WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IMVU, Inc. v. Linda Lysippe

Case No. D2019-1833

1. The Parties

The Complainant is IMVU, Inc., United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Linda Lysippe, United States, self-represented.

2. The Domain Names and Registrars

The disputed domain names <fuckimvu.com> and <imvufuck.com> are registered with CloudFlare, Inc. The disputed domain name <imvusex.com> is registered with Google LLC. The disputed domain names are referred to in this Decision as the “Domain Names”, and the registrars are referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019 regarding the Domain Names <fuckimvu.com>, <imvufuck.com>, and <imvusex.com>, and also regarding the domain names <imvu.info> and <imvustaff.com>, which were registered with the registrar GoDaddy.com, LLC. On July 31, 2019, the Center transmitted by email to the Registrars and to GoDaddy.com, LLC a request for registrar verification in connection with all five disputed domain names. On August 1, 2019, the Registrar Google LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name <imvusex.com>. On August 1, 2019, GoDaddy.com, LLC informed the Center that <imvu.info> and <imvustaff.com> were repossessed by GoDaddy.com, LLC from their former holder Mr. Miller, and that they were willing to transfer those domain names to the Complainant. On August 1, 2019, the Complainant communicated to the Center concerning those domain names. On August 5, 2019, the Registrar CloudFlare, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Names <fuckimvu.com> and <imvufuck.com>.

On August 7, the Complainant requested the suspension of the proceedings to explore settlement. The Center granted this request, and the proceedings were suspended until September 1, 2019. On August 8, 2019 and August 11, 2019, the Respondent sent informal email communications to the Center requesting that it “cancel” the proceedings because they are based on a “false complaint”. On August 13, 2019, the Complainant sent the completed settlement form signed by the Complainant and GoDaddy.com, LLC regarding the domain names <imvu.info> and <imvustaff.com>. On August 13, 2019 and August 15, 2019, the Center received informal email communications from the Respondent (along the same lines as her earlier communications) and from a third party, Mr. Linn, claiming to be the rightful owner of the domain names <imvu.info> and <imvustaff.com>. The Center replied that those domain names were already repossessed by the registrar, and on August 16, 2019, the Center issued the Notice of Settlement regarding the domain names <imvu.info> and <imvustaff.com>. From August 16, 2019 to August 28, 2019, the Center received several additional email communications from the Respondent and Mr. Linn objecting to the conduct of the Complainant, its representative, and the Center, and demanding dismissal of the Complaint.

The Complainant requested the reinstitution of the proceedings with respect to the Domain Names and filed an amended Complaint on August 23, 2019. The Center notified the dismissal regarding the domain names <imvu.info> and <imvustaff.com> and the reinstitution of the proceedings regarding the Domain Names on August 26, 2019. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the second amended Complaint on August 28, 2019.

The Center verified that the Complaint together with the amended Complaints 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 August 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2019. The Respondent sent email communications to the Center on August 29, 2019, August 30, 2019, September 6, 2019, September 17, 2019, and September 18, 2019. The Response was filed with the Center on September 16, 2019.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 8, 2019. 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 October 8, 2019, the Complainant’s representative sent the Center an email announcing that the Complainant had decided to “withdraw the case”. The Panel issued Procedural Order No. 1 on October 9, 2019, asking the Respondent to confirm its agreement or objection to the withdrawal request by October 11, 2019. The Respondent replied by email to the Center on October 9, 2019 that “If they wanna withdraw the case they don’t have the right to complain me again”. This response goes beyond accepting the simple dismissal stated in the Complainant’s message and suggests a settlement of future claims, but there is no evidence that the Parties have reached such an agreement. In any event, the Complainant’s representative sent another, contradictory email to the Center on October 9, 2019, asking the Center to “disregard” the request to “suspend” the proceeding, which was “made in error”. The Respondent sent the Center an email on October 10, 2019 expressing the view that the Complainant was “trying to get an extra time” and calling attention to matters raised earlier in the Response. On October 14, 2019, the Complainant indicated in an email to the Center that the Complainant’s security team had confirmed that the email requesting withdrawal of the Complainant was “spoofed” and came from an unknown party. The Respondent sent additional emails to the Center on October 14, 2019 questioning the Center’s neutrality, which the Center duly forwarded to the Panel as in the case of prior communications.

