WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BLL Media Holdings, LLC v. Infinitoria Ltd
Case No. D2014-1106
1. The Parties
The Complainant is BLL Media Holdings, LLC of the United States of America (“US”) represented by Panacos Law APC, US.
The Respondent is Infinitoria Ltd of London, United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.D., Esq., US.
2. The Domain Name and Registrar
The disputed domain name <girldoporn.com> (the “Disputed Domain Name”) is registered with Nettuner Corp. DBA Webmasters.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2014. On June 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 30, 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 July 1, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on July 3, 2014.
The Center verified that the amended 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 proceeding commenced on July 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2014. The Response was filed with the Center on July 7, 2014.
The Complainant submitted a request to file supplementary arguments on July 12, 2014. On July 16, 2014 the Respondent filed a response to the Complainant’s request to file supplementary arguments.
The Center appointed Charné Le Roux as the sole panelist in this matter on July 14, 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.
The Panel issued a procedural order on July 24, 2014 requesting the Complainant to file its supplementary arguments within a period of five days from the date of the order. A right of rebuttal was afforded to the Respondent within a period of five days of the Complainant filing of its supplementary arguments. On July 30, 2014 the Complainant’s supplementary arguments were submitted and on August 3, 2014 the Respondent submitted its reply to the Complainant’s supplemental filing.
4. Factual Background
The Complainant was incorporated in February 2013, trades in the adult modeling industry and utilizes the website attached to the domain name <girlsdoporn.com> for this purpose. The domain name <girlsdoporn.com> was registered on July 31, 2006 and is currently a subscription based adult content website.
The Complainant filed an application for the trade mark GIRLSDOPORN.COM with the United States Patent and Trade Marks Office (USPTO) on December 23, 2013. On April 4, 2014 the USPTO refused the Complainant’s application on the basis that it describes a feature of the Complainant’s services. The application was subsequently amended to the Supplemental Register.
The Disputed Domain Name was registered on August 28, 2009. The website attached to the Disputed Domain Name is used as a portal site offering links to adult websites. The Complainant sent, over the period April 3, 2014 to April 24, 2014, correspondence to the Respondent requesting it to transfer the Disputed Domain Name to the Complainant. The Respondent did not react to the correspondence.
5. Parties’ Contentions
The Complainant submits that it has been prominent and well-known within the adult modeling industry since 2007, that it registered the <girlsdoporn.com> domain name on July 31, 2006 and that it has continuously operated the website attached to this domain name since 2007 as a subscription based adult content website. The Complainant claims that it has acquired rights in the GIRLSDOPORN.COM trade mark as a consequence of use that it has made of the trade mark through advertising and videos that feature the trade mark. It states that it has expended a great amount of time and money in promoting and protecting the GIRLSDOPORN.COM trade mark and that it has acquired a valuable reputation and goodwill in it. No evidence in support of its common law rights was provided in its initial Complaint, nor of the Complainant’s ownership in the domain name <girlsdoporn.com>. The Complainant refers also to its application at the USPTO filed for the trade mark GIRLSDOPORN.COM on December 23, 2013 and advises that at the time of filing of the Complaint, it was still pending.
The Complainant argues that the Disputed Domain Name is confusingly similar to its GIRLSDOPORN.COM trade mark with the only difference being the deletion of the plural “s” in the Disputed Domain Name.
The Complainant contends that the Respondent lacks rights or legitimate interest in the Disputed Domain Name in that:
a) the Respondent is not commonly known by the Disputed Domain Name;
b) the Respondent has not made noncommercial or fair use of the Disputed Domain Name;
c) the Complainant did not authorize the Respondent to use its mark; and
d) there is no evidence that the Respondent has ever conducted its business through the Disputed Domain Name. Instead, the Complainant argues, the Respondent is using the Disputed Domain Name to divert traffic to websites of the Complainant’s competitors.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent cannot legitimately assert that it was unaware of the Complainant’s trade mark GIRLSDOPORN.COM, since it registered the Disputed Domain Name two years after the Complainant began operating its website which had since become popular through widespread advertising campaigns and social media connections. The Complainant argues that the Respondent’s use of the Disputed Domain Name, being virtually identical to its trade mark, will result in confusion and will give rise to diversion of Internet traffic from the Complainant’s site to the Respondent’s site. It states that since such traffic is diverted to websites which offer products competing with that of the Complainant’s, the Respondent’s conduct constitutes bad faith.
The Complainant also submits that the Respondent’s benefit from the confusion and the click through revenue that it receives as a consequence of the links that appear on the website attached to the Disputed Domain Name, indicates bad faith.
The Complainant submits that the fact that the Respondent failed to respond to its correspondence is evidence of bad faith.
Finally, the Complainant argues that the misspelling of the Complainant’s trade mark was intended to take advantage of the Complainant’s popularity by capturing traffic from Internet users who accidentally misspell the Complainant’s trade mark.
The Complaint requests that the Disputed Domain Name be transferred to it.
