WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eTech Marketing, Inc. v. Ann Decock / JDS Learning BVBA

Case No. D2014-1520

1. The Parties

The Complainant is eTech Marketing, Inc. of Las Vegas, Nevada, United States of America (the “United States”), represented by Randazza Legal Group, United States.

The Respondent is Ann Decock / JDS Learning BVBA of Ovl, Belgium, self-represented.

2. The Domain Names and Registrar

The disputed domain names <allover30freepictures.com>, <allover40freepics.com>, <all30plus.com>, <over30freepics.com>, <over30freeporn.com>, <over30pics.com> and <over30pornpics.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2014. The Complaint named WhoIsGuardProtected, WhoIs Guard, Inc. / Patrick Van Wynsberghe dba JDS Learning BVBA as Respondent. On September 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 6, 2014, the Registrar transmitted by email to the Center its verification response confirming that the present Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 23, 2014 naming the present Respondent.

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 September 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. The Response was filed with the Center on October 16, 2014.

The Center appointed Steven A. Maier as the sole panelist in this matter on October 23, 2014. 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 has determined that that, according to the verification response provided by the Registrar, each of the seven disputed domain names was registered by the same domain name holder. In the circumstances, pursuant to paragraph 3(c) of the Rules, the Panel finds that the Complaint properly relates to all seven of the disputed domain names.

4. Factual Background

The Complainant is a corporation located in Las Vegas, Nevada, United States. It provides adult entertainment on the Internet featuring photographs, videos and other content.

The Complainant is the owner of United States registered trademark number 3284875 for the word mark ALLOVER30, registered with effect from November 14, 2006 in International Class 41 for entertainment services, namely, providing a website featuring, photographic, audio, video and prose presentations featuring adult entertainment.

The Respondent registered the disputed domain names on the following dates:

At the date of the Center’s formal compliance review, September 26, 2014, each of the disputed domain names resolved to a website featuring adult images and links and referring to content variously described as “Over 30”, “Over 40” and “Mature”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is a substantial Internet entertainment company that has operated under the name and mark ALLOVER30 since June 2005. It states that it registered the domain name <allover30.com> on June 2, 2005 and that its website linked to that domain name ranks among the 8,000 most trafficked websites in the United States and the 12,000 most trafficked in the world.

The Complainant submits that it owns and operates an Internet marketing program named the CraziesCash Affiliate Program. This program enables affiliates to earn commissions by referring traffic to the Complainant’s website. The Complainant exhibits an agreement (the “Affiliate Agreement”) into which it states affiliates must enter in order to participate in the program. While granting affiliates a license to use certain of the Complainant’s images, videos, etc., the Affiliate Agreement states:

“… you are not permitted to register/USE any Uniform Resource Locator (URL) or world wide web address that contains any of our trademarks or URLs or that contain any terms that are confusingly similar to our trademarks or our URL.”

The Affiliate Agreement goes on to state that, should the affiliate violate this provision, it will immediately transfer the relevant URL to the Complainant on demand. The Affiliate Agreement provides that the Complainant may revoke the affiliate’s license to use the Complainant’s content at any time. It also provides that either party may terminate the agreement at any time on written notice and that, should the Complainant terminate for breach, the affiliate must immediate cease to use the Complainant’s marks and materials.

The Complainant states that on November 12, 2006 it entered into an Affiliate Agreement with Patrick Van Wynsberghe dba JDS Learning BVBA (the Complainant does not, however, exhibit a copy of this specific agreement). It states that in September 2013 it became aware that Mr. Van Wynsberghe had violated the Affiliate Agreement by registering the domain names <allover30freepics.com> and <freeallover30pics.com>. On September 18, 2013 the Complainant emailed Mr. Van Wynsberghe terminating the Affiliate Agreement and demanding a transfer of those names. However, Mr. Van Wynsberghe did not cooperate with the Complainant’s request and responded by removing the Complainant’s images from the relevant websites and replacing them with those of a competitor. The names were ultimately transferred to the Complainant by virtue of the panel decision in eTech Marketing, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / JDS Learning BVBA, Ann Decock / JDS, Patrick Van Wynsberghe WIPO Case No. D2013-1871 (domain names <allover30freepics.com>, <allover30matures.com> and <freeallover30pics.com>): The panel in that case found that the underlying registrant was JDS Learning BVBA or JDS and the Complainant submits that it has, therefore, already been established that Patrick Van Wynsberghe and Ann Decock are one and the same domain name registrant.

The Complainant submits that, at approximately the same time as it contacted Mr Van Wynsberghe about the above domain names, the Respondent registered six of the seven domain names in the present proceeding and also used them to create websites featuring or linking to the Complainant’s competitors’ content.

The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant submits that each of the disputed domain names contains some permutation of the Complainant’s ALLOVER30 trademark. Insofar as the names are different from the trademark, such differences are inconsequential. Some of the names add the terms “pictures”, “pics” or “porn”, one contains “plus” instead of over and another contains the term “40” instead of “30”. However, none of these changes is effective to distinguish the disputed domain names from the Complainant’s trademark. The Complainant submits that it is well established in decisions under the UDRP that adding common terms to a registered trademark does nothing to lessen the likelihood of confusion and that the Respondent has either added generic terms or has omitted or altered small portions of the Complainant’s mark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy).

