Pride Studios Inc. v. Global Access
Claim Number: FA0802001154068
PARTIES
Complainant is Pride Studios Inc. (“Complainant”), represented by Chad
Belville, of
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <boygonebad.com> and <circlejerkboy.com>, registered with Fabulous.com Pty Ltd.
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 29, 2008.
On February 28, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <boygonebad.com> and <circlejerkboy.com> domain names are registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 March 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 1, 2008 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@boygonebad.com and postmaster@circlejerkboy.com by e-mail.
A timely Response was received and determined to be complete on April 1, 2008.
On
April 7, 2008, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant registered the domain names, <boysgonebad.com> and <circlejerkboys.com>, in May and September 2002, respectively, as online services allowing Internet users to pay for the opportunity to view young men engaged in sexual experiences.
- Through the use referred to above, Complainant has garnered common law service mark rights in those domain names.
- Complainant has spent hundreds of thousands of dollars in marketing said domain names and the exclusively produced content found at the web sites connected to the same. Complainant’s web sites have been recognized for their unique and quality content, receiving positive reviews from various critics and internet review blogs.
- The disputed domain name, <boygonebad.com>, is confusingly similar to Complainant’s service mark, BOYSGONEBAD; and the disputed domain name, <circlejerkboy.com>, is confusingly similar to Complainant’s service mark, CIRCLEJERKBOYS. In each case the names are identical except for the deletion of an “s” (i.e., transforming a plural reference to the singular).
- Respondent has no rights or legitimate interests in the disputed domain names. Respondent has never been commonly known by either of those names. Respondent’s use of the domain names in question is definitely not noncommercial. Respondent’s use of the names to provide links to third party web sites that offer services that compete directly with those provided at Complainant’s web sites is not a bona fide offering of goods or services.
- Respondent registered and is using the disputed domain names in bad faith. Respondent’s actions are an obvious case of cyber-squatting. Respondent has registered over 30,000 domain names, many of which are simply misspellings of domain names own by third parties. Respondent is engaged in the practice of collecting revenue by diverting Internet users to competing web sites through deception and confusion with trademarks and domain names established by legitimate businesses.
B. Respondent
- Respondent acquired the domain names at issue as part of a bulk acquisition of domain names. Respondent searched for, but did not find, registered trademarks or service marks corresponding to the disputed domain names. After Complainant informed Respondent of Complainant’s rights in similar domain names and service marks, Respondent offered to transfer the disputed domain names for no charge.
- Respondent did not register or use the disputed domain names in bad faith.
- Respondent requests that the disputed domain names be transferred to Complainant without findings of fact relating to the elements required under the Policy.
FINDINGS
Complainant and Respondent agree that the disputed domain names, <boygonebad.com> and <circlejerkboy.com>, should be transferred to Complainant.
DISCUSSION
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.”
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.
Notwithstanding the aforementioned Policy requirements, the Panel shall render no findings in this case because there is no real dispute to be resolved. Respondent has agreed with Complainant as to the immediate transfer of the disputed domain names. Since there is no evidence that the agreement is not genuine, the Panel believes that its duty is to comply with the wishes of both Complainant and Respondent. Respondent has supplied the Panel with numerous prior UDRP decisions where panels have chosen this course of action when confronted with similar circumstances. See, for example, Body Shop Int’l plc v. Agri, Lacus & Caelum LLC, FA 679564 (Nat. Arb. Forum May 25, 2006) (“Because both Complainant and Respondent request the transfer of the disputed domain name to Complainant, the Panel must recognize the common request of the two parties.”); Diners Club Int’l Ltd. v. Nokta Internet Techs., FA 720824 (Nat. Arb. Forum Aug. 2, 2006); and Ladbrokes Betting & Gaming Ltd. v. Privacy Ltd. Disclosed Agent for Yolapt, D2007-1702 (WIPO Jan. 7, 2008