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Generic Top Level Domain Name (gTLD) Decisions |
MRA Holding, LLC v. Len Molden
Claim Number: FA0309000193909
PARTIES
Complainant
is MRA Holding, LLC, Santa Monica,
CA, USA (“Complainant”) represented by Victor
T. Fu, of Richardson & Patel, LLP, 10900 Wilshire Boulevard, Suite 500, Los
Angeles, CA 90024. Respondent is Len Molden, Vancouver, B.C., Canada (“Respondent”), P.O. Box 3811,
Terminal P.O., Vancouver B.C., CANADA V6B 3Z1.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <girlsgonewildusa.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Fernando Triana, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 11, 2003; the Forum
received a hard copy of the
Complaint on September 16, 2003.
On
September 11, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the
domain name <girlsgonewildusa.com>
is registered with Tucows, Inc. and that the Respondent is the current
registrant of the name. Tucows, Inc. has verified that Respondent
is bound by
the Tucows, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties
in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
September 22, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 13, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent
via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing
contacts, and to postmaster@girlsgonewildusa.com by e-mail.
A
timely Response was received and determined to be complete on October 5, 2003.
On October 17, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
According to Complainant, it first adopted and used
the GIRLS GONE WILD mark to identify its goods in December, 1998. Complainant
registered the GIRLS GONE WILD mark with the United States Patent and Trademark
Office on December 12, 2000, under the United States
Trademark Registration N°
2,411,851. Complainant asserts that it owns the registration, which is and
continues to be in full force
and effect. On January 21, 1999, Complainant
registered the <girlsgonewild.com> domain name, which has been its
official web
site since January 21, 1999, up to the present date.
Complainant states that it has used the GIRLS GONE
WILD mark continuously since December, 1998, to identify its pre-recorded
visual
media and related products. Complainant’s goods are sold via telephone
orders, retail sales and online sales through its website
at
<girlsgonewild.com> and extensively promoted throughout the United States
and certain foreign countries via television commercials
and infomercials,
printed advertisements in nationally distributed publications and promotions
and advertising over the Internet.
As a result, the GIRLS GONE WILD mark has
become recognizable throughout the United States and in certain foreign
countries and is
a valuable asset symbolizing Complainant, its quality visual
media and its goodwill.
Complainant alleges that Respondent, with actual
notice of Complainant’s ownership of the GIRLS GONE WILD mark and Complainant’s
operation
of its official web site at the <girlsgonewild.com> domain
name, registered the <girlsgonewildusa.com> domain name, which
comprises Complainant’s mark with the suffix “USA” at the end of the mark. As
stated in the Complaint, Complainant
itself has its principal place of business
in the United States of America and its pre-recorded visual media concerns
events taking
place in the United States of America. Respondent registered the
domain name <girlsgonewildusa.com> through Tucows, Inc. on
or about April 27, 2003, knowing that the registration and the manner in which
it was intended to be used
would directly or indirectly infringe the legal
rights of Complainant. Consequently, Complainant alleges that Respondent’s
domain
name, <girlsgonewildusa.com>, is confusingly similar to the
Complainant’s GIRLS GONE WILD mark and its official site at the
<girlsgonewild.com> domain name.
Complainant further asserts that Respondent has no
rights or legitimate interest with respect to the domain name <girlsgonewildusa.com>,
and is using the domain name in bad faith. The domain name at issue was
registered by Respondent for the sole purpose of commercial
gain by creating
confusion with Complainant and its GIRLS GONE WILD mark and by potentially
selling the infringing domain name to
Complainant. Complainant says that the
Respondent is not commonly known by the domain name and has not acquired any
trademark or
service mark rights in the domain name. Respondent has not used
and has no intention of using the domain name or a name correspondent
to the
domain name in connection with a bona fide offering of goods and services.
Additionally, Complainant contends that Respondent was
neither licensed nor authorized to use Complainant’s mark and has made no
legitimate,
non-commercial or fair use of the domain name.
Complainant also states that Respondent intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s
website
at the <girlsgonewildusa.com> domain name, by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement.
Upon entering the conflicting domain name,
Internet users are confronted with a long page containing various banners and
links using
the GIRLS GONE WILD mark as well as Complainant’s logo and
screenshots from its copyrighted works. It features links to the “Girls
Gone
Wild Collection” which direct users to another Internet retailer (AsOnTV.com)
which sells a variety of goods, including some
of Complainant’s goods.
