WIPO Arbitation and Mediation Center

ADMINISTRATIVE PANEL DECISION

Street Ink Corporation v. Data Protected Data Protected / Larry Currey, Currey

Case No. D2018-2298

1. The Parties

Complainant is Street Ink Corporation of Longwood, Florida, United States of America (“United States”), represented by Walters Law Group, United States.

Respondent is Data Protected Data Protected of Toronto, Canada / Larry Currey, Currey of Waltham, Massachusetts, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <kreweofswingtown.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 11, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 12, 2018.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2018. The Response was filed with the Center on November 5, 2018.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 22, 2018. 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 owns and operates the website linked the domain name <swingtowns.com> and has used it for many years in connection with entertainment services related to Internet based swinging lifestyle, social networking and dating services. Complainant registered the <swingtowns.com> domain name on December 21, 2000. Its website went live on or about December 21, 2000. When the website launched, it provided services similar to those provided today, allowing its users to access photographic, audio, and video content featuring the swinging lifestyle, as well as social networking and dating services.

In providing services Complainant has made extensive use of the SWINGTOWNS trademark. Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 3397670 for its SWINGTOWNS mark in International Class 41 (Entertainment services, namely, providing a website featuring, photographic, audio, video and prose presentations featuring the swinging lifestyle) and Class 45 (Internet based social networking, introduction, and dating services). Complainant applied for its SWINGTOWNS mark on June 22, 2007, with a date of first use in commerce of December 21, 2000. Complainant’s mark was registered on March 18, 2008. Complainant states that its common law rights have accrued from December 2000.

Respondent registered the Domain Name on February 21, 2006. The Domain Name resolves to a website that states in its header “Krewe of Swingtown” and “Not Your Ordinary Swingers Party!”. The home page of the site states, among other things, that:

“The Krewe Of Swingtown was founded primarily as the only ‘Lifestyle’ oriented Mardi Gras Krewe in the country, but over the few couple years we have become one of Texas’s most popular social groups.”

The “look and feel” of Respondent’s site is not similar to that of Complainant’s site. Respondent’s site provides content related to the swinging lifestyle, groups and parties focused in the Texas area. It also provides links to dating sites for swingers.

5. Parties’ Contentions

A. Complainant

(i) Identical or Confusingly Similar

Even disregarding Complainant’s registered trademark rights in its SWINGTOWNS mark, Complainant contends that it has developed extensive common law rights throughout the world in its mark, which commenced before Respondent registered the Domain Name on February 21, 2006. Complainant states that common law trademark rights are sufficient to satisfy the degree of trademark or service mark ownership required under paragraph 4(a)(i) of the Policy. Complainant’s common law trademark rights are superior to that of the Domain Name by over five years. Complainant has been using the SWINGTOWNS mark extensively, continuously, and deliberately to designate its online dating website services since the year 2000. Complainant has further devoted substantial resources and efforts to publicizing the SWINGTOWNS mark worldwide since its launch in 2000, through multiple online advertising channels. Complainant is aware of no other use of the SWINGTOWNS mark in the swinging, online dating, or social networking industries, and any such use could only be for the reason of luring unsuspecting consumers into believing there is a connection with Complainant’s mark.

Complainant states the SWINGTOWNS mark was a recognized, distinctive, and well-known mark before Respondent registered the Domain Name. Accordingly, Complainant’s common law trademark rights are superior to any rights of Respondent. The superior rights of the SWINGTOWNS mark have been recognized by a successful, independent operator in the online dating field, who has widespread knowledge of the industry, and confirms in a witness statement that SWINGTOWNS was a recognized and well-known brand from its launch in year 2000. This independent witness testifies that he is aware of no other use of the SWINGTOWNS brand in the online dating or swinger field, other than in reference to Complainant’s website at <swingtowns.com>. He further confirms that any other use of the SWINGTOWNS designation would cause considerable confusion in the marketplace.

Complainant states that the SWINGTOWNS mark has achieved strong secondary meaning in the relevant marketplace, and especially within the swinging lifestyle, dating, and social networking communities. Acquired distinctiveness of this mark is further apparent from the evidence submitted by Complainant, which consists of a representative sampling of use of SWINGTOWNS prior to 2006 in various advertisements as well as historical printouts of Complainant’s website. SWINGTOWNS was frequently mentioned in dating and swinging advertisements and websites on a regular basis prior to 2006, and is recognizable to anyone in the relevant marketplace. In addition, Complainant spent considerable resources on advertising to promote the SWINGTOWNS mark prior to the registration of the Domain Name

Complainant has deliberately, consistently, and extensively used, promoted, and advertised the SWINGTOWNS mark and the <swingtowns.com> domain name for almost 18 years. Complainant contends it has established protectable rights in the SWINGTOWNS mark both prior to and after registration of the Domain Name. By virtue of Complainant’s efforts, its SWINGTOWNS mark and domain name have become well-recognized by consumers as designating Complainant as the source of the services so marked. Accordingly, the SWINGTOWNS mark and domain name are extremely valuable to Complainant.

