WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

4355768 Canada Inc. v. PrivacyProtect.org / Jambo Silver

Case No. D2013-1225

1. The Parties

The Complainant is 4355768 Canada Inc. of Quebec, Canada represented by Law Offices of Corey D. Silverstein, P.C., United States of America (“US”).

The Respondent is PrivacyProtect.org of Queensland, Australia / Jambo Silver of Hemsedal, Norway.

2. The Domain Name and Registrar

The disputed domain name <crackrevenue.com> is registered with Cloud Group Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2013. On July 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2013, the Registrar transmitted its verification response to the Center by email disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2013, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 19, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2013.

The Center appointed Stefan Abel as the sole panelist in this matter on August 22, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules paragraph 7.

The Panel issued a Procedural Order on September 20, 2013, inviting the Complainant to submit further documentation on the ownership of registered and unregistered trademark rights. The Complainant submitted its reply on September 23, 2013.

4. Factual Background

The Complainant is a Canadian company offering products and services in the online adult entertainment marketplace. The Complainant submits to offer online products and services under a variety of domain names containing the term “crak” including, in particular, the domain name <crakrevenue.com> used for services offering advertising products and services for the promotion of goods and services of others via the Internet. The domain name <crakrevenue.com> was registered on April 7, 2011. The Complainant has filed with the US Patent and Trademark Office the word mark CRAKREVENUE on January 28, 2013, for advertising and marketing services (serial number 85834345). The Complainant has also filed further applications of the word mark CRAKREVENUE in Canada (on December 17, 2012) and with OHIM (application on January 10, 2013, registration on June 6, 2013).

The disputed domain name presently does not resolve to any website. Discussions in several chat fora indicate however that the disputed domain name was redirected to an adult content producer’s website, to an adult entertainment forum and to the website of another adult entertainment company in September 2012, February 2013 and at other times. The disputed domain name was registered on March 4, 2012.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant’s contentions are as follows:

Since 2005, the Complainant has built a worldwide brand of products and services. The house brand is commonly known as CRAK and it includes numerous online products and services. The Complainant has registered the domain names <crakmedia.com>, registered in February 2005, <crakcash.com>, registered in August 2007, <crakpass.com>, registered in February 2010, <crakcontent.com>, registered in July 2010, <crakrevenue.com>, registered in April 2011 and <crakbucks.com>, registered in August 2011, for marketing these products and services.

The Complainant submits that it owns numerous proprietary marks for its goods and services, including the world famous trademark CRAKREVENUE. The CRAKREVENUE mark, through aggressive advertising, marketing, postings industry trade shows and online forum/blog communities became distinctive throughout the relevant adult industry community and became the most recognized brand in the online adult entertainment industry for its products and services.

The disputed domain name is confusingly similar to the Complainant’s CRAKREVENUE mark, which is famous.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by “crackrevenue” and is not affiliated with the Complainant in any way. The Respondent is not licensed by the Complainant and not an authorized vendor, supplier or distributor of the Complainant’s goods and services.

The Respondent’s lack of rights and legitimate interests is further reflected by having its identity shielded by the Registrar and also by having used, prior to shielding its identity, registration information that, by test messages, turned out to be invalid. By redirecting the disputed domain name to third party websites as mentioned above, the Respondent’s goal was to make Internet users believe that the Complainant was no longer operating as a business and to make Internet users believe that the Complainant was associated with competitors who at the time had a negative public image.

The Respondent has registered the disputed domain name in bad faith and has never used the disputed domain name for anything other than the misleading and deceptive activities described above. In fact, as the Annexes to the Complaint show, the Respondent’s bad faith decision to register and use the disputed domain name to redirect to multiple third party websites did confuse the Complainant’s own customers into thinking that the operators of the redirected-to websites were associated with the Complainant in one form or another.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides for transfer of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a)(i) to (iii) of the Policy.

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent’s has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The transfer of the disputed domain name requires, according to paragraph 4(a)(i) of the Policy that it be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel finds that this is the case with respect to the Complainant’s Community trademark CRAKREVENUE, registered on June 6, 2013.

The Panel makes the following findings as they relate to the second and third elements of the Policy.

It is not necessarily required that a complainant calls upon a registered trademark in a Policy proceeding. The complainant may also have rights in a non-registered trademark as far as this mark has acquired a “secondary meaning” through use and is perceived by the relevant part of the public as an indicator of the origin of the products or services offered under the mark.

Here, the use of the term “crakrevenue” may therefore also lead to trademark rights sufficient under the Policy, subject to relevant evidence having been submitted.