As there was clearly no “meeting of the minds” with respect to a settlement, and the Complainant evidently did not intend to abandon the Complaint, the Panel issued Procedural Order No. 2 on October 14, 2019 cancelling Procedural Order No. 1 and reinstating the proceeding.

4. Factual Background

The Complainant is a business corporation organized under the law of the state of Delaware, United States, and headquartered in Redwood City, California, United States. The Complainant describes itself as an “online metaverse and website”, operating a website at “www.imvu.com” since 2004. The website is linked to several mobile apps and social media accounts. According to the Complaint, “IMVU is the world’s largest avatar-based social network”, with more than six million mostly youthful users, 40% from the United States and 60% from other countries, primarily the United Kingdom, France, Canada, and Brazil. Users chat, role-play, and share virtual experiences with each other through their three-dimensional avatars. There is also commercial activity in this “metaverse” of colorful, three-dimensional environments: virtual products are created and sold, and products and events in the real world are advertised. Users can shop the in-game official catalog for avatars, clothing, rooms, furniture, and other items provided by creators, paying with credits earned in-game, purchased for cash, or provided by marketing promotions. Participants are subject to Community Guidelines, and content creators must agree to the Content Agreement and Policy to upload their files to the IMVU Shop.

According to the Complainant’s co-founder, Eric Ries, the Complainant’s name is fanciful. The Complaint cites his words to an audience in 2012: “It’s not an acronym; it doesn’t stand for anything.” The Complainant holds numerous trademark registrations comprising or incorporating “imvu”, including the following:

According to the Registrar Google LLC, the Respondent Linda Lysippe registered the Domain Name <imvusex.com> on June 19, 2018, using a postal address in Lawrenceville, New Jersey.

The Domain Names <fuckimvu.com> and <imvufuck.com> were also registered by Linda Lysippe, both on May 22, 2019, but showing a postal address in Cocoa Beach, Florida, United States (although with a telephone number area code assigned to Washington state). Interestingly, the billing contact for the Domain Names <fuckimvu.com> and <imvufuck.com> was given as a Mr. Walker of St. Louis, Missouri, United States, with the same email address for “Stephen Miller” used in Mr. Linn’s communications with the Center about the repossessed domain names <imvu.info> and <imvustaff.com>, which were initially included in this proceeding. Thus, the Respondent appears to have a connection with the former registrant of those domain names as well.

The Response was submitted in the name of Linda Lysippe at the same postal address in Lawrenceville, New Jersey used in registering the Domain Name <imvusex.com> in 2018, not the Florida address used in 2019 registration of the other Domain Names.

The Complainant states that “Linda Lysippe” is the name of the IMVU avatar created and used by one of the Complainant’s employees, Linda Ly, Project Manager, Product and Development. Her profile is published on the LinkedIn social media site. The Respondent was clearly aware of this and pointed it out in the following text messages from the Respondent to the Complainant’s Vice President of Engineering, when the Respondent was trying to sell some of the Domain Names to the Complainant (as discussed further below):

June 18, 2019:

“Jyslin avatar is just Jyslin and linda avatar is LindaLysippe :) …
LindaLysippe is imvusex.com founder check the site who is info :) …

But imvusex.com is normal and the founder name everyone knows it it is even on the website it self when you click contact us :)”

The correspondence of names may be a coincidence. But it may be, as the Complainant suggests, that the Respondent deliberately assumed “Linda Lysippe” as a pseudonym, given the Respondent’s possible motivation as a “black market” creator to avoid enforcement of the Complainant’s policies and given the Respondent’s mocking use of the names of other employees of the Complainant in the text messages cited below and on the landing pages associated with two of the Domain Names.

