys.com> with the Complainant’s BEL AMI trade and service marks is apparent from a simple visual comparison. The disputed domain name is a replica of the Complainant’s mark. The phrase “belami” does not appear to have any generic meaning.
The disputed domain name <belami-boys.com> contains a trademark owned legally by the Complainant, subject to various trademark registration worldwide, enjoying also a common law trademark. This is sufficient to satisfy the requirement that the disputed domain name be confusingly similar to a mark in which the Complainant has rights (see also Oki Data Americas Im v. ASD, Inc, WIPO Case No. D2001-0903, where the panel found that “the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks ”). Any added words, most obviously suffix comprising of the generic word “boys” do not cure this use of the Complainant’s mark, neither they are sufficient to establish that the disputed domain name is not confusingly similar to the Complainant’s mark. It is not without significance that the used suffix directly refers to the sex of the models present at the website.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s mark and, as a consequence, the Complaint brought by the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence submitted before the Panel it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not the Complainant’s licensee in any respect, nor is the Respondent authorised to use the Complainant’s marks. There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Complainant has demonstrated its rights to the BEL AMI mark, as well its presence in the relevant market.
Nonetheless, the Respondent was also given the opportunity to contest the case against it. However, the Respondent did not submit any evidence that would demonstrate that it has any rights to, or legitimate interests in the disputed domain name <belami-boys.com>.
The Panel therefore infers from the Respondent’s silence and the Complainant’s contentions that the Respondent has no serious arguments to prove its rights to, or legitimate interests in the disputed domain name <belami-boys.com>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant is well-known in the adult-entertainment industry throughout the world. Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Siotie, WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).
The Complainant was present in the market of adult entertainment since 1993 and owned a number of domain names alike to the one in dispute long before the Respondent registered the disputed domain name <belami-boys.com>. Notably, the website of the Complainant, operated at <belamionline.com>, has subscribing members in 130 different countries. Under these circumstances, the Panel considers that the Respondent at the time of the registration of the disputed domain name knew or at least should have known about the Complainant’s mark. This is tantamount to registration in bad faith. Given the fact that the Complainant’s trademark is famous and known worldwide in the relevant market, and in the absence of evidence to the contrary, the Panel is persuaded that the Respondent knew of should have known of the Complainant’s trademark and services at the time it registered the disputed domain name, and that it did so with a view to illegitimately take advantage thereof. It is well established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name may prove bad faith registration (NBC Universal Inc. v, Szk.com / Michele Dinoia, WIPO Case No. D2007-0077; ALSTOM v. Domain Investments LLC, WIPO Case No., D2008-0287).
Under paragraph 4(b)(iv) of the Policy a domain name is considered to be registered in bad faith if by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 its website or location. This is exactly the case at hand.
Based on the evidence submitted and detailed explanation given by the Complainant, the Respondent apparently is making profit by illegitimately offering, inter alia, movies via cyberlockers. It seems that cyberlockers pay a portion of this profit to the Respondent. In this Panel’s view, such registration and use is aimed at intentionally attracting for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Panel agrees with the Complainant that the Respondent selected (and uses) the disputed domain name only because it is similar to the Complainant’s mark.
For the foregoing, the Panel finds that the disputed domain name was registered and is used by the Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <belami-boys.com> be transferred to the Complainant.
Dated: April 10, 2012