In the present case, very little evidence has been submitted by the Complainant that would indicate that the term “crakrevenue” has acquired secondary meaning before the disputed domain name was registered. In this regard, the Complainant submits two printouts of two different chat fora in which “crackrevenue” is mentioned and a printout of the Canadian trademark application claiming use of the trademark in Canada since April 2011.

The Complainant further refers to the fact that the redirection of the disputed domain name <crackrevenue.com> has been a topic of discussion in a chat forum in the Internet in September and October 2012 and on another chat forum in February 2013. The Complainant further points out that online services provided under the CRAKREVENUE mark have achieved awards in September 2012 and in 2013.

The Panel finds that the Complainant has not submitted sufficient evidence to demonstrate the acquisition of unregistered trademark rights in the term “crakrevenue” before registration of the disputed domain name.

The Panel further notes that the Complainant has not submitted any printout of a WhoIs page, for the domain name <crakrevenue.com> nor a printout of a “www.crakrevenue.com”-page referencing the Complainant as the registrant or owner of this site or any other element which would support the Complainant’s ownership of this domain name. The Complainant merely refers to two printouts of “www.web.archive.org” representing the homepage of the domain name <crakrevenue.com> in May 2011 and this representation does not contain any indication that the domain name is owned or run by the Complainant. Rather, the domain name <crakrevenue.com> website represented under “www.web.archive.org” references the company “Crakmedia Ltd., London, United Kingdom”, and not the Complainant.

Regarding the Complainant’s assertions as to the term “crakmedia”, the Complainant submits two invoices addressed to “CrakMedia” and pictures of two trade fairs showing a “crakmedia” booth and “crakmedia” leaflets. However, in this regard, the Panel notes that there is, according to a printout of the database of a Canadian commercial registry submitted by the Complainant, a company called CRAK MEDIA, 783 rue Sainte-Claire, Québec, doing also business as CRAKMEDIA.COM. It is therefore not apparent for the Panel if the use of the term “crakmedia” reflected in the invoices and at the booths has been done by the Complainant or the other company, and the Panel cannot exclude that the other company may have acquired unregistered trademark rights and not the Complainant. The Panel is therefore unable to find that the Complainant has acquired unregistered trademark rights in the term “crakmedia”, independent on the question whether the demonstrated use is sufficient for creating unregistered trademarks rights.

The Panel therefore is unable to find that the Complainant has acquired unregistered trademark rights in the signs “crakmedia” or “crakrevenue” before the disputed domain name was registered.

However, for the purposes of the first element of the Policy, the Panel finds that the disputed domain name is identical or confusingly similar with the Complainant’s registered Community trademark CRAKREVENUE.

B. Rights or Legitimate Interests

There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its trademark or to register the disputed domain name.

In the circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The burden of submitting evidence therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.

The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is an often impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent such as lack of rights or legitimate interests in the disputed domain name. Producing evidence, that the Respondent prima facie has no rights or legitimate interest in the disputed domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) of the Policy if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus view in previous UDRP decisions (see e.g. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

C. Registered and Used in Bad Faith

The Panel finds that the Complainant has not established this element required by paragraph 4(a)(iii) of the Policy for the following reasons:

It is not established that the Complainant had any rights in the trademark CRAKREVENUE at the time the Respondent registered the disputed domain name on March 4, 2012. Rather, the registration of the disputed domain name predates the rights of the Complainant in the CRAKREVENUE trademark, see above (Section 6A). It is therefore not apparent to this Panel that the Respondent has registered the disputed domain name in bad faith with respect to the Complainant’s trademark rights (see e.g. MEEZA QSTP-LLC v. Torsten Frank / Medisite Systemhaus GmbH, WIPO Case No. D2009-0943).

The Panel finds that the case file does not include exceptional circumstances that allow the Panel to infer that the Respondent registered the disputed domain name with the Complainant’s trademark rights in mind. The Panel finds no evidence that the Respondent, when registering the disputed domain name, was aware of the Complainant or of the Complainant’s intention to file a trademark application for the term “crakrevenue”.

The Panel does find that there are certain elements in the case file indicating that the Respondent is not making a bona fide use of the disputed domain name. However, mere use of the disputed domain name in mala fide is not sufficient as the Policy requires that the disputed domain name be registered and used in bad faith. On balance, the Panel finds that the Complaint does not support a finding of registration and use of the disputed domain name in bad faith.

7. Decision

For these reasons, the Complaint is denied.

Stefan Abel
Sole Panelist
Date: October 2, 2013