Respondent is not authorized or licensed to use Complainant’s GIRLS GONE WILD
mark for any purpose and <AsOnTV.com>
is not permitted to authorize or
license any use of the GIRLS GONE WILD mark for its affiliates. Complainant
believes that Respondent
has intentionally sought to confuse Internet visitors
as to the source, sponsorship, affiliation or endorsement of his website by
using the disputed domain name to lead consumers to a website offering for sale
certain goods associated with the Complainant. Respondent’s
use of
Complainant’s GIRLS GONE WILD mark and copyrighted works (logo, box art and
footage) falsely suggests that <girlsgonewildusa.com> is either
Complainant’s official site or that a relationship exists between Complainant
and <girlsgonewildusa.com>.
Complainant asserts that on September 5, 2003, its
counsel sent a cease and desist letter to Respondent demanding that he stop the
use of Complainant’s trademark and copyrighted works at the <girlsgonewildusa.com>
domain name and transfer the domain name to Complainant. By an e-mail dated
September 7, 2003, Respondent refused to comply with these
demands. Respondent
did remove the GIRLS GONE WILD logo, but refused to cease his use of the GIRLS
GONE WILD mark throughout the
site. By e-mail correspondence dated September 8,
2003, Complainant’s counsel reiterated the demands set forth previously and
noted
Respondent’s involvement in a prior domain name dispute where the Panel found that Respondent had
registered and used 13 different domain names in bad faith. Sweetface Fashion Co. v. Molden, FA 104947 (Nat. Arb. Forum Mar. 26,
2002). On September 9, 2003, Respondent replied to this correspondence
by claiming that a recent U.S. Supreme Court case justified his conduct.
Respondent also made a veiled offer to sell the disputed domain name
registration to Complainant.
Based on the above, Complainant requests the Panel to
order the transfer of the conflicting domain name from Respondent to
Complainant.
B.
Respondent
Respondent does not dispute Complainant’s
rights over the GIRLS GONE WILD trademark and its official domain name
<girlsgonewild.com>.
However, Respondent contends that Complainant
is completely incorrect in stating that he registered the domain name <girlsgonewildusa.com>
knowing that the registration and the manner in which it was intended to be
used would directly or indirectly infringe the legal
rights of Complainant.
According to Respondent, this is a subjective opinion, not based on any facts.
Respondent asserts that he has a
legitimate reason to use the domain name at issue, as he is legally entitled to
sell Complainant’s
products under the name of “Girls Gone Wild Collection”,
through being an affiliate of As Seen on TV. As Respondent is legally entitled
to sell Complainant’s products which include the words “Girls Gone Wild”, then
it makes perfect sense to use the words in Respondent’s
domain name.
Respondent alleges that he has rights or
legitimate interest with respect to the domain name <girlsgonewildusa.com>,
and is using the domain name in good faith.
Respondent states that he registered the
domain name <girlsgonewildusa.com>, for the sole purpose of
selling “Girls Gone Wild Collection” products and has no intention of
potentially selling the infringing
domain name to Complainant. When Complainant
states otherwise, this is a subjective opinion not based on any factual
evidence.
According to Respondent, he has used the
domain name in connection with a bona fide offering of goods and services.
Further,
Respondent contends that he has not intentionally attempted to attract, for
commercial gain, Internet users to his web site
at <girlsgonewildusa.com>,
by creating a likelihood of confusion with Complainant’s GIRLS GONE WILD mark
as to the source, sponsorship, affiliation, or endorsement.
As previously
mentioned, Respondent is legally entitled to sell products containing the GIRLS
GONE WILD mark
Respondent
considers that Complainant’s reference to Respondent’s involvement in a prior
domain name dispute, Sweetface Fashion Co., FA 104947, is irrelevant to
the case at hand. If it were relevant, Respondent would note that Complainant
has been involved in prior
legal disputes with regard to the production of
videos.