The Domain Name <imvusex.com> resolves to a commercial website (the “Respondent’s website”) that advertises and sells the Respondent’s “3D Mesh Files”, which are files of three-dimensional art work that customers can use with their IMVU avatars for IMVU rooms, furniture, avatar poses, “triggers”, and accessories on explicit sexual themes, such as an “Orgy Club” room and a “4some” pose. The “About Us” page names “Linda Lysippe” as the “CEO-Founder” and gives a post office box in Lawrenceville, New Jersey as the address. Eight other “creators” are listed, all by pseudonyms such as “MaxTheFallen” and “AutumnNights”. There is a sort of disclaimer:

“our website doesn’t belong to any website else using our mesh files in a third party website is your responsibility we advise you that when you register at our website don't use same login info for any other website.”

At the time of this Decision, the Domain Names <fuckimvu.com> and <imvufuck.com> resolve to “Coming Soon” landing pages that include a scrolling “Visitors Comments” feature displaying inconsequential expressions (“hey guys”, “wow”) and suggestive remarks (some of them referring to the Complainant’s staff by name, including Linda Ly) and also marketing pitches with website links for actual commercial products and services such as Monkey Digital, ProFund247, Dexim Investment Solutions, Drive Savers Data Recovery, MG-Dot Advertising, and Feel Great All Day. On a screenshot of the page associated with <fuckimvu.com> in June 2019, and found on the Internet Archive’s Wayback Machine, the words “Powered by […] Pollock” are displayed at the bottom of the page. Ms. Pollock is an employee of the Complainant. Clicking on her name took the site visitor to another page, also archived by the Wayback Machine, disparaging Ms. Pollock (“I Can’t do anything but take my salary”) and adding, “The surprise is coming soon”.

The Respondent started sending threatening and demanding text messages to Mr. Reeves, IMVU’s Vice President of Engineering, on May 22, 2019, the day the Respondent registered the Domain Names <fuckimvu.com> and <imvufuck.com>. These text messages are attached to the Complaint. The Respondent taunted Mr. Reeves, expressed anger with Ms. Pollock, made disparaging remarks about other IMVU personnel, threatened distributed denial of service (“DDOS”) attacks on the Complainant’s servers, and offered to sell to IMVU the newly registered Domain Names and other domain names that included “imvu” in the string. What follows is sample of relevant texts:

May 22, 2019:

“Peter have you seen the new domains i just created today ?

They will make Denise and Daren tsui crazy

Guess the domainnames lol

The new 2 domain names really viopate you :)

Violate …”

May 26, 2019:

“Hi Pervert
Have you got the new domain names?

You are Very stupid and no way to guess them …”

May 28, 2019:

“Time to tell you about the new domain name :)

⁠Fuck IMVU FuckIMVU.com …”

June 10, 2019:

“IMVU – IMVU INFO – INVU Information –

IMVU.info

imvu.info is a premium domain name , i won it in auction and will get .org and .net too and imvustaff.com can be for my staff :)

any company should buy the 4 main LTD com , net , org , info , facebook was paid 25 million dollars to get facebook.info :)

So Mr. Pervert imvu.info costed us so much to get it but if you need it you know the price :) and https://imvustaff.com you can use it as staff board or can be used to share all dumb staff info :)))

to understand why imvu.info is important google will index it in first page when someone searching for anything related to imvu because it is the same domain but in diffrent LTD :)

as you see Mr. Pervert i did what Eric Ries couldn't do -_-

Now we hqve .info and will get .net and .org too -_-

We paid so much for imvu.info and the people trying to get .netand .org for us i contacted all hunters :)

If you were real company you should buy all 4 main TLD's :)

Denise Pollock declared the war on me 13 months ago because i just reported imvu-e.com and exposed your ass and said it is belongto IMVU ::) …

and imvumafia site owner is my friend and he told me that imvu gavehim permission to sell BlackMarket products :)

that's explain why you never tried to remove theBM public rooms , why don't you look at the users A4 and A3 tag line they set their BM site and say they are BM creators and nobodybanned them :)

Rules should be for all or No rules Mr. Pervert :)

You should hurry up because i may sell the domains to anyone else :)”

June 20, 2019:

“I put all domains for sale…”

June 22, 2019:

“i have an account been on imvu 12 yearss with golden profile :)

I dare you get it …

i have many old accounts hide them away of bad people like you :)”

June 27, 2019:

“Yesterday i used my Charter Spectrum email and contacted Microsoft from it and i told them im a big empoylee at Charter , and because most of Microsoft Customers support are dumb Hindu people they didn't know that Charter gives all of their customers and email @charter.net so they believed me and they gave me some restricted services will use them to send DDOS attack packets on your servers :))) …
We can make a good deal but you should be honest this time , you get back the savior account and I stop all domains and stop the war on you and stop sending DDOS packets on your servers :)

I will also tell you about all imvu vulnerabilities and how i trick the system to back again and how i was avoid your secuirty :) …”

Undated (“Today”):

“Watch the attack on IMVU servers now.”