Complainant contends that Respondent’s Domain Name is identical or confusingly similar to Complainant’s SWINGTOWNS mark. The Domain Name is legally identical to Complainant’s SWINGTOWNS mark, only adding the words “krewe” and “of” before SWINGTOWN, removing the letter “s”, and using the legacy

Top-Level Domain (“TLD”) “.com”. Adding the words “krewe” and “of” and removing the letter “s” at the end of Complainant’s registered SWINGTOWNS mark does nothing to eliminate the confusing similarity. Inclusion of the terms “krewe of” with Complainant’s mark suggests an association or affiliation with SWINGTOWNS. Further, the terms “krewe” and “of” are merely generic or descriptive terms, which do not distinguish Respondent’s Domain Name. Removing the letter “s” to create a singular form of Complainant’s mark likewise fails to distinguish the Domain Name. Moreover, it has been well-established in countless UDRP decisions that the TLD extension does not sufficiently distinguish a domain name from a corresponding mark. Notably, Complainant also uses “.com” in its domain name. Therefore, Respondent’s use of the “.com” TLD adds to the likelihood of confusion created by the Domain Name. The fact that Respondent is operating a website that directs Internet users to a website focused on the same swinging lifestyle as Complainant’s site further exacerbates the confusion.

(ii) Rights or Legitimate Interests

Complainant states that registration and use of a domain name in bad faith cannot establish rights or legitimate interests. The Domain Name contains the entirety of Complainant’s SWINGTOWNS mark, with inconsequential additions and a singular variation. Respondent is thus incapable of using the Domain Name for a legitimate purpose. Moreover, the Domain Name is being used for a commercial purpose. Respondent undoubtedly receives a commercial benefit from using Complainant’s registered mark for promotion of its online entertainment and social networking services. This does not constitute a legitimate interest.

Complainant states that Respondent registered and used the Domain Name not because it refers to or is associated with Respondent, but because the Domain Name is identical or confusingly similar to Complainant’s SWINGTOWNS mark and <swingtowns.com> domain name used by Complainant in association with Complainant’s provision of online services on the Internet. Respondent is benefitting financially from the Domain Name, and chose the <kreweofswingtown.com> domain name to profit from the goodwill of Complainant’s SWINGTOWNS mark.

When Complainant became aware of the Domain Name, it sent a cease-and-desist letter to Respondent on July 3, 2018, via priority mail, asking Respondent to stop using the Domain Name and transfer it to Complainant. Respondent did not respond, so Complainant sent another cease-and-desist letter to Respondent on July 17, 2018, via email, once again asking Respondent to stop using the Domain Name and transfer it to Complainant. Again, Respondent did not respond, thus necessitating the filing of the Complaint.

Respondent’s failure to reply to Complainant’s cease-and-desist letters provides additional evidence that Respondent lacks rights or legitimate interests in the Domain Name.

(iii) Registered and Used in Bad Faith

Complainant contends that, regardless of whether the Panel applies any of the Policy’s non-exclusive examples of bad faith or simply applies common sense, Respondent’s conduct amounts to bad faith. The Domain Name was registered in February 2006. By that time, Complainant had been deliberately, consistently, and extensively using its fanciful SWINGTOWNS mark since December 2000, more than five years before Respondent registered the Domain Name. Respondent registered the Domain Name because it knew of Complainant and the goodwill associated with its SWINGTOWNS mark and hoped to profit from it.

Complainant asserts that Respondent hoped to attract Internet users to its website by creating a likelihood of confusion between Complainant’s services and the similar infringing services offered by Respondent. Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating confusion based on minor modifications of Complainant’s SWINGTOWNS mark (i.e., the addition of two words). Because Complainant has used its mark and <swingtowns.com> domain name in connection with the swinging lifestyle, as well as social networking and dating services for several years, and the Domain Name’s website offers swinging lifestyle, as well as social networking and dating services, it is inconceivable that Respondent was unaware of Complainant’s <swingtowns.com> domain name when Respondent registered the Domain Name, particularly since Respondent is using the Domain Name to offer services that are nearly identical to those offered at Complainant’s website. The sworn testimony supporting the Complaint confirms the extent of Complainant’s use of the SWINGTOWNS mark, and its widespread recognition in the relevant marketplace prior to Respondent’s registration of the Domain Name. It defies logic that Respondent was not well-aware of Complainant’s established mark when it chose to register the confusingly similar Domain Name.