Regarding Respondent’s September 9, 2003
correspondence, Respondent did not claim that a recent U.S. Supreme Court case
justified
his conduct, but wanted to ensure that Complainant is familiar with
the facts of the case. Respondent makes reference to the decision
issued on
March 4, 2003, by means of which the United States Supreme Court found that
Victoria's Secret did not present effective
evidence that its trademark was
harmed by a small adult shop named "Victor's Little Secret." The
Court's decision held
that although V Secret, the owner of Victoria's Secret
stores and catalogue, had an interest in protecting its famous trademark,
federal trademark law required it to present evidence that the Defendant actually
caused harm to the trademark. In the present case,
Complainant has provided no
evidence that Respondent’s use of the domain name <girlsgonewildusa.com>
has harmed or compromised its trademark in any way.
As for Complainant’s assertion that
Respondent made a “veiled offer to sell the domain name to Complainant”,
Respondent considers
that this is a case of Complainant using faulty subjective
interpretation of the communication to come to an absurd conclusion.
Therefore, Respondent requests that the
Panel denies the relief sought by Complainant.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Likewise,
paragraph 10 (d) of the Rules for Uniform Domain Name Dispute Resolution
Policy, provides that “[t]he Panel shall determine
the admissibility,
relevance, materiality and weight of the evidence.”
In the
present case, the Panel wants to place emphasis in the importance of the
evidence filed by the parties to prove their assertions,
which has been studied
to determine its relevance and weight in arriving to a decision. The Panel
wishes to clarify that the statements
that have been accompanied by evidence
have been given more importance than the mere statements made by the parties
without further
demonstration of their existence. Likewise, the Panel has
accepted as enough evidence of a fact the documentation filed by a party
that
has not been contested by the other party.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant
has filed evidence of its United States trademark registration of GIRLS GONE
WILD as a word mark, to cover “prerecorded
videotapes featuring adult
entertainment”, goods included in International Class 9. The trademark is
registered as Registration Nº
2,411,851, registered as of December 12, 2000,
and according to such document, the first use of the GIRLS GONE WILD mark was
made
on December 1, 1998.
The
existence of this trademark was not contested by Respondent.
Furthermore, the domain name <girlsgonewildusa.com>
was adopted by Respondent on April 27, 2003, well after Complainant began
using its trademark GIRLS GONE WILD in commerce and registered
it before the
United States Patent and Trademark Office.
The
Panel notes that Respondent’s domain name <girlsgonewildusa.com>
comprises Complainant’s trademark GIRLS GONE WILD and adds the word “USA” at the
end of the mark. Notwithstanding, such addition
is not enough to serve as a
differentiator between both signs, taking into account Complainant’s assertion
that: “[n]otably, Complainant itself has its principal place of business in
the United States of America and its pre-recorded visual media
concerns events
taking place in the United States of America.” This allegation was not
contested by Respondent and hence, it is accepted by the Panel.
The
addition of the word “USA” to the domain name in question serves only to
increase the confusing similarity with Complainant and
its products, moreover
considering that Complainant’s mark is registered before the Trademark Office
of the United States of America.
Given the fact that such a word indicates to
the public that the domain name is somehow related to the United States of
America,
which is indeed the case, the addition of “USA” to Complainant’s
trademark in the domain name does not affect a finding of confusingly
similarity between Complainant’s trademark and Respondent’s domain name.
In
the case between Bloomberg L.P. v. Sein M.D. [1],
involving similar domain names, the Panel found out the following:
“On its face, the domain names
registered by the Respondent are confusingly similar to Complainant's mark, BLOOMBERG.
The domain names
incorporate the mark BLOOMBERG in addition to the words
"CHINA" and "JAPAN." The mere addition of a geographic
identifier does not render the distinctive trademark such as BLOOMBERG
diminished, nor does an addition of the words "CHINA"
and
"JAPAN" controvert the ownership of trademark or service mark rights
in the Complainant. See CMGI, Inc. v. Reyes, D2000-0572
(WIPO Aug. 8, 2000)
(finding that the domain name <cmgiasia.com> is confusingly similar to
complainant’s CMGI mark); Net2phone
Inc, v. Netcall SAGL, D2000-0666 (WIPO
Sept. 26, 2000) (finding that the Respondent’s registration of the domain name
<net2phone-europe.com>
is confusingly similar to complainant’s mark…"the
combination of a geographic term with the mark does not prevent a domain name
from being found confusingly similar."). Therefore, the Panel finds that
the domain names are confusingly similar to Complainant’s
mark.”
