WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alloy Entertainment LLC v. Zhuo Huang, BellNames Privacy Protection Service
Case No. D2012-0564
1. The Parties
The Complainant is Alloy Entertainment LLC of New York, New York, United States of America (“U.S.”) represented by Birch, Stewart, Kolasch & Birch, LLP, U.S.
The Respondents are Zhuo Huang of Greenville, Mississippi, U.S. and BellNames Privacy Protection Service of Colorado Springs, Colorado, U.S.
2. The Domain Name and Registrar
The disputed domain name <gossipgirl.com> (the “Domain Name”) is registered with DropJump.com Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 2, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
Following correspondence with the Center concerning the Registrar’s principal place of business, the Complaint was amended on April 4, 2012 with respect to the location of the mutual jurisdiction election. The Center verified that 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 April 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2012.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 7, 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 a Delaware limited liability company with its principal offices in New York City. The Complainant produces and markets books, media programs, and Internet content aimed at teenage and young adult audiences.
These include a popular series of Gossip Girl books — thirteen published since 2002 — exploring the lives and romances of privileged teens who attend a fictional private school in Manhattan’s Upper East Side. The Complainant has also launched spin-offs such as the separate series, Gossip Girl: The Carlyles, a manga series titled Gossip Girl: For Your Eyes Only, and a cross-genre mash-up called Gossip Girl, Psycho Killer. The first eleven books of the Gossip Girl series have sold over five million copies, have appeared on national best-seller lists, and have been translated into 36 languages. The popularity of the novels led to a Gossip Girl television series on the CW network in the U.S. The series was launched in 2007 and is now in its fifth season. The Complainant also uses “Gossip Girl” or “Gossip Girls” in connection with online entertainment such as website content about the books and television program and celebrity news of interest to the teen market. Much of this content is presented or advertised on the Complainant’s website at “www.gossipgirl.alloyentertainment.com”.
The Complainant’s affiliate Alloy Media, LLC owns a registered trademark for GOSSIP GIRLS (United States Reg. No. 3866232, October 26, 2010). The Complainant itself recently obtained U.S. trademark registration for GOSSIP GIRL (U.S. Reg. No. 4139304, May 8, 2012), claiming commercial use since September 2007, when the television series first aired. Since 2007, the Complainant has licensed the GOSSIP GIRL mark to the producers of the television series of that name.
The record includes substantial evidence of media articles and stories about the Gossip Girl books and television series and their popularity among teenage girls and young women.
The Domain Name was created on February 24, 2012 and registered in the name of a domain privacy service, BellNames Privacy Protection Service. In correspondence with the Center, the Registrar identified Zhou Huang of Greenville, Mississippi, U.S. as “the current registrant”, while continuing to list the registration in the name of the privacy service. Hence, both are named as Respondents in this proceeding. No Response was filed and there is no record of communications from either Respondent on the subject matter of this proceeding.
Screen shots attached to the Complaint show that the Domain Name formerly resolved to a website used to sell pornographic videos, “live sex” camera feeds, and other adult products. The Complaint attaches evidence that the Respondent Zhou Huang, at the same address in Mississippi, operates several other websites with similar content and presentation.
Counsel for the Complainants sent the Respondent Zhou Huang a cease-and-desist letter dated February 29, 2012, citing the Complainant’s GOSSIP GIRL and GOSSIP GIRLS marks. There is no evidence of a response to this demand in the record of this proceeding. However, the Domain Name no longer resolves to a pornographic website but rather to a generic pay-per-click (“PPC”) advertising landing page with multiple links to third-party advertisers. The landing page is headed with the Domain Name and displays a changing set of images. These are largely of an erotically suggestive nature but quite unlike the explicit pornography previously associated with the Domain Name. The principal content of the landing page consists of advertising links to websites concerning television programs and films as well as to “swingers” websites and ecommerce websites selling items ranging from jewelry and cosmetics to lawn care services and airport taxis.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to its registered, and formerly common law, GOSSIP GIRL and GOSSIP GIRL marks. The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant infers that the name was chosen and employed in bad faith to divert Internet users for commercial gain, trading on the Complainant’s well-known marks. The Complainant also finds support for its conclusion of bad faith in the association of its marks with pornography, which threatens to tarnish the image of the marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall 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.”
A. Identical or Confusingly Similar
The Complainant holds registered GOSSIP GIRL and GOSSIP GIRLS trademarks in the U.S. The Domain Name is identical to the first and confusingly similar to the second for Policy purposes, since the names are similar in appearance, sound, and sense. (As UDRP panels routinely conclude, only the distinctive second part of a domain name is material for testing whether it is identical or confusingly similar to a mark, and not the generic “www” or “.com” URL address elements; moreover, the missing space between “gossip” and “girl” is immaterial because URL addresses cannot include spaces.)
Thus, the Panel concludes that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the Respondent to make use of the GOSSIP GIRL or GOSSIP GIRLS marks in the Domain Name or otherwise. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Name:
“(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 noncommercial 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.”
The Domain Name has clearly been used commercially, and there is no evidence in the record that the Respondents or their businesses are known by a corresponding name. Simply repeating a domain name at the top of an e-commerce website or PPC landing page is insufficient to establish that a respondent is “commonly known” by the domain name. As the Complainant observes, the adult website formerly associated with the Domain Name identified “HOHLIMITED” as the service provider, not any entity known as “Gossip Girl”.
On the other hand, PPC advertising can be a legitimate business, and adult videos can be advertised and sold lawfully in many jurisdictions. However, the use of the Domain Name for these purposes could not be deemed “in connection with a bona fide offering or goods or services” under the Policy, paragraph 4(c)(i), if the evidence indicated that the Domain Name was selected and used not for its generic value but rather to exploit another party’s trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847:
“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”
That possibility in the present case is discussed more fully below, in connection with the “bad faith” element of the Complaint, where the Panel concludes that there is a likelihood that the Domain Name was in fact registered and use in bad faith, targeting the Complainant’s marks.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing (as it has in this case). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), section 2.1 (and cases cited therein). The Respondent has not done so in this proceeding, and the Panel finds, therefore, that the second element of the Complaint is established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), lists non-exclusive instances of bad faith, including this one on which the Complainant relies:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Respondent may or may not receive PPC income from the currently parked website, but it is clearly used for commercial gain. Moreover, it is undisputed that the Domain Name was until recently used for a pornographic commercial website selling DVDs, downloads, and other products. Attracting Internet users to this website through “initial interest confusion” could be profitable, even if only a small percentage subsequently lingered at the site.
“Gossip” and “girl” are both dictionary words in English, and “gossip” is sometimes salacious. But this combination of words is not itself obviously descriptive of pornography. Thus, it is hard to imagine how this combination of words would be likely to attract Internet users looking for commercial online pornography. By contrast, it is quite plausible that this term, associated by millions of fans with the Gossip Girl books and television program, would have the potential for attracting young Internet users with an interest in the Gossip Girl stories, some of whom might then be enticed to click on the advertised adult content.
The Complaint raises a fair and plausible inference that the Domain Name was selected for its trademark rather than generic value. The Respondent has not come forward to rebut that inference with an alternative explanation and supporting evidence. The Panel concludes, therefore, that the Complainant has established the third element of the Complaint. Essentially the same factual analysis also supports the Panel’s conclusion on the second element of the Complaint, as mentioned above. Further, as previous panels have concluded, the potential tarnishment of a mark from its unauthorized association with pornography additionally supports a finding of bad faith. See, e.g., CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008, and cases cited at WIPO Overview 2.0, sec. 3.11.
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 <gossipgirl.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: May 9, 2012