WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sophia Locke LLC v. Jerry Storch, SnakeNet

Case No. D2013-1832

1. The Parties

Complainant is Sophia Locke LLC of Las Vegas, Nevada, United States of America, internally represented.

Respondent is Jerry Storch, SnakeNet of Raleigh, North Carolina, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <camgirlmansion.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2013. On October 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2013. The Response was filed on November 21, 2013.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 22, 2013. 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

Complainant is the owner of registration of the word service mark CAM GIRL MANSION on the Supplemental Register of the United States Patent and Trademark Office (USPTO), registration number 4401963, registration dated September 10, 2013, in international class 41, covering “Arranging, organizing, conducting and hosting social entertainment events”, asserting first use and first use in commerce of August 1, 2011.¹ Complainant initially applied for registration of the CAM GIRL MANSION service mark on the Principal Register of the USPTO, but such registration was finally rejected on grounds that the combination term is merely descriptive, and the application was converted to the Supplemental Register.

Complainant alleges that it first publicly discussed CAM GIRL MANSION as a business in or around April 2011, and that it has hosted five entertainment events since then. Complainant alleges that it operates a commercial Internet website at “camgirlmansion.sophialocke.com”.

According to the Registrar’s verification, Respondent is registrant of the disputed domain name. Such verification shows the creation date of the disputed domain name as April 2, 2011.

The disputed domain name does not resolve to any active website.

Respondent indicates that he has considerable experience in the Internet broadcast and media sector, and is the founder and operator of the SnakeNet Internet radio station. Respondent further indicates that he registered the disputed domain name on April 2, 2011 after extensive discussions with individuals involved in the “cam girl” service industry, and with no prior knowledge or awareness of Complainant or its business. Respondent indicates that it is his intention to develop a business that may involve purchasing or leasing a physical building to be used by cam models.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the CAM GIRL MANSION service mark, and that such service mark was first publicly discussed in April 2011 and was registered in the United States on January 3, 2013, and which registration asserts a date of first use and first use in commerce of August 1, 2011.

Complainant contends that the disputed domain name is confusingly similar to its service mark.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has never been known by “Cam Girl Mansion”, nor does Respondent have trademark rights in such combination term; (2) Respondent has not operated a bona fide or legitimate business under the disputed domain name, nor is it making a protected noncommercial or fair use of the disputed domain name; (3) Respondent derived the disputed domain name by visiting the website “www.sophialocke.com> and discovering that Sophia Locke was a famous cam model; (4) Respondent’s existing businesses do not involve cam sites, and (5) Respondent is attempting to take unfair advantage of Complainant.

Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent became aware of Complainant through public discussions in or around April 2011; (2) bad faith use can be found even though a domain name is dormant; (3) the mere fact of registration of the disputed domain name does not give Respondent rights or legitimate interests; (4) there was no reason for Respondent to register the disputed domain name other than to take advantage of Complainant; (5) Complainant sent a cease-and-desist letter to Respondent on October 14, 2013.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent contends that the disputed domain name was registered in connection with wide-ranging discussions with persons involved in the cam girl service industry and related businesses, and with no knowledge of Complainant or its alleged service mark interests. In contemplation of establishing a web-based business involving cam girls, Respondent claims that he registered a number of domain names between February and April 2011, of which the disputed domain name is one. Respondent alleges that the idea for the disputed domain name arose from a collegial discussion of the well-known Playboy Mansion, and was developed on that basis. Respondent does not concede that Complainant owns rights in the CAM GIRL MANSION service mark.

Respondent requests the Panel to reject the Complaint.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

The Center formally notified the Complaint to Respondent, and Respondent filed a timely Response. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has alleged rights in the service mark CAM GIRL MANSION. As evidence in support of service mark ownership, Complainant referred to some public discussions in April 2011, but provided no evidence that reflects such discussions. The USPTO rejected Complainant’s application for registration on the Principal Register on grounds that the asserted service mark was merely descriptive. The service mark was subsequently registered on the Supplemental Register. Registration on the Supplemental Register is an indication that the combination term might be capable of serving as a service mark, but the rejection by the USPTO examiner for registration on the Principal Register reflects a determination that the combination term had not acquired distinctive status. Registration on the Supplemental Register “confers no substantive trademark rights beyond those under common law”, and “does not entitle the registrant to any statutory presumption that the term is a trademark and not a generic name” (3 McCarthy on Trademarks and Unfair Competition § 19: 36 (4th ed.)).

Complainant does not enjoy a presumption of rights in CAM GIRL MANSION as a service mark in the United States. Complainant has not provided evidence sufficient to establish that the combination term has become distinctive in connection with Complainant and its services. The Panel determines that Complainant has failed to establish rights in a trademark or service mark. Absent such showing, Complainant may not succeed in this proceeding.

B. Registered and Used in Bad Faith

Although not necessary to reaching a determination in this proceeding, the Panel notes that the disputed domain name was registered by Respondent on April 2, 2011.

Complainant has provided no evidence that Respondent knew of Complainant’s alleged service mark CAM GIRL MANSION as of April 2, 2011 (other than the mere assertion that Complainant was discussing it “in public”). Complainant alleged a first use in its application at the USPTO of August 1, 2011. Although an allegation of first use in an application for registration at the USPTO does not constitute evidence of use, the allegation by Complainant indicates its own belief concerning that date. Complainant did not file an application for service mark registration until January 3, 2013, a date which Complainant mistakenly refers to as the date the service mark was registered (which was, in fact, September 10, 2013, on the Supplemental Register).

As an alternative basis for rejecting the Complaint, there is no evidence to support a finding that Respondent registered the disputed domain name at a time when Complainant owned service mark rights in CAM GIRL MANSION. Respondent did not register the disputed domain name in bad faith within the meaning of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Frederick M. Abbott
Sole Panelist
Date: December 4, 2013

¹ Complainant asserted ownership of registration of the CAM GIRL MANSION service mark, but did not disclose the registration number or the fact of registration on the Supplemental Register. On December 4, 2013, the Panel visited the USPTO Trademark Status and Document Retrieval (TSDR) online database to confirm the information that had been provided. (For the Panel’s power to conduct such research, see paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).