Another
previous Panel, in the case between America Online, Inc. v. Dolphin@Heart[2],
decided the following:
“The addition of
the name of a place to a service mark, such as the addition of
"France" to "AOL", is a common
method for specifying the
location of business services provided under the service mark. The addition of
a place name generally does
not alter the underlying mark to which it is added.
A consumer or user of the Internet viewing the address
"www.aolfrance.com"
is likely to assume that Complainant is the
sponsor of or associated with the website identified by the disputed domain
name, particularly
in light of the fact that Complainant routinely uses its
"AOL" service mark in combination with country names in its
advertisements
on the Internet. The elimination of the space between
"aol" and a country name is dictated by technical factors and customary
practice among domain name registrants, and is without legal significance from
the standpoint of comparing "AOL" and "AOL.COM"
to
"aolfrance.com", "aolgermany.com",
"aolireland.com" and "aolspain.com". The panel determines
that "aolfrance.com", "aolgermany.com",
"aolireland.com" and "aolspain.com" are confusingly
similar
to the service marks "AOL" and "AOL.COM" in which
Complainant has rights.”
The
word “USA”, which refers to the United States of America, is a geographic term
that can not be appropriated by neither Respondent
nor Complainant. The word
“USA” is widely used by any person or entity who wishes to emphasize in a
connection with the country named
United States of America. As a consequence,
it cannot be considered as a word with such distinctive force that, when added
to a registered
trademark, results in a completely new expression that could be
perceived by the consumers as a new word not linked to the original
trademark.
Additionally,
the Panel notes that the “.com” suffix is not an element to be considered when
analyzing the identity or similarity
between the Complainant’s trademark and
the conflicting domain name. See Wal-Mart Stores, Inc. v. Walsucks[3],(“The
addition of the generic top-level domain (gTLD) name ".com" is
without legal significance since use of a gTLD is
required of domain name
registrants, ".com" is one of only several such gTLDs, and
".com" does not serve to identify
a specific enterprise as a source
of goods or services”.)
On
the other hand, it is important to point out that in the present case, the
Respondent has not tried to demonstrate that his domain
name does not
correspond to the Complainant’s trademark “GIRLS GONE WILD”. On the contrary,
the Respondent has accepted that the
domain name incorporates the Complainant’s
trademark, and has not presented any allegation against a finding of
confusingly similar
between his domain name and the Complainant’s mark.
Considering the Complainant’s registered
trademark, “GIRLS GONE WILD”, and the relevant part of the Respondent’s domain
name <girlsgonewildusa>, the Panel concludes that they are
confusingly similar and therefore, the Complainant has met the requirement of
paragraph 4(a)(i)
of the Policy.
Paragraph
4(c) of the UDRP, determines that the following circumstances, in particular
but without limitation, if found by the Panel
to be present, shall demonstrate
the Respondent’s rights or legitimate interests to the domain name:
(i)
Before any
notice to Respondent of the dispute, it has used or made 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)
Respondent
(as an individual, business, or other organization) has been commonly known by
the domain name, even if he has acquired
no trademark or service mark rights;
or
(iii)
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.
Respondent alleges that he has rights and
legitimate interests over the domain name <girlsgonewildusa.com>,
as he is legally entitled to sell Complainant’s products named “Girls Gone Wild
Collection” through being an affiliate of the distributor
“As Seen on TV.”
According to Respondent, since he,“is legally entitled to sell the
Complainant’s products which include the words “Girls Gone Wild”, then it makes
perfect sense to
use the words in the Respondent’s domain name.”
The Panel does not agree with
Respondent’s consideration. The fact that Respondent is an authorized seller of
Complainant’s products,
as an affiliate of As Seen On TV, does not entitle him
to use Complainant’s mark in his domain name without the previous existence
of
an authorization or license granted by Complainant as the legal owner of the
GIRLS GONE WILD trademark.
The Complainant has stated in the
Complaint that, “Respondent was not licensed or authorized to use
Complainant’s Girls Gone Wild® mark for any of the periods during which he has
registered
the domain name at issue.” Further, Complainant expressed that, “Respondent is not
authorized or licensed to use Complainant’s Girls Gone Wild® mark for any
purpose and AsOnTV.com is not permitted
to authorize or license any use of the
Girls Gone Wild® mark for its affiliates.”