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Names are confusingly similar to its registered IMVU trademarks, as the Domain Names each incorporate the distinctive mark in its entirety and add a descriptive term that does not avoid confusion.

The Complainant states that the Respondent, whoever he or she really is, has no permission to use the IMVU mark in the Domain Names and is not known by a corresponding name. The Complainant argues that association with an explicit sex site is not a bona fide commercial use of the Domain Name <imvusex.com>, and that directing the Domain Names <fuckimvu.com> and <imvufuck.com> to “Coming soon” landing pages with derogatory comments amount the Complainant’s employees does not represent use in connection with a bona fide commercial offering or other fair use.

As the Respondent was clearly aware of the Complainant and adopted a “retaliatory stance” toward the Complainant and certain of its employees, the Complainant argues that the Domain Names were registered and used in bad faith. The Domain Name <imvusex.com> is used to misdirect Internet users to a commercial site selling the Respondent’s products and tarnishing the Complainant’s reputation with explicit adult content. The Domain Names <fuckimvu.com> and <imvufuck.com> have been used to post derogatory comments while the Respondent attempted to extort a purchase price from the Complainant in excess of the Respondent’s out-of-pocket costs. The Complainant also cites the “passive holding” doctrine with respect to the latter Domain Names, as they are not associated with developed websites.

The Complainant cites the Respondent’s conduct in hiding its identity and contact details and making threats about security incursions and denial of service attacks as additional evidence of bad faith.

B. Respondent

The Respondent is under the misimpression that the Complainant has trademarked only its design logo. The Respondent argues (without support) that “IMVU is a popular word means IM V You”.

The Respondent argues that it has been selling 3D files legitimately for more than a year through the website associated with the Domain Name <imvusex.com>. The Respondent contends that the websites associated with the Domain Names <fuckimvu.com> and <imvufuck.com> are undeveloped because they are new, and the Respondent is still “working on the design”. The Respondent says that anyone can post comments on those “Coming soon” landing pages, and the Respondent is not responsible for the content, citing the United States Communications Decency Act. With respect to derogatory comments on those pages and the implied criticism of “fuck” domain names, the Respondent also cites UDRP decisions on “consumer criticism” sites, with the quotation, “[p]rotest and commentary is the quintessential noncommercial fair use”, McLane Co. v. Craig, WIPO Case No. D2000-1455.

The Respondent contends that the Complaint was likely brought in retaliation for the Respondent filing a criminal complaint against an employee (later identified as a vice president) of the Complainant with the United States Federal Bureau of Investigation (FBI) for harassing the Respondent’s son and other children on the Complainant’s platform. The Panel construes the Respondent’s remarks as a request for a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a 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 of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Domain Name incorporates the the Complainant’s IMVU mark in its entirety. The addition of other terms in the Domain Names does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id., section 1.7.

The Panel finds, therefore, that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant here has made out a prima facie case. It has presented evidence of trademark rights, confusing similarity, and lack of permissive use. The Respondent is not known by a corresponding name. Beyond this, in the case of the Domain Name <imvusex.com>, the Domain Name is used for a commercial website selling adult content that is unclear as to source and sponsorship and potentially tarnishes the Complainant’s mark. See MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 (confusingly similar domain name directed to a pornographic website). In the case of the Domain Names <fuckimvu.com> and <imvufuck.com>, the Respondent does not have developed websites but only “Coming soon” pages with some derogatory personal remarks and some promotional material for third parties.

In reply, the Respondent seems to argue that <imvusex.com> is used for a legitimate business and that <fuckimvu.com> and <imvufuck.com> are still under development but are being used as criticism sites.