The Respondent reacts strongly in connection with the Complainant’s trade mark rights. It asserts, firstly, that the Complainant was only incorporated on February 5, 2013 and could therefore not have been a well-known entity within the adult modeling industry since 2007, as claimed. It asserts that the Complainant could therefore also not have registered the domain name <girlsdoporn.com> since 2006. The Respondent provides WhoIs records which show that this domain name was registered in mid 2007 in the name of Tech-Media Ltd, that around January 2009 the domain name transferred to a privacy service with the same name servers as Tech-Media Ltd and that between February 2009 and May 2010 the name servers changed to the current name servers, indicating a change of ownership behind the privacy service at that time. The Respondent also questions whether the Complainant actually owns the <girlsdoporn.com> domain name, since the WhoIs data shows the domain name currently to be registered under a privacy service.
The Respondent attacks the allegation of use made by the Complainant of the website at the domain name <girlsdoporn.com> since 2007, stating that the website only appears to have begun operating between April 2009 and August 2010.
The Respondent argues, in connection with the Complainant’s common law rights, that since it did not exist until 2013, it cannot claim to own a reputation in the trade mark GIRLSDOPORN.COM as of 2007 and since it did not register the domain name <girlsdoporn.com> in 2006, it could not have been operating the website there since 2007. The Respondent takes issue with the absence of any evidence from the Complainant in recognition of its trade mark as distinctive amongst consumers. It states that the trade mark GIRLSDOPORN.COM is descriptive and refers to the finding by the USPTO in April 2014 in this regard.
The Respondent attaches the USPTO’s refusal as an exhibit and highlights the finding by the USPTO which included “when considered in relation to the identified services, the proposed mark immediately described a feature of the services” and “therefore the plain meaning of girlsdoporn.com immediately tells the customer that the services are about or are related to services at a commercial website at which girls do porn.”
The Respondent also presents evidence that on June 24, 2014 the Complainant’s trade mark application was amended to the Supplemental Register following a failure by the Complainant to object to the USPTO’s finding, or to file evidence with the USPTO in support of acquired distinctiveness.
The Respondent states in connection with its legitimate rights and interests that the Complainant has not demonstrated its use of the descriptive <girlsdoporn.com> domain name as senior to the Respondent’s registration and use of the Disputed Domain Name. The Respondent states that it has been using a descriptive term for the purposes that could be expected for such a domain name. The Respondent also argues that it did not have a duty to react to the Complainant’s demand letters.
The Respondent lastly raises a question about an abuse of the process by the Complainant, without asking for a finding of reverse domain name hijacking. It points out that the Panel is obligated to consider whether a complaint was brought in bad faith under the Rules, paragraph 15(e). The Respondent takes the view that the Complainant has made false statements in its Complaint in violation of federal law and it refers to the Complainant’s “overall criminal enterprise”.
C. Supplemental Filings
In its request to file supplemental arguments the Complainant states that it was not aware of the finding by the USPTO in connection with its trade mark application, requesting an opportunity to address this as well as the claims made by the Respondent of its criminal involvement and an allegation by it that the Complainant violated federal law as a consequence of false statements that have allegedly been made. In the supplemental arguments subsequently filed by the Complainant, it deals with the USPTO trade mark issues, stating that descriptive terms may receive protection as common law trade marks once they have acquired distinctiveness. The Complainant asserts that it did not abandon its common law rights in the GIRLSDOPORN.COM trade mark and acknowledges that it must show that the public associate the said mark with its goods or services. The Complainant then goes on and provides evidence in support of a secondary meaning that it claims its trade mark GIRLSDOPORN.COM has acquired, in the form of Google search results and news articles.
The Complainant subsequently deals with what it terms misrepresented dates provided by the Respondent in connection with the domain name <girlsdoporn.com>. It states that the Complainant, through a predecessor entity, created the domain name in 2006 and launched a website attached to it in 2007. The Complainant does not provide any other information regarding the predecessor referred to. The Complainant then demonstrates that the website was used on June 2007 and was being updated between 2008 and 2009 and that in July 2009, a new website was launched.
The Complainant finally deals with the Respondent’s accusations regarding the Complainant’s character. It points out that the criminal enterprise referred to by the Respondent is connected with a local agent that the Complainant has utilized for service of process purposes, with which it has no other connection and that any adverse information regarding this agent cannot be ascribed to the Complainant.
In the Respondent’s supplemental filing, it takes issue with the Complainant for its failure to disclose any evidence regarding the predecessor in title referred to. It points out that if the Complainant relies on rights it allegedly owns by assignment, then it should produce such evidence. The Respondent also addresses the Complainant’s stated common law rights, submitting that the evidence the Complainant provided of a high Google ranking does not establish secondary meaning in a term that is descriptive and that the mere identification of the Complainant’s website at “www.girlsdoporn.com” in news articles does not constitute trade mark use. The Respondent points out that the Complainant did not challenge the finding of the USPTO that the trade mark GIRLSDOPORN.COM is descriptive and did not provide the USPTO with evidence of acquired distinctiveness of the mark, which it is now claiming in this proceeding. It states that the Complainant has unsuccessfully sought to obtain registration through USPTO proceedings of other descriptive marks such as TEENSDOPORN.COM, DOPORN.COM, BLACKGIRLSDOPORN.COM and that the Complainant engages in the practice of trying to establish a monopoly in descriptive designations.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Supplemental Filings
Supplemental Filings will only be allowed in exceptional circumstances, in line with the Policy objective of delivering prompt and effective resolution of domain name disputes (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 4.2 in this regard). These exceptional circumstances generally involve matters that arise after the initial pleadings were filed and which could not reasonably have been anticipated at that time. In this instance, the Panel considered that the outcome of the USPTO finding in connection with the Complainant’s GIRLSDOPORN.COM trade mark, which the Complainant states only became known to it during the proceeding, and the Respondent’s allegations regarding the criminal activity of and false statements made by the Complainant in connection with the Complainant’s history dating back to the registration of its domain name <girlsdoporn.com>, being the three main points submitted by the Complainant in its request to file additional arguments, required ventilation in order to ensure a just and equitable proceeding.
The Complainant, however, also advanced in its supplemental filing additional evidence regarding the extent of its common law rights in the trade mark GIRLSDOPORN.COM. This will not be admitted.
B. Identical or Confusingly Similar to a Mark in Which the Complainant has Rights
The evidence is clear that the Complainant was only incorporated in 2013, but it claims that it has acquired rights in the mark GIRLSDOPORN.COM as of 2007. In order to succeed with such a claim, it must show that it has acquired the rights in the trade mark from whoever used it for the period from 2007 to the date that the Complainant was incorporated. The Complainant has not done so. It has not provided any evidence in connection with the predecessor it refers to or any assignment or transfer of rights. It does not even name the entity which allegedly traded under the GIRLSDOPORN.COM mark since 2007.
The Panel refers with approval to two cases advanced by the Respondent in this regard, namely 3DCafé, Inc. v 3d cafe.com, NAF Claim No. 1351489 and Airpet Animal Transport Inc. v Marchex Sales, Inc / Brendhan Hight, NAF Claim No. 1470056.
This is not the only problem that the Complainant is facing in establishing rights in the trade mark GIRLSDOPORN.COM. On April 4, 2014, the USPTO held that the Complainant’s trade mark was descriptive. This Panel does not question this finding. By all accounts, the Complainant has also not challenged this finding, nor has it presented the USPTO with evidence that the mark has acquired distinctiveness. In this case, an examination of the evidence submitted by the Complainant returns with insufficient proof of a secondary meaning or acquired distinctiveness in respect of the alleged trade mark. A mere allegation of common law rights does not suffice. Where a trade mark is descriptive, as is the case in this instance, the onus on a complainant to provide compelling evidence of distinctiveness is greater. Other than mere reference to its ownership of the domain name <girlsdoporn.com> since 2007, the Complainant did not provide details of sale and advertising expenditure, or samples of its business advertisements, or media recognition, or any evidence of third party use of the trade mark in respect of its predecessor’s or its own business. The fact that the Complainant’s domain name <girlsdoporn.com> does not disclose its ownership but is protected under privacy service, also does not assist the Complainant with its claim. Reference is made to WIPO Overview 2.0, at paragraph 1.7 and the cases referred to there.
Consequently, the Panel finds that the Complainant did not discharge its onus under this first Policy requirement. It is thus not necessary to consider further the question of rights or legitimate interests or bad faith on the part of the Respondent.
C. Abuse of Process
Rule 15(e) of the Rules provide that “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent in this matter does not ask for a finding of reverse domain name hijacking to be made, instead it points out a panel’s obligation to consider whether a complaint was brought in bad faith. In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the three member panel took the view that the onus of proving that the complainant had acted in bad faith is on the respondent. This decision was quoted with approval in the subsequent three member panel decision of Ville de Paris v. Salient Properties LLC., WIPO Case No. D2009-1279. Both of these decisions outline a number of factors to be considered in connection with bad faith findings, over and above the onus that rests on a respondent, including whether a panel has been deliberately misled, whether a complainant should have known that it could not prove one of the essential elements required by the UDRP, whether a complainant knew that the respondent used the disputed domain name as part of a bona fide business and the superiority of the registration date of the disputed domain name measured against the complainant’s rights. The mere lack of success of a complaint is not in itself sufficient to constitute a bad faith finding and while the Complainant has advanced a weak case, its argument was not so completely void of merit that the Complainant must have appreciated that that was the case and made a bad faith decision to go ahead with the Complaint anyway. In any event, the only basis on which the Respondent argues for an investigation into the Complainant’s bad faith is the false statements it alleges have been made by the Complainant. These allegations were addressed by the Complainant in its Supplemental Filings sufficiently, in this Panel’s view, to avoid a finding of bad faith.
For the foregoing reasons the Complaint is denied.
Charné Le Roux
Date: August 19, 2014