WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brentwood Holding Group Inc. v. Raphael Nikolai Necesito
Case No. D2018-0033
1. The Parties
The Complainant is Brentwood Holding Group Inc. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Landver Law Corporation, United States of America ("United States").
The Respondent is Raphael Nikolai Necesito of Ormoc City, Philippines, self-represented.
2. The Domain Name and Registrar
The disputed domain name <nudelive.net> 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 January 9, 2018. On January 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2018, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 16, 2018.
The Center verified that the Complaint together with the amendment to 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 January 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2018. On January 21, 2018, the Respondent requested an automatic four-day extension of the deadline to file the Response. The Center granted the requested extension and confirmed that the new deadline for the Response was February 10, 2018. The Response was filed with the Center on February 2, 2018.
On February 2, 2018, following service of the Response, the Complainant inquired of the Center whether it had an opportunity to reply. The Center replied later the same day, pointing out that the Rules made no express provision for filings other than the Complaint and the Response but, paragraphs 10 and 12 conferred on the Panel sole discretion whether to admit further statements filed by either party. The Center's reply also stated that any supplemental filing received by the Center would be forwarded to the Panel for consideration. There was a further exchange about a potential supplemental filing by the Complainant in which the Center confirmed there was no formal due date for any supplemental filing, but any supplemental filing received by the Center would be forwarded to the Panel for decision.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 14, 2018. The Panel finds 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 February 15, 2018, the Complainant filed a purported supplemental filing consisting of a filing receipt for a request to amend or correct its Trademark registration certificate and a screenshot from a website at <nudelive.com> as at December 6, 1998.
4. Factual Background
The Complainant operates a website from the domain name <nudelive.com>, from which a browser may stream free "sex cams" and live pornography. The Complainant has a trade mark for "Nudelive" registered in the United States, registration number 5,342,880. The trade mark is registered in international classes 38 and 42. The trademark application was filed on November 2, 2016 and registered on November 21, 2017.
The Respondent registered the disputed domain name on March 20, 2012.
Since around that date, the disputed domain name has also resolved to a website from which browsers can stream free "sex cams" and live pornography.
The websites of both the Complainant and the Respondent are "powered by" Chaturbate. Chaturbate is described on Wikipedia as "an adult website providing live WebCam performances by amateur camgirls, camboys and couples typically featuring nudity and sexual activity".
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that 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 it deems applicable.
A. Supplemental Filing
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant's Supplemental Filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance, materiality and weight of the evidence.
Typically, an unsolicited supplemental filing is permitted where it is necessary to correct an error or to address some matter raised in the Response that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), Section 4.6.
The Panel cannot really consider that the proposed supplemental filing is in response to matters which could not reasonably have been anticipated. Arguably, it could be said that the receipt for the application to amend or correct the certificate of registration is directed to correcting a mistake. On balance and keeping in mind that the scheme of the Policy is for the Complainant to put forward all the material reasonably required to establish its claim in the Complaint, the Panel is prepared to admit the proposed supplemental filing in the interests of ensuring the parties have been afforded a fair opportunity to put forth their respective cases.
B. 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 ownership of the registered trademark referred to in Section 4 above.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("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 generic Top-Level Domain, ".net", the disputed domain name is identical to the Complainant's registered trademark. The Respondent does not dispute this. Accordingly, the Complainant has established the first requirement under the Policy.
C. 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 if 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 the burden of production 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 its trademark has been declared incontestable and is validly subsisting. It says further that the Respondent is diverting traffic to the website at the disputed domain name by targeting the name "nude live". The Respondent denies these allegations and says he registered the disputed domain name without knowledge of the Complainant and its trademark and before the Complainant had any rights.
The disputed domain name was registered over two years before the Complainant applied to register its trademark. The Complainant contends, however, that it began using its trademark in commerce in 1998 and therefore has accrued common law rights in the trademark as an unregistered trademark. To support its claim it has been using its trademark since 1998, the Complainant has provided a WhoIs report which shows that its domain name, <nudelive.com>, was created on April 20, 1998.
By itself, this evidence falls well short of what is required to demonstrate common law reputation and remedies, particularly bearing in mind that the trademark appears to be essentially descriptive of the service being provided from the Complainant's website. For example, section 1.3 of WIPO Overview 3.0 states (in part):
"Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."
and particularly relevantly:
"Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning."
Furthermore, the Respondent points to a number of additional matters.
First, the details entered on the United States Trademark Register state that the trademark was first used in commerce in 2015.
Second, a WhoIs search at Domainhistory.net shows that in 2014 the Complainant's domain name, <nudelive.com>, was registered in the name of Worldwide Media Inc, based in Florida in the United States.
Third, a search at Nambio.com shows that the Complainant's domain name was last sold at auction for USD 6,000 on August 3, 2015. That suggests at least that the Complainant and any related entities did not own rights to the domain name <nudelive.com> at that time.