It is clear that the Complainant has a well-established trademark, a market of millions of users of its virtual “IMVU metaverse”, and a large number of developers and creators that produce software and artwork for the IMVU environment. The problem is that these developers and creators, including the Respondent, need to refer to “imvu” in describing their products, and the issue of “nominative fair use” arises even for associated domain names. The Complainant’s Policy Hub does not include an intellectual property or licensing policy,¹ and the issue is not addressed in the Complainant’s Creator Agreement and Policy. The Respondent’s communications with the Complainant include assertions that the Complainant has a friendly relationship with IMVU Mafias, an informal organization of black market IMVU developers and creators that operates a website at “www.imvumafias.org”. The Complainant does not deny this. There are several similar websites that use “imvu” in their domain names, and there is typically no information on the websites (nor is there in the record) about licensing or affiliation with the Complainant.

The essence of “fair use” under the Policy, paragraph 4(c) is whether the Respondent’s use of the Domain Names falsely suggests an affiliation with the Complainant (see WIPO Overview 3.0, section 2.5). The risk of implied affiliation is inherently high when the domain name wholly incorporates a established and distinctive mark, which is the case with all three Domain Names here. All three add a descriptive term as well, however. In such cases, other factors are considered, as described in WIPO Overview 3.0, section 2.5.1:

“Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.

As described in more detail below and in sections 2.6 through section 2.8, UDRP panels have articulated a broad continuum of factors useful in assessing possible implied sponsorship or endorsement.

At one end, certain geographic terms (e.g., <trademark-usa.com>, or <trademark.nyc>), or terms with an ‘inherent Internet connotation’ (e.g., <e-trademark.com>, <buy-trademark.com>, or <trademark.online>) are seen as tending to suggest sponsorship or endorsement by the trademark owner.

At the other extreme, certain critical terms (e.g., <trademarksucks.com>) tend to communicate, prima facie at least, that there is no such affiliation.

In between, certain additional terms within the trademark owner’s field of commerce or indicating services related to the brand, or which are not obviously critical (e.g., <okidataparts.com>, <nascartours.com>, <covancecampaign.com>, or <meissencollector.com>), may or may not by themselves trigger an inference of affiliation, and would normally require a further examination by the panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests.”

The Domain Names <fuckimvu.com> and <imvufuck.com> appear on their face critical and unlikely to be sponsored by the Complainant, but the Panel must then determine whether the Respondent is using or preparing to use them as genuine criticism sites. The Domain Name <imvusex.com> is equivocal because the Complainant does not prohibit sexual content on the Complainant’s website. That requires further inquiry to see how the site is presented, and the fact that there is adult content on the Complainant’s website also diminishes the impact of the Complainant’s argument that the Respondent’s Domain Names and the content of the Respondent’s website “tarnishes” the Complainant’s mark. In this case, then, as discussed in WIPO Overview 3.0, section 2.5.2, it is appropriate to consider circumstances beyond the Domain Names themselves.

The Respondent creates “black market” artwork designed for customers to use in the Complainant’s “IMVU multiverse”. Here are relevant provisions in the Complainant’s Community Guidelines:

“Sexual or adult-oriented behavior: IMVU is about self-expression and connections but not about lewd or sexually explicit behavior when all users involved are not willing participants. You will meet people with diverse cultural backgrounds. Do not make them uncomfortable by behaving in a way that would be considered inappropriate by societal standards if you were to do so in person. Respect the difference between private and public communications.

Do not use explicit and obscene language.

Do not engage in sexual solicitation.

Do not engage in adult-themed or sexually oriented activities unless, you as an adult have an Access Pass and are interacting with other Access Pass holding adults. Think of movies where certain behavior is okay for an R-rated movie but not a PG-13 rated one.”

As explained in the Community Guidelines, there is a rating system for virtual products distributed through the official catalog in-game. IMVU users are supposed to be at least 13 years old; those at least 18 years old qualify for an “Access Pass”. Products in the catalog available to users with an Access Pass may contain full nudity and sexual themes. However, the Guidelines declare that products depicting “sexual violence” or “[s]trong sexual content including depiction of arousal/aroused genitals” are rated “Unsuitable for IMVU”.

