WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Surecom Corporation NV v. ICF Technology, Inc. / Domain Administrator, Fundacion Private Whois
Case No. D2014-0639
1. The Parties
The Complainant is Surecom Corporation NV of Willemstad, Curacao, Netherlands, represented by Eidsness Law Offices, United States of America.
The Respondent is ICF Technology, Inc. of Seattle, Washington, United States of America / Domain Administrator, Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <nudecam4.com> is registered with Internet.bs Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 16, 2014. On April 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2014, 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 April 30, 2014 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 May 5, 2014.
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 May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. Email communications were received from the Respondent ICF Technology, Inc. on May 20 and 21, 2014. The Respondent did not submit any formal response.
The Center appointed John Katz QC as the sole panelist in this matter on June 10, 2014. 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 Netherlands Antilles-based corporation that owns and operates what is described in the Complaint as a very successful, free, live adult web cam site. It is known as CAM4. The website is accessed via that domain name <cam4.com>. The Complainant has owned the domain name since its registration in July 1999. The Complaint also has a number of registered trademarks and pending applications for the word mark CAM4, particularly in the United States through the United States Patent and Trademark Office ("USPTO"), registration number 4,062,460, filed in December 2010 and registered with effect from November 29, 2011 in classes 35 and 38. That registration claims first use in 2007. There are European Union trademark registrations as well as in Canada and trademark applications pending in Greece and Australia.
The registrations are broadly described with respect to goods or services in the relevant class or classes.
The Complainant's website has been a live offering on adult web cams since June 2007. From that time it has grown to become a website generating traffic giving it a traffic ranking of the 843rd most popular website in the world according to Amazon's Alexa Site Ranking Programme. The Complainant's website attracted 57 million unique visitors within a year of its launch and by 2013 had over a billion unique visitors.
In November 2011 the Respondent registered the disputed domain name. The disputed domain name defaults to a separate website "www.liveadultsexcams.com". That website displays more or less the same type of adult sexually explicit material as does the website of the Complainant.
Unfortunately the Complaint does not indicate when it was that the Respondents' use that is complained of first attracted attention. The WhoIs search shows the Respondent registered the disputed domain name with effect from November 8, 2011 and renewal is current to November 8, 2016.
5. Parties' Contentions
The Complainant relies upon its trademark registrations and its pending applications and no doubt also its common law goodwill established since its website went live in June 2007. It contends that the Respondent has deliberately chosen to add the descriptive or generic word "nude" before its name to seek to trade off the goodwill and rights the Complainant has generated through its CAM4 website. That the disputed domain name defaults to a strikingly similar website demonstrates that the Respondent is simply seeking to divert traffic that would otherwise be destined or intended for the Complainant. Thus, the Complainant contends, visitors to the Respondent's website will be confused and think they are visiting the Complainant's website, contrary to the fact.
The disputed domain name uses the Complainant's registered trademark CAM4 and merely adds the word "nude" as a prefix but the addition does not reduce the risk of confusion, particularly as the associated websites feature similar material.
The Complainant next contends that the Respondent has no rights or legitimate interests. It is not known by the disputed domain name. It is simply using or adopting the Complainant's registered trademark in full or adding a descriptive or generic prefix for the purpose of diverting traffic for commercial gain, to the detriment of the Complainant. Such conduct is an infringement of the Complainant's CAM4 registered trademark.
The Complainant then contends that the registration and continued use of the disputed domain name defaulting to a competing website shows registration and use in bad faith. It contends that use of a similar website containing the Complainant's trademark is an infringement and constitutes registration and use in bad faith.
The Complainant contends that its own popularity and world ranking as a much visited website evidences that the Respondent is using and continues to use the Complainant's trademark for improper purposes.
A letter before action was sent to the Respondent on February 6, 2014. As a result it appears the Respondent changed its Registrar. The Complainant readdressed its letter before action and also sent it to the Respondent at its nominated email address. The Respondent also changed its Registrant details, the Complainant alleges, all in response to the Complaint and no doubt in an attempt to divert it.
Prior to filing the Complaint, the Complainant received emails from an individual called Razvan, whose email address was "…@gmail.com", in which Razvan claimed that he was the owner of the disputed domain name and he was represented by ICF, and 90% of his web traffic generated through the website to which the disputed domain name defaulted came from the key words he used and not any use of the trademark CAM4. He offered in an email of April 16, 2014 to sell the disputed domain name to the Complainant and he denied any attempt to infringe the Complainant's trademark.
The Respondent has defaulted and not put in any formal response to the Panel.. On May 20 and 21, 2014, the Center received email communications from the legal representative of ICF Technology, Inc. claiming that ICF Technology, Inc. has no ownership interest in the disputed domain name and has not used the disputed domain name in any way. Therefore, ICF Technology, Inc. informed the Center that it had no intention to file a response to the Complaint.