These assertions were not contested by
Respondent and therefore the Panel concludes that Complainant has not licensed
or authorized
Respondent in any manner whatsoever, either directly or through
the Internet retailer As Seen On TV a/k/a <asontv.com>, to
use its
registered trademark in the conflicting domain name.
A previous Panel in the case of Stanley
Works v. Cam Creek Co.[4],
stated the following:
“even if Respondent is a retail seller of Complainant’s
products, the collateral trademark use necessary to allow resell of
Complainant’s
products is not enough to give Respondent proprietary rights in
Complainant’s trademarks, and certainly not enough to confer the
right to use
these trademarks as domain names. Many famous trademarks designate goods that
are manufactured and sold through numerous
retail stores. But this, without
something more such as authorization in a licensing agreement or other special
circumstances, does
not give the retail sellers rights of domain name magnitude
over the manufacturer’s trademarks. This Panel finds Respondent does
not have
sufficient rights or interests in the trademarks to allow Respondent to
register them as domain names.”
Respondent attaches to his Response
printouts of the websites that demonstrate that he is a retailer of
Complainant’s products, through
being an affiliate of <AsOnTv.com>. None
of the documents filed by Respondent allow the Panel to conclude that as a
result
of the Respondent’s affiliation with <AsOnTv.com> or Commission
Junction, he is somehow authorized or licensed to include the
trademark
corresponding to the products that he sells in his domain names.
Additionally, Respondent contends that he
is using the domain name <girlsgonewildusa.com> in connection with
a bona fide offering of goods and services, namely, an offering to sell
Complainant’s products named “Girls Gone
Wild Collection”. Taking into account
that, as stated above, Respondent is not authorized to use Complainant’s registered
mark in
his domain name, the Respondent’s commercial activity through the
domain name at issue can not be considered as being bona fide.
The Panel in the case of Gorstew Ltd. v.
Caribbean Tours & Cruises[5],
concluded that:
“Respondent acknowledges that it
registered these domain names with the specific intent desire to sell services
to customers who wish
to go to resorts owned and operated by Complainants,
presumably for which Respondents would be paid a standard travel agent
percentage
or fee. This is classic trademark infringement, even if
the ultimate result of same is that some revenue flows to the owner of
the marks.”
It is clear for the Panel that
Respondent’s intention when registering and using the domain name <girlsgonewildusa.com>
was to obtain revenues from the commercialization of Complainant’s products.
Whether he made some profits or not, is of no concern
for the present case[6].
What matters to the Panel is that Respondent deliberately decided to pursue his
commercial activity by registering and using a domain
name that incorporates
Complainant’s trademark in its whole, knowing that he lacked Complainant’s
authorization to do so. This precludes
the possibility of finding rights and
legitimate interests on the part of the Respondent.
It is important to take into account that
the Respondent was also aware of the existence of Complainant’s official
website at the
<girlsgonewild.com> domain name, but nevertheless
registered the domain name <girlsgonewildusa.com>, which is
obviously confusingly similar to Complainant’s. The similarity between both
domain names allowed Respondent to attract
Internet users to his website, using
unlawful tactics. Therefore, the commercial activity undertook by Respondent is
not a bona fide
use of the domain name. Complainant’s domain name
<girlsgonewild.com> was registered on October 16, 2002, well before
Respondent
registered his domain name on April 27, 2003, as evidenced in the
exhibits of the Complaint. In the opinion of the Panel, this circumstance
also
weighs against Respondent, since he registered and used his domain name knowing
that it could be infringing the trademark rights
of Complainant and causing
confusion with Complainant itself, Complainant’s products and Complainant’s
official website.
Based on all the above, the Panel finds
that Complainant has demonstrated that Respondent has no rights or legitimate
interests in
the domain name under controversy and that Complainant met the
requirements of paragraph 4(c) of the Policy.
According
to paragraph 4(b) of the UDRP, the following circumstances, in particular but
without limitation, if found by the Panel
to be present, shall be evidence of
the registration and use of a domain name in bad faith:
(i)
Circumstances
indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly
related
to the domain name; or
(ii)
Circumstances
indicating that Respondent has registered the domain name in order to prevent
the owner of the trademark or service
mark from reflecting the mark in a
corresponding domain name, provided that Respondent has engaged in a pattern of
such conduct;
or
(iii)
Circumstances
indicated that Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor;
or
(iv)
Circumstances
indicating that, by using the domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet
users to his 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 his web site or location or of a product or service on his web site or
location.