Some of the products offered on the Respondent’s website appear to fall into the latter description, so they would presumably be ineligible to list in the official catalog. However, that also appears to be true for a number of other creators that offer “naughty” or “adult” black market (“BM”) IMVU mesh files, yet some of them advertise that their products are delivered “directly to your IMVU account ready to use”. It is not clear what steps the Complainant takes to enforce this aspect of the Community Guidelines or prevent black market products that violate the guidelines from being used to create, for example, “orgy” rooms such as the Respondent offers in the IMVU environment. The Panel notes that other parties that offer or discuss such black market IMVU products also include the string “IMVU” in the domain name. These include e-commerce websites, portals, or blogs using the domain names <imvumafias.org>, <imvu-blackmarket.com>, <imvublackmarket.com>, <imvublackmarket.blogspot.com>, <imvuvore.forumotion.com>, <imvuerotica.com>, <hot4imvu.com>, <imvu-e.com>, <sexonimvu.com> (redirects to IMVU Mafias), <imvuadults.com>, and <imvustylez.net>.

Such referential or “nominative fair use” of trademarks in domain names has most often been addressed in UDRP decisions concerning distributors, resellers, or service providers (authorized or unauthorized), but it is similar to the issue presented here. See WIPO Overview 3.0, section 2.8; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Because the risk of implied affiliation is high, there are conditions for claiming nominative fair use, such as not using the domain name to sell unrelated goods or services and “accurately and prominently” disclosing the relationship with the trademark holder (id.,section 2.8.1). The Respondent’s website associated with the Domain Name <imvusex.com> appears to be wholly concerned with 3D mesh files for the Complainant’s IMVU environment, although it does not say so. While it is unlikely that a user would believe they were on the Complainant’s website, it is not at all clear if and how the site operator is related to the Complainant. Buried in the “About us” page is this cryptic statement: “our website doesn’t belong to any website else using our mesh files in a third party website is your responsibility”. The statement does not mention the Complainant by name.

Accordingly, the Panel finds that the Respondent does not satisfy the test for nominative fair use of the Complainant’s trademark in the Domain Name <imvusex.com>, noting lack of appropriate disclosure of the Respondent’s relationship with the Complainant. It is not necessary to base this finding on the Complainant’s arguments that the Respondent’s adult products are not bona fide commercial offerings or that Respondent’s websites tarnish the Complainant’s mark because of their explicit sexual content. These arguments are dubious in light of the evidence concerning (a) the Complainant’s policies allowing at least some kinds of virtual sexual activity in the “IMVU multiverse”, and (b) an apparently substantial market for products similar to the Respondent’s that are advertised online with the Complainant’s mark.

The other Domain Names, <fuckimvu.com> and <imvufuck.com>, have critical-appearing names, and the Respondent claims to intend them for criticism. Some derogatory personal remarks about individual employees of the Complainant have appeared in the comments posted on the “Coming soon” landing pages to which the Domain Names resolve, although these do not appear to be direct criticisms of the Complainant. Otherwise, as noted above, the posted comments are largely comprised of third-party marketing material, with links to commercial companies.

The Respondent is misguided in asserting that comments posted on the landing pages cannot be used “as the basis for any claim” against the Respondent in this proceeding because of the Communications Decency Act. The Respondent has not shown that it qualifies under the Act as a protected provider of an “interactive computer service”, or that all of the posted comments were actually written by third parties rather than by the Respondent itself. In any event, the Act concerns defenses in United States judicial proceedings (most frequently against defamation and privacy claims) but expressly does not cover “intellectual property” claims (see 47 United States Code, section 230(e)(2)), so it has no application in the UDRP context even when the parties are all located in the United States.