The Complainant submits that, it having terminated the Affiliate Agreement with Mr. Van Wynsberghe on September 18, 2013, the Respondent ceased at that time to have any license or other rights to use the Complainant’s ALLOVER30 trademark. The Respondent cannot have any rights or legitimate interests in domain names that it registered, or has continued to use, in breach of the Affiliate Agreement or after the termination of that agreement.

The Complainant states that the Respondent has not been commonly known by the disputed domain names and that its only rights to use those names was derived from the now terminated license agreement.

The Complainant submits that the Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services. The Respondent is using the disputed domain names to provide links to, and advertisements for, websites that directly compete with the Complainant. Further, the Respondent will itself be a competitor insofar as it offers the same product as the Complainant and does not compensate the Complainant for the use of its trademark. By using the disputed domain names in this way the Respondent is disrupting the Complainant’s business.

Nor is the Respondent making legitimate noncommercial or fair use of the disputed domain names. The Respondent is using the disputed domain names to offer links to, and advertisements for, websites that directly compete with the Complainant and is undoubtedly receiving compensation for those links and advertisements.

The Complainant submits that the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant asserts that the Respondent undoubtedly had actual knowledge of the Complainant’s rights in the trademark ALLOVER30 before it registered the disputed domain names. The disputed domain names were registered eight years after the mark accrued common law rights, six years after registration of the mark and more than five years after the date of the Affiliate Agreement with Mr Van Wynsberghe. Alternatively, the Respondent had constructive knowledge of the Complainant’s trademark.

Further, the Complainant argues that the Respondent’s bad faith has already been established in WIPO Case No. D2013-1871 (discussed infra) and that the domain names in that case were registered before the disputed domain names in the present case.

The Complainant asserts that the Respondent registered and has used the disputed domain names with the intention of disrupting the Complainant’s business and diverting Internet traffic away from the Complainant’s website linked to <allover30.com>. The Complainant claims, in particular, that the disputed domain names were registered and have been used to create a likelihood of confusion with the Complainant’s trademark and to divert Internet users who mistype the Complainant’s URL or who are searching for the Complainant’s website. The Complainant exhibits screen shots from “www.archive.org” of the Respondent’s websites linked to the disputed domain names and submits that each of the disputed domain names was used to market the services of the Complainant’s competitors from soon after the date of registration of each name. The Complainant states that the Respondent started to use the disputed domain names only after the Complainant’s trademark ALLOVER30 had garnered international acclaim and with the intention of profiting from Internet users’ confusion.

The Complainant submits that it is not required to demonstrate actual confusion as a result of the Respondent’s use of the disputed domain names, but only the potential therefor. In this regard it argues that the disputed domain names are “substantively identical” to its ALLOVER30 trademark and the Respondent will therefore benefit from “initial interest confusion” when Internet users are diverted to the Respondent’s websites. Furthermore, the websites offer services competitive with those of the Complainant without any disclaimer, which is a further indication of the Respondent’s intention to cause confusion.

The Complainant seeks a transfer of the disputed domain names.

B. Respondent

The Respondent states that she is not the same person as Patrick Van Wynsberghe. She states that she took over Mr. Van Wynsberghe’s websites in July 2013 and that she has never been an affiliate of the Complainant. She states that she has registered numerous domain names since 2013 but none of these can be related to the Complainant, with the exception of <allover30freepictures.com>. The Respondent submits that the remaining disputed domain names are “totally different” and have nothing to do with the Complainant, its domain names or its trademarks.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

By virtue of its United States trademark referred to above, the Complainant has established that it has registered trademark rights in the mark ALLOVER30 for a website featuring photographs, videos and other content in the field of adult entertainment.

The Panel finds that none of the disputed domain names is identical to the Complainant’s trademark. Accordingly, the issue in the case of each of the names is whether it is confusingly similar to that trademark.

The Complainant’s trademark comprises an amalgamation of three generic or descriptive terms, “all”, “over” and “30”. It includes no coined or invented element and its distinctiveness only derives, therefore, from the combination of the three descriptive elements together. In these circumstances, particular care must be taken in comparing the disputed domain names with the Complainant’s trademark. In the view of the Panel, in order to establish confusing similarity, it is not sufficient for the Complainant merely to show that each disputed domain name incorporates one or more elements from the Complainant’s trademark in combination with other descriptive terms: the Complainant must also establish a realistic possibility of confusion between each disputed domain name and its trademark as an indication of the origin of the services supplied under the name or mark.

The domain name <allover30freepictures.com> comprises the whole of the Complainant’s trademark ALLOVER30 together with the descriptive terms “free” and “pictures”. In the circumstances, the Panel finds that this domain name is confusingly similar to the Complainant’s trademark.

The Panel makes a similar finding in respect of the domain name <allover40freepics.com>. While the domain name uses the term “40” rather than “30”, the Panel finds there to be a material risk that Internet users would believe this domain name also to be associated with the Complainant’s ALLOVER30 trademark.