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent's 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 respondent's domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trademarks in which the Complainant has rights.
The Complainant must establish that it has such rights either to registered or unregistered trademarks or service marks and that the disputed domain name is identical or confusingly similar to the trademark in which it has rights.
The disputed domain name is not identical to the Complainant's trademark. Adopting the test set out in a number of cases in various jurisdictions, the question of whether a trademark alleged to be used by a respondent is identical is a matter that must be interpreted strictly.
In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR  FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant's mark if the former "reproduced without any modification or addition all the elements constituting the trademark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer".
The Panel considers this statement equally applicable to the facts of the present Complaint. It cannot be said that the disputed domain name is identical to a trademark in which the Complainant has rights.
Thus the issue for resolution is whether the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
That the Complainant has rights to the trademark CAM4 is without doubt. It has the trademark registrations that predate any use or inclusion of that mark by the Respondent. Further the classes of goods or services are the same.
The addition of the descriptive or generic prefix "nude" is no more than an entirely logical prefix to describe more accurately what it is that the website of the Respondent features. It is assumed that the CAM4 simpliciter tells a visitor to the site nothing about content whereas the prefix does. So the Respondent has adopted the entirely logical prefix more clearly or accurately to define its website as containing adult material but without any logical or apparent need for the trademark CAM4 to be included in the disputed domain name.
Further, as the disputed domain name defaults to a separate website "www.liveadultsexcams.com" is itself evidence of the adoption of a similar trademark for wrongful purposes.
Thus the Panel finds that the disputed domain name is confusingly similar and paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trademark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) of the Policy a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
The use of which the Complaint is made of the registered trademark CAM4 in the disputed domain name is without question the adoption of a mark in which the Complainant has rights and as such the Complainant is entitled to object to any wrongful use of its trademark by any other party.
The Complainant has not licensed or authorized the Respondent to use its registered trademark. Nor is the Respondent commonly known by or by reference to the disputed domain name.
As the Respondent is attempting to pass itself off as CAM4 or some way affiliated or associated with CAM4, contrary to the fact, its purpose can only be to divert traffic that properly belongs to the Complainant, causing business loss to the Complainant, a competitor in business.
Further, the Respondent's activities can be seen as misleading or deceptive and not a legitimate use of the trademark for its own proper purposes.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other panelists' decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
As indicated earlier in this decision, the disputed domain name was registered on November 8, 2011. As such it postdates the Complainant's trademark registration in the United States. However, the letter before action sent to the Respondent was dated March 24, 2014, almost two and a half years after the registration of the disputed domain name.
There is no indication in the Complaint when the Respondent's associated website to which the disputed domain defaulted first went live nor when it first came to the attention of the Complainant.
Previous UDRP panel decisions have commented on delay and each case turns on its own particular facts.
In the present situation it would have been helpful if the Complainant had addressed this issue and indicated or in some way explained the delay of approximately two and a half years before the letter before action was sent to the Respondent.
Be that as it may, and in the absence of any adequate explanation from the Respondent, the Panel is required to determine whether or not the registration of the disputed domain name in November 2011 was in bad faith.
As indicated in the previous section B, there is no basis to assume or infer that the Respondent had any proper purpose in adopting the trademark CAM4 as part of the disputed domain name. It does not appear as if the trademark is itself generic or descriptive as it has acceded to registration before the USPTO. That being so, and given that the disputed domain name defaults to a separate website, it can safely be inferred in all the circumstances that the registration of the disputed domain name by the Respondent was in bad faith.
The disputed domain name and the associated website present live offerings and accordingly are actively being used. The Respondent's associated website is a site that displays live web cam broadcasts of exactly the same type displayed by the Complainant on its website. It would therefore be difficult for a visitor to either website to discern any differences between the two websites.
The issues under section B above elide with those in this section. It is therefore a straight forward exercise to infer that the Respondent is using the disputed domain name once again for the purposes of diverting traffic by initially attracting traffic from visitors who have assumed there is some link, association or affiliation between the Respondent's website and that of the Complainant, contrary to the fact.
As the Complainant has established that it has both registered and unregistered trademark rights, it is also clear that the Respondent has wrongfully appropriated the goodwill associated with the Complainant's trademark.
That the Complainant has also established a very considerable reputation and extraordinary number of visitors to its website, makes it easy to infer once again that the Respondent is simply coat tailing on the Complainant's popularity.
It is also reasonable to assume that the tactics adopted by the Respondent in changing its Registrant details and other registration information is in an attempt to avoid contact by people such as the present Complainant.
The Panel accordingly finds without any difficulty that paragraph 4(a)(iii) of the Policy is made out.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <nudecam4.com> be transferred to the Complainant.
John Katz QC
Date: June 24, 2014