Fourthly, searches of the Wayback Machine at "www.archive.org/web" show that the domain name <nudelive.com> was essentially inactive between about 2004 and 2015. While at times, including at least 1999 and 2003, it did resolve to a website which appears to have been directed to live pornography, in 2014 the Complainant's domain name resolved to a website showing a photograph of what looks like the Florence, Italy skyline and offering the domain name for sale.
Finally, the Respondent has provided evidence showing a substantial drop in traffic to the Respondent's website at the disputed domain name after the Complainant's website appears to have become active in 2015.
To rebut these matters, the Complainant has submitted its Supplemental Filing. The screenshot from December 6, 1998 does not advance matters as it had effectively been disclosed in the annexes to the Response.
The filing receipt for the Complainant's application to correct the date of first use of its trademark does seek to amend the registration certificate to claim first use in commerce from 1998 on the basis of a written assignment from the previous owner whose rights are claimed to date back to 1998. While the Panel can accept that a party is unlikely to make deliberately false or misleading statements to the United States Patents and Trademarks Office ("USPTO"), there are a number of difficulties with this.
First, the Complainant has provided no explanation for how what it now says is the wrong date was provided to the USPTO when registering the trademark in the first place.
Second, the filing receipt does refer to an assignment of the previous owner's intellectual property rights including common law rights. The assignment itself has not been submitted in this administrative proceeding.
Third, taking the claim of an assignment at face value, there is no evidence that the assignor was the person who registered the domain name and was using it in 1998. There is also no evidence of when and how the assignor came to hold the domain name and so was in a position to assign to the Complainant rights dating back to 1998 or some point prior to the date the Respondent registered the disputed domain name.
Fourth, accepting that the domain name (and so the trademark) was in use in 1998, there is no evidence about the nature and scale of use between 1998 and 2015 (around when the Complainant started using the domain name <nudelive.com>). The fact that the domain name was in use in December 1998 falls well short of what is required to establish that "an essentially descriptive term such as Nudelive" had acquired secondary meaning through use even in 1998. Further, the materials advanced by the Respondent support a finding that there was very little, if any, use of the domain name after at least 2004. That finding is reinforced by the evidence that the domain name resolved to a site unconnected with any commercial use and merely offering the domain name for sale for some years before the Complainant acquired it. While the Panel does not place much weight on it, the Panel does note that the price apparently paid by the Complainant to obtain the domain name and the associated intellectual property rights, USD 6,000, does not on its face suggest a transfer of a very substantial goodwill or reputation.
Given the Complainant's failure to provide evidence supporting its chain of title back to 1998 and to demonstrate that the trademark had been used sufficiently extensively in the period between 1998 (or at least 2004) and 2012 to have generated secondary meaning in the term "Nudelive", the Panel cannot accept the Complainant's claim to common law rights dating back to 1998 or at least some point prior to the Respondent's registration of the disputed domain name.
In the circumstances outlined above, therefore, the Panel considers that the Respondent has demonstrated he was operating his business under the disputed domain name before the Complainant acquired its rights in the trademark. The Respondent would appear to have brought himself within the circumstances outlined in paragraph 4(c)(i) of the Policy. As a result, the Panel finds that the Complainant has not established the second requirement under the Policy.
D. Registered and Used in Bad Faith
As the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name, the Complaint must fail. Therefore, no purpose would be served by considering this requirement.
E. Reverse Domain Name Hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
"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."
Paragraph 1 of the Rules defines "Reverse Domain Name Hijacking" to be "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
That the Complaint has failed is not sufficient in itself to warrant a finding of reverse domain name hijacking. Two related factors in the present case warrant such a finding.
First, the Complainant sought to present itself as having used the sign "Nudelive" continuously since 1998. As noted above, the evidence it submitted to support that claim was wholly inadequate. Moreover, the Complainant did not disclose that it acquired the domain name <nudelive.com> only in 2015, some 17 years after it claimed to have commenced continuous use of the trademark. Omission of that significant fact had the potential to mislead the Panel. It was central to the Complainant's attempt to overcome the Respondent's prior registration and use of the disputed domain name. It should have been disclosed.
The Complainant's belated attempt to redress the Respondent's claim to prior use through the Complainant's Supplemental Filing does not ameliorate the situation. First, the issue has come to light only because the Respondent was sufficiently minded and resourced to dispute the Complainant's claims. The Complainant should have revealed and addressed these matters in the Complaint. Second, the Complainant has not provided a full and frank explanation of how what is now said to be an error in the trademark registration certificate came about. Third, taking them cumulatively, the materials submitted in the Complaint and the Supplemental Filing are manifestly inadequate to establish the Complainant's claims to prior rights dating back to 1998 or some point prior to the Respondent's registration of the disputed domain name.
Accordingly, the Panel finds that, on the record in this administrative proceeding, the Complaint was brought in bad faith and constituted an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: February 28, 2018