Complainant contends that even if Respondent argues that it did not have actual knowledge of Complainant’s mark at the time of its registration, constructive knowledge of a mark is properly applied in UDRP proceedings. Respondent’s diversionary use of Complainant’s SWINGTOWNS mark to direct Internet users to its own website that offers overlapping services, presumably for commercial gain, also amounts to bad faith registration (and use) of the Domain Name under paragraph 4(b)(iv) of the Policy.

Moreover, Complainant states that its SWINGTOWNS brand, as used with the relevant services, is unique and arbitrary such that it is unlikely that Respondent devised the term <kreweofswingtown.com> on its own. This factor alone weighs in favor of finding bad faith against Respondent. Given the widespread recognition enjoyed by Complainant in the adult-themed social media industry, it is virtually certain that Respondent chose to register the Domain Name with the bad faith intent to profit from Complainant’s established reputation and trademark rights.

Complainant emphasizes that, as earlier Panels have stated, the overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Here, Respondent is attempting to exploit Complainant’s goodwill and brand name recognition for its own gain. Respondent desired to disrupt Complainant’s business and to divert Internet traffic away from Complainant’s site when Internet users search for “swingtowns.”

Respondent’s registration and use of the Domain Name was designed to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of Respondent’s infringing website. This is particularly true since Respondent’s website offers services similar to Complainant’s, and the Domain Name suggests an affiliation with Complainant. When Internet users arrive at Respondent’s competing site, they may believe that they have reached Complainant’s SWINGTOWNS site or simply remain on Respondent’s site since it offers similar services. Respondent is using the Domain Name to poach Internet users from Complainant and to profit from the goodwill of Complainant’s marks and Complainant’s website.

B. Respondent

Respondent responds to the statements and allegations in the Complaint and requests the Panel to deny the remedies requested by Complainant.

While Complainant suggests that Respondent is purposely using the Domain Name to direct and confuse users from Complainant’s site, Respondent states that nothing could be farther from the truth. Respondent states that it did not have any knowledge of Complainant’s website at <swingtowns.com> until around 2012. Respondent further explains that if an Internet search is performed on any major platform for either of the words “swingtown” or “swingtowns” (plural), Respondent’s site at the Domain Name <kreweofswingtown.com> does not appear until at least page 12. Respondent also claims that its site is distinguishable, as it is <kreweofswingtown.com>, not just <swingtowns.com>.

Respondent describes that Complainant’s site is a dating website, while Respondent’s site is an informational events organization site used to inform people of Respondent’s events local to Texas. Respondent states that its name was thought up one night after one of Respondent’s first parties. The “swingtown” part in Respondent’s name was in reference to Houston, Texas, which at that time was thought of as the swinger's capital of Texas. Respondent’s website was registered on February 21, 2006, but Respondent states that it has been using the name “Krewe of Swingtown” for its parties since 2004.

Respondent asserts that if it were a competing dating website, none of the dating websites where Respondent lists its events would allow Respondent to do so. Thus, very simply, Respondent is in no form or fashion a competing business to Complainant. Respondent states that it harbors no ill will to Complainant and wishes Complainant well in its business.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainants have established rights in its SWINGTOWNS mark, based on its USPTO trademark registration and use and promotion of the mark since December 2000. Moreover, the Panel finds that Complainant has acquired common law rights in its SWINGTOWNS mark through the promotion, duration, and use of its mark in the relevant niche market. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3 (“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.”).

Further, the Panel determines that the Domain Name is confusingly similar to Complainant’s SWINGTOWNS mark. The Domain Name incorporates the mark in its entirety, while adding the phrase “krewe of” before the term “swingtown,” and removing the letter “s” to make “swingtowns” singular. As Complainant has suggested, within the relevant niche market (e.g., those who are interested in the swinging lifestyle), inclusion of the phrase “krewe of” with Complainant’s SWINGTOWNS mark (while omitting the “s”) may suggest an association or affiliation with Complainant; these changes are not sufficient to distinguish the Domain Name from Complainant’s SWINGTOWNS mark. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); see also SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792 (“Although the domain name <myhostingfree.com> is not identical to Complainant’s mark, it is confusingly similar because it incorporates, in its entirety, Complainant’s mark with the mere addition of the common word ‘free.’”); Ebay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (adding the word “gay” to EBAY does not eliminate confusion); Boscolo Group S.p.A. v. domains Ventures, WIPO Case No. D2006-0231 (omission of “s” to create singular form of complainant’s mark does not cure confusing similarity).

Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Respondent has successfully rebutted Complainant’s prima facie case. Complainant has contended that Respondent (i) registered and used the Domain Name because it is identical or confusingly similar to Complainant’s mark, and (ii) hoped to attract Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s services and the services offered by Respondent. However, the Panel finds that Respondent has been known by the Domain Name since it was first registered on February 21, 2006. Respondent denied that it had any knowledge of Complainant when Respondent registered the Domain Name at that time, and only became aware of Complainant later in 2012. In view of the circumstances of this case, the Panel determines, on the balance of the probabilities, that there is no sufficient ground for disbelieving Respondent’s assertion in this regard. Respondent plausibly explained how it developed the name “Krewe of Swingtown” used for its parties since 2004, stating that the “swingtown” part of its chosen name was a reference to Houston, Texas, which at the time was thought of as the swinger's capital of Texas. Moreover, Complainant did not have any registered trademarks rights in 2004 or February 2006 when the Domain Name was registered. Even if, by February 2006, Complainant had begun to accrue common law rights in its SWINGTOWNS mark, this is not a case where constructive knowledge of Complainant’s mark should necessarily be attributed to Respondent. For example, had Respondent conducted a trademark search in February 2006, it would not have identified Complainant’s mark, as Complainant applied for its SWINGTOWNS mark on June 22, 2007. See WIPO Overview 3.0, section 3.2.2 (“In limited circumstances – notably where the parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice”) (italics added).

The Panel also finds that, prior to notice of this dispute, Respondent has been using the Domain Name since 2006 in connection with a bona fide (non-pretextual) offering of services, and not primarily to disrupt the business of a competitor. Respondent’s website is an informational site used to inform people of Respondent’s parties and events in Texas. While Respondent’s site provides links to dating services, it does not itself provide such services. Moreover, Complainant waited until 2018 to bring this Complaint against Respondent, more than 12 years after Respondent established its website. As stated in WIPO Overview 3.0, section 4.17, “[p]anels have…noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits […]”. See also Uline, Inc. v. Bhavna Babaria, WIPO Case No. D2015-0462 (“the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in a disputed domain name, or the respondent’s alleged bad faith in registering and using the domain name”).

Here, the Panel determines, in view of the particular circumstances of this case, that Respondent’s use of the Domain Name for a period of 12 years in connection with a genuine website providing people interested in the swingers’ lifestyle with information about Respondent’s parties and events in Texas has given rise to a legitimate interest in the Domain Name. Complainant has not provided evidence of any serious damage to itself resulting from Respondent’s use of the Domain Name, nor has Respondent attempted to sell the Domain Name during the 12 years it has been used. See Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455 (“the Panel determines… that Respondent’s use of the Domain Name (for a period of eight years (and 6 years before any contact from Complainant)) in connection with a genuine fan site, providing news and commentary about the Packers, has given rise to a legitimate interest in the Domain Name. Respondent’s website is well-established and the evidence indicates that it has a large following. Complainant has not provided evidence of any serious damage to itself or the Packers resulting from Respondent’s use of the Domain Name. Prior to this dispute, Respondent did not attempt to sell the Domain Name during the eight years he used it, and his website does not compete with or seek to take business away from Complainant.”)

The Panel recalls that the overall burden of proof for this second element of the Policy remains with Complainant. In view of all of the above circumstances, the Panel concludes that Complainant has not demonstrated, on the balance of the probabilities, that Respondent lacks any right or legitimate interest in respect of the Domain Name.

Accordingly, Complainant has failed to satisfy the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

As noted above, to succeed on its claim Complainant must demonstrate that each of the three elements in paragraph 4(a) of the Policy has been satisfied. Given the Panel’s findings that Complainant has failed to demonstrate Respondent lacks any right or legitimate interest in respect of the Domain Name, the Panel considers that it is not strictly necessary to consider the issue of registration and use in bad faith. Nonetheless, the Panel determines, on the balance of the probabilities, that Respondent did not seem to target Complainant’s SWINGTOWNS mark when registering the Domain Name, and cannot be deemed to have had constructive notice of the mark.

The Panel finally notes that the UDRP is intended to provide an international and uniform policy across all top-level domains for resolving disputes between trademarks owners and domain name registrants, and this point is further supported because the Policy, on the one hand, and local laws (and related procedures) as to cybersquatting and trademark infringement, on the other hand, are different in several important respects, such that a set of facts might conclusively establish trademark infringement under domestic law, yet not be considered bad faith registration and use under the Policy, and vice versa. See Green Bay Packers, Inc. v. Moniker Privacy Services / Montgomery McMahon, WIPO Case No. D2016-1455. With this in mind, the Panel observes that the parties remain free to pursue their claims, including as to possible trademark infringement or dilution / tarnishment, in the courts.

7. Decision

For the foregoing reasons, the Complaint is denied.

Christopher S. Gibson
Sole Panelist
Date: December 13, 2018