So far as the domain name <all30plus.com> is concerned, the Panel does not find this name to be confusingly similar to the Complainant’s trademark. It comprises an amalgamation of generic or descriptive terms and, while these includes the elements “all” and “30”, in the view of the Panel it is not sufficiently close to the Complainant’s trademark for a realistic risk of confusion to exist.

With regard to the remaining four domain names, each of these includes the term “over30” together with the descriptive elements “free”, “pics” and “porn”. The Panel finds the issue of confusing similarity to be finely balanced in these cases, since the term “over30” does not comprise the whole of the Complainant’s trademark and could be viewed as descriptive of a category of the adult entertainment market. On balance, however, the Panel finds that the adoption of the term “over30” in these four names does create an appreciable risk of confusion as to origin and that the names are therefore confusingly similar to the Complainant’s trademark for the purpose of the threshold test under paragraph 4(a)(i) of the Policy.

In the circumstances, the Complaint in respect of the disputed domain name <all30plus.com> fails and the references to the disputed domain names in the remainder of this Decision exclude any further consideration of that name.

B. Rights or Legitimate Interests

The Panel finds that the Respondent was not licensed or authorized by the Complainant to use the Complainant’s ALLOVER30 trademark for the purpose of the disputed domain names, that the Respondent has not commonly been known by those names and that the Respondent is not making legitimate noncommercial or fair use of the names. This gives rise to a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, which the Respondent may be able to rebut by reference to any of the circumstances set out under paragraph 4(c) of the Policy or otherwise.

In the view of the Panel, each of the disputed domain names is comprised entirely of generic or descriptive elements. Cases of this nature are considered in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), where paragraph 2.2 raises the question:

“Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?”

Paragraph 2.2 presents the consensus view of panelists as follows:

“If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase.

Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”

This guidance must be read in conjunction with paragraph 4(c)(i) of the Policy, which provides that rights or legitimate interests may be established in circumstances where a respondent can show:

“… before any notice to you of the dispute, your 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”.

The question in this case, therefore, is whether the Respondent has, on the one hand, used the disputed domain names in connection with a bona fide offering of goods or services or, on the other hand, used them to take unfair advantage of the Complainant’s rights.

In considering this matter, it is necessary to look at the factual history insofar as this appears from the evidence available to the Panel. In this regard, the Panel finds that in November 2006 the Complainant entered into an Affiliation Agreement with Patrick Van Wynsberghe dba JDS Learning BVBA which included a prohibition against registering any domain name confusingly similar to the Complainant’s trademarks. According to the Registrar responses furnished in this case, the present registrant is Ann Decock of the organization JDS Learning BVBA. The Respondent does not dispute that Mr. Van Wynsberghe previously traded as JDS Learning BVBA and the Panel therefore finds that Mr. Van Wynsberghe and Ms. Decock are, at least, connected via the medium of that business. Moreover, Ms. Decock submits that she took over the websites operated by Mr. Van Wynsberghe in July 2013, which on the evidence available included websites using the Complainant’s content then licensed under the Affiliation Agreement.

While the Respondent submits, first, that she is not Mr. Van Wynsberghe and, secondly, that she has never been an affiliate of the Complainant, the Panel finds in all the circumstances set out above that the Respondent was (or should have been) aware of the Complainant’s trademark ALLOVER30 and of the prohibition against registering any confusingly similar domain names that formed part of the agreement licensing the Complainant’s content. The Panel also infers that the Respondent was aware of the Complainant’s communication with Mr Van Wynsberghe dated September 18, 2013 concerning the domain names referred to in WIPO Case No. D2013-1871, in which both Mr. Van Wynsberghe and the Respondent were named respondents. The Panel further accepts the Complainant’s evidence that, following receipt of those communications, the content of the relevant websites was changed from the Complainant’s content to that of, or links to that of, the Complainant’s competitors. The Respondent admits having registered the disputed domain names, which in all cases but one were registered on or after September 18, 2013 and the Panel accepts the Complainant’s evidence that the Respondent has used the disputed domain names to offer content from the Complainant’s competitors for which the Respondent is likely to receive remuneration.

The Panel concludes in the circumstances that the Respondent registered and has used the disputed domain names in the knowledge of the Complainant’s rights in its ALLOVER30 trademark and with the intention of taking unfair advantage of the goodwill attaching to that mark. Notwithstanding the generic or descriptive nature of the disputed domain names, registration and use in these circumstances neither amounts to bona fide use of the disputed domain names nor gives rise to any other rights or legitimate interests in the names. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

For similar reasons as those set out above, the Panel finds bad faith to be present in this case. Specifically, the Panel finds that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of those websites (paragraph 4(b)(iv) of the Policy). Accordingly, the Panel finds that that the disputed domain names have been registered and are being used in bad faith.

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 disputed domain names <allover30freepictures.com>, <over30freeporn.com>, <over30freepics.com>, <over30pics.com>, <over30pornpics.com> and <allover40freepics.com> be transferred to the Complainant.

The Complaint in respect of the disputed domain name <all30plus.com>, is denied.

Steven A. Maier
Sole Panelist
Date: November 5, 2014