Complainant contends that Respondent
registered the domain name <girlsgonewildusa.com> in bad faith,
with the sole purpose of commercial gain by creating confusion with
Complainant’s trademark. According to Complainant,
Respondent registered and
uses the domain name to create a likelihood of confusion with Complainant’s
mark as to the source, sponsorship,
affiliation or endorsement of the domain
name.
As stated in the Complaint, and
demonstrated by the evidence attached to it, the representatives of Complainant
sent a cease and desist
letter to Respondent on early September, 2003,
demanding the immediate cease of the use of Complainant’s trademark and
copyrighted
words at the <girlsgonewildusa.com> domain name as
well as the transfer of the domain name to Complainant. A printout of
Respondent’s webpage as it was on September
5, 2003, is attached to the
Complaint as Exhibit D. When examining the printout of the web page at
<girlsgonewildusa.com>,
as it was on September 5, 2003, it can be noticed
that Complainant’s trademark was widely used and nothing in the page clarified
to the visitors that the web page was not the official website of the
legitimate owner of the GIRLS GONE WILD trademark.
On September 7, 2003, the representatives
of Complainant received an e-mail from Respondent, in which he refuses to
comply with the
demands of the cease and desist letter.
However, Complainant noticed that
Respondent’s webpage was modified, by removing the GIRLS GONE WILD logo from
the top of the page
and adding a disclaimer at the bottom of the page. The
Panel visited the Respondent’s site on October 30, 2003, and could evidence
that the following message is posted:
“This site is
not associated or affiliated with Mantra Films, Inc.
owners of
girlsgonewild.com in any way or form.
This page last
modified September/2003”
In the opinion of the Panel, the posting
of this disclaimer after Respondent received the cease and desist letter from
Complainant’s
attorneys is not enough to be used as evidence of good faith on
the part of Respondent. Respondent opted for removing some conflicting
elements
from the website and adding a disclaimer, but decided not to transfer the
domain name to its legitimate owner, as requested
by Complainant. Although
being duly informed of the industrial and intellectual property rights on the
head of Complainant, Respondent
decided to continue operating his website and
to keep the conflicting domain name, knowing that it was causing confusion and
infringed
the rights of a third party.
The confusion caused by Respondent’s
domain name was emphasized by the fact that the domain name <girlsgonewildusa.com>
is highly similar to Complainant’s official domain name
<girlsgonewild.com>, the existence of which Respondent was aware. The
Panel considers that this demonstrates that Respondent has intentionally
attempted to attract, for commercial gain, Internet users
to his website,
taking unlawful advantage of the similarity between the domain name at issue
and Complainant’s mark and official
domain name.
On September 8, 2003, the representatives
of Complainant sent a new communication to Respondent insisting in their
demands and stating
that in case of failure by Respondent to comply with such
demands, Complainant would proceed with the pertinent legal actions. Respondent
answered this communication on September 9, 2003 by refusing again to comply
with Complainant’s requests. In his e-mail, Respondent
made the following
statement:
“If you feel that the best use of your client’s resources is
to pursue a remedy using one of the available domain name dispute arbitration
forums available, then this is your decision, as I stand by my previous
statement. If you prefer to take an approach which doesn’t
emphasize the word
“demand”, then you may be able to resolve this matter more efficiently.”
This statement was understood by
Complainant as a veiled offer to sell the domain name to Complainant.
Respondent, on the contrary,
states that this is a subjective interpretation of
the communication “to come to an absurd conclusion.” Given the facts of
this case, the Panel notes that the offer to sell the domain name was not
expressly made by Respondent. However,
it is not “absurd” to conclude
that it was precisely the purpose of Respondent when sending the cited e-mail
to the representatives of Complainant.
Notwithstanding, the Panel does not
believe that this evidences that Respondent registered the domain name primarily
for the purpose of selling it to Complainant, for valuable consideration in
excess of Respondent’s documented out-of-pocket costs directly related to the
domain name, as required by Policy paragraph 4(b)(i). The veiled proposal
made by Respondent does not lead to the determination that an intention
to sell
the domain name was the main purpose of Respondent when registering the domain
name at issue. The veiled offer also does
not show that Respondent tried to
sell the domain name for an excessive price. Thus, this allegation of
Complainant is not taken
into account by the Panel in finding bad faith in the
part of Respondent.