More to the point, the Respondent has asserted fair use of the Complainant’s trademark in these Domain Names for the purpose of using them for a criticism site. UDRP panels have recognized referential use of trademarks in “[trademark]sucks” and “fuck[trademark]” cases as a fair use for genuine, noncommercial criticism sites. See WIPO Overview 3.0, section 2.6. But the Respondent has not developed such a site, and in the interim the Respondent has allowed the landing pages to be used for commercial advertising of third-party goods and services, while making (or allowing others to make) occasional derogatory remarks about individual employees of the Complainant. These are not “genuine” criticism sites, and while it is understood that website design and development may take some time, the Respondent remains responsible for the Domain Names and cannot allow commercial use over an extended period. Moreover, the Respondent’s text messages, beginning the day the Respondent registered the Domain Names, suggest that the Respondent has been more interested in threatening the Complainant and attempting to sell the Domain Names to the Complainant than in developing a genuine criticism website.

The Panel concludes that the Respondent has not demonstrated rights or legitimate interests in the Domain Names within the meaning of the Policy, paragraph 4(c), and that the Complainant has established the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following suggested by the Complainant (in which “you” refers to the registrant of the domain name):

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or …

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

There is no question that the Respondent was aware of the Complainant and its marks, even if the Respondent was under the mistaken belief that the Complainant had only trademarked its logo (a design mark that is a colorful rendition of the same four letters comprising its standard-character mark). The Respondent’s entire product line sold through the Domain Name <imvusex.com> is evidently meant to be used with customer’s avatars in the Complainant’s “IMVU multiverse”. As discussed above in connection with the second element of the Complaint, however, the Respondent does not meet the test for fair use. Neither the Domain Name itself nor the Respondent’s website make it clear to Internet users that the site is operated by an independent creator with no connection to the Complainant. It is fair to conclude that the Respondent knowingly relied on possible or likely confusion as to source or affiliation to attract Internet users to the Respondent’s website for commercial gain, which constitutes bad faith for Policy purposes. The Respondent’s obfuscation of its identity and address details, and its conduct in simultaneously threatening the Complainant with security breaches, denial of service attacks, and sale of multiple domain names with the “imvu” string all lend credence to the inference of bad faith.

Regarding the Domain Names <fuckimvu.com> and <imvufuck.com>, the Respondent has also allowed substantial commercial use of the landing pages associated with the Domain Names, as discussed above, failing the test for noncommercial fair use as criticism sites and reflecting bad-faith misdirection for commercial gain as described in paragraph 4(b)(iv). In addition, the Respondent does not deny the string of text messages indicating that the Respondent registered these Domain Names, and other domain names no longer included in this proceeding, for retaliatory purposes following perceived slights and mistreatment by the Complainant’s employees. In the text messages, the Respondent repeatedly spoke of selling the Domain Names and other domain names to the Complainant and threatening to sell them to others, referring to Facebook paying millions for a domain name, and saying “we can make a good deal”. This messaging commenced immediately after registering the Domain Names. Therefore, the Panel finds that the Respondent’s conduct also fits the example described in paragraph 4(b)(1).²

The Panel finds additional support for an inference of bad faith within the meaning of the Policy in the Respondent’s history of inaccurate or incomplete registry and website identification, the initial identification of the landing page associated with one of the Domain Names as “powered by” an employee of the Complainant, and the Respondent’s threats of denial of service attacks.

The Panel concludes that the Complainant has established the third element of the Complaint.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides 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 (“RDNH”) 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”.

As discussed above, the Panel concludes that the Complaint is well grounded under each element of the Policy. The Panel declines, therefore, to enter a finding of Reverse Domain Name Hijacking. The Respondent’s other concerns with the Complainant or its individual employees lie outside the scope of the UDRP, and must be addressed in another appropriate forum.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <fuckimvu.com>, <imvufuck.com>, and <imvusex.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: October 15, 2019

¹ Compare the trademark guidelines in the Second Life Brand Center dealing with the “Second Life” virtual world, addressing similar issues in detail, “https://secondlife.com/corporate/brand/trademark/”.

² The Complainant refers as well to the “passive holding” doctrine with respect to the undeveloped websites associated with the Domain Names <fuckimvu.com> and <imvufuck.com> (see WIPO Overview 3.0, section 3.3). However, these Domain Names have been used to publish derogatory remarks about the Complainant’s employees and to advertise the services of unrelated third parties, as discussed above, so the passive holding analysis is not apt in this context despite the absence of fully developed websites.