WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Little Caprice Media s.r.o v. Moniker Privacy Services / Dmitriy Pyatnitca and Dmytro Pyatnytsya, Zibosoftware SRO,
Case No. D2017-2088
1. The Parties
The Complainant is Little Caprice Media s.r.o of Brno, Czech Republic, represented by Law Offices of Michael W. Fattorosi, P.C., United States of America ("United States").
The Respondent is Moniker Privacy Services of Lauderdale, Florida, United States / Dmitriy Pyatnitca and Dmytro Pyatnytsya, Zibosoftware SRO of Prague, Czech Republic, represented by Becker a Poliakoff, s.r.o., advokátní kancelář, Czech Republic.
2. The Domain Names and Registrars
The disputed domain name <littlecaprice.com> is registered with Moniker Online Services, LLC and the disputed domain name <littlecaprice.net> is registered with eNom, Inc. (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 25, 2017. On October 26, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 26 and October 27, 2017, the Registrars transmitted by emails to the Center their verification responses confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2017. The Response was filed with the Center on November 28, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 9, 2017. 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.
On December 14, 2017, the Panel issued Panel Order No. 1. On December 18, 2017, the Complainant submitted its response to Panel Order No. 1. On December 20, 2017, the Respondent submitted its response to Panel Order No. 1.
4. Factual Background
"Little Caprice" is the stage name of one Marketa Schlögl since 2008. Schlögl is her married name; her unmarried name is Marketa Stroblova. Ms. Stroblova has been an "adult" entertainer for the last nine years. She has apparently received nominations for awards by Adult Entertainment News which, according to the Complaint, are the "Oscars" of adult entertainment. Also, according to the Complaint, Penthouse magazine has declared her to be the fifth most well-known "pornstar".
Ms. Stroblova has an European Union Trade Mark, No. 015166127, for LITTLE CAPRICE for goods and services in International Classes 10, 16 and 41. Ms Stroblova applied to register this trademark on February 29, 2016 and it was formally registered on January 21, 2017. She also has a pending application in the United States. Ms. Stroblova filed the EUTM on February 29, 2016. It was registered on January 21, 2017.
On September 1, 2017, Ms. Stroblova assigned her rights in the trademark to the Complainant.
According to the Registrar, both disputed domain names were created on July 11, 2008. At least shortly before the Complaint was filed, both disputed domain names resolved to a website which features graphic images, biographical information and videos of "Little Caprice". It does not appear to be in dispute that the images and videos are genuine images of Ms Stroblova, taken with her consent.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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 first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven the registered trademark referred to in Section 4 above. The assignment of the trademark from Ms. Stroblova to the Complainant is signed on behalf of the Complainant by Ms. Stroblova's husband, Markus Schlögl.
The Respondent says that, under Czech law, the only person who can act for the company is Ms Stroblova, not her husband. The Panel notes, however, that Ms Stroblova has executed the assignment as assignor and, in any event, the Complainant is the assignee, not the assignor. In these circumstances, it is plain that the Complainant is acting with Ms Stroblova's permission or understanding. If there is a formal defect in the assignment under Czech law, therefore, consistently with the approach taken under the Policy to licensees and affiliates of the formal trademark owners (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.4), the Panel finds that the Complainant has sufficient interest in the trademark to bring this proceeding.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the Top-Level Domain, both disputed domain names consist solely of the Complainant's trademark. The Panel finds therefore that both disputed domain names are identical to the Complainant's trademark.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations 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; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent is infringing its (Ms. Stroblova's) trademark. That is, it has not authorised the Respondent to use the Complainant's trademark and the Respondent is in no way connected or associated with the Complainant. The disputed domain names are also obviously not derived from the Respondent's name.
The first consideration is that the disputed domain names were both registered in 2008, long before Ms Stroblova registered her EUTM. However, it appears that she has been using the stage name since 2008. It appears that the Respondent registered the disputed domain names to take advantage of her association with the name "Little Caprice".
The Respondent contends, however, it has a licence to use the name in the disputed domain names.
Apparently, Ms Stroblova's stage name was coined by Alexandr Semenenko, a photographer. In 2008 and 2009, Ms Stroblova granted Mr Semenenko several licences headed "Model Release" which included the following terms:
"the irrevocable and unrestricted right and permission to copyright, in his own name or otherwise, and use, re-use and/or publish photographic pictures of [her] … in conjunction with [her] own name or a fictitious name …. I also consent to the use of any printed matter or text in conjunction therewith … or to which it may apply or be applied …"
For good measure, the licences also included what purport to be waivers of Ms Stroblova's moral rights.
The first of the "Model Releases" included in evidence is dated June 14, 2008; that is, almost one month before the disputed domain names were registered.
In November 2011, Mr Semenenko's company granted the Respondent a licence to use 57 hardcore "sets" and 40 solo "sets" of Ms Stroblova "(aka Little Caprice)". The licence is for 100 years. It also gives the Respondent the right to use the resulting product for web-publication, DVD and TV and on an unlimited number of domains. According to clause 2 of the licence, it contains the entire agreement of the parties and there are no other promises or conditions in any other agreement.
It does not appear from the licence that it confers on the Respondent rights to register "Little Caprice" as a domain name.
In addition, as the Complainant alleges, the website to which both disputed domain names resolve appears to present as the official or authorised website of Ms Stroblova. Promotional text on the website, for example, says "Since I launched my website …." A visitor to the website would readily form the view that it was Ms Stroblova's own website. In these circumstances, the website would at least fail the requirement under the "Oki Data" test to accurately and prominently disclose the nature of the Respondent's relationship, if any, with the Complainant and Ms Stroblova: WIPO Overview 3.0, section 2.8.
The Respondent points out that the Complaint refers only to the first disputed domain name, <littlecaprice.com>. However, the second disputed domain name, <littlecaprice.net>, resolves to the same or an identical website as the first disputed domain name. It is obvious, therefore, that the arguments against the first disputed domain name are equally applicable to the second disputed domain name.
In these circumstances, while it does appear on the record in this proceeding that the Respondent does have rights to use Ms. Stroblova's images, it does not appear to have rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
While the Complainant acquired her registered trademark only in 2016, she has been using her stage name LITTLE CAPRICE since 2008; that is, before the disputed domain names were registered.
The Complainant relies on the fact that the disputed domain names use Ms. Stroblova's stage name and images of her to present a website as if it were Ms. Stroblova's personal website to infer that the disputed domain names were registered to take advantage of her stage name.
The Respondent does not dispute this but, as discussed above, claims it has a licence to do so. The licence produced by the Respondent is dated some three years after the Respondent registered the disputed domain names. And, as discussed above, the licence in any event does not appear to confer any rights to register Ms. Stroblova's stage name as domain names. The rights the Respondent relies on, therefore, do not appear to justify its position. Accordingly, the Panel finds that the disputed domain names were registered in bad faith.
As the Panel has found in section 5B above that the manner of use of the disputed domain names, for a website presenting itself as the personal or official website of Ms. Stroblova, does not qualify as legitimate use under the Policy, it follows that the Respondent's use is not use in good faith under the Policy.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <littlecaprice.com> and <littlecaprice.net> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 26, 2017