In his Response, as well as in the
communications between the parties, Respondent made a reference to the decision
issued by the United
States Supreme Court in the case of Victor’s Little Secret
v. V. Secret Catalogue, Inc.[7]
According to Respondent, in this case the United States Supreme Court found
that V. Secret Catalogue, Inc. did not present proof
of dilution and harm of
its trademarks by Victor’s Little Secret, and therefore, the case could not
succeed.
The Panel wishes to clarify to Respondent
that the Victoria’s Secret case was decided under the Federal Trademark
Dilution Act of
the United States of America, and not under the UDRP as the
present case. Moreover, the Victoria’s Secret case did not involve a
domain
name dispute like in the present matter.
In the opinion of the United States
Supreme Court, the Federal Trademark Dilution Act requires a trademark owner to
demonstrate tarnishment
and dilution of its trademark by the infringer. This is
not the case of the Policy, which requires Complainant to prove the three
elements provided in paragraph 4(a), and not any others such as blurring,
harming or dilution of Complainant’s marks. As a consequence,
the precedent
cited by Respondent is not applicable to this domain name dispute.
However, taking into account that
Respondent believes that the Victoria’s Secret case is of use in this matter,
the Panel wishes to
cite a pertinent part of the United States Supreme Court’s
decision that could change the Respondent’s opinion as to the favorability
of
this decision to his case:
“Noting that consumer surveys and other means of demonstrating actual
dilution are expensive and often unreliable, respondents and
their amici argue that evidence of an actual
“lessening of the capacity of a famous mark to identify and distinguish goods
or services,” §1127,
may be difficult to obtain. It may well be, however, that
direct evidence of dilution such as consumer surveys will not be necessary
if actual dilution can reliably be proven through circumstantial evidence—the
obvious case is one where the
junior and senior marks are identical.” (emphasis added)[8]
Since in the present case, Respondent’s
domain name incorporates Complainant’s trademark in its entirety, the United
States Supreme
Court’s discussion as to the obligation of presenting enough
evidence of the tarnishment or blurring of the mark would not be necessary.
As stated before, the bad faith of
Respondent consists in his registration and use of the domain name with the
purpose of creating
a likelihood of confusion as to the source or affiliation
of his domain name <girlsgonewildusa.com> with Complainant, its
trademark GIRLS GONE WILD and its official website at
<girlsgonewild.com>. Respondent was fully aware
of the existence of the
trademark rights on the head of the Complainant, as a reseller of Complainant’s
products, but nevertheless
decided to register and operate the domain name in a
way that leads the visitors and consumers into error as to the endorsement of
his domain name by Complainant. Likewise, Respondent was aware of his lack of
rights in the GIRLS GONE WILD mark, and of the fact
that he was not authorized
by the trademark owner to use the mark in a domain name, but did nothing to
prevent a risk of confusion
among the visitors to his website until he received
a cease and desist letter from the representatives of Complainant. Respondent
registered and uses the domain name at issue to attract Internet users to his
website for commercial gain, infringing the trademark
rights of Complainant.
In a similar case, held between Associated Materials, Inc.
v.Perma Well, Inc.[9], the Panel
found out the following:
“Respondent
has actual knowledge of Complainant’s rights in the ULTRAGUARD mark. Respondent is a distributor of Complainant,
and is on notice as to Complainant’s rights in the ULTRAGUARD mark through that
relationship. Similarly, Respondent is
on notice of its own lack of rights; thus, Respondent’s registration of the
<ultraguardfence.com> domain name despite this actual notice is
evidence of bad faith registration. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when
Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Entrepreneur Media,
Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can
infer an intent to
confuse").
“Respondent
is using a domain name that is confusingly similar to Complainant’s mark in
order to divert Internet traffic interested
in Complainant’s product to
Respondent’s website. This behavior is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)
because Respondent is using a confusingly
similar domain name to cause Internet
confusion for commercial gain. See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that Respondent registered and
used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name
to attract Internet users to its commercial website); see
also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar.
21, 2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored
by Respondent).”
Considering the aforementioned, the Panel
finds that Complainant met its burden of proof in demonstrating that Respondent
registered
and uses the domain name in bad faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <girlsgonewildusa.com>
domain name be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: October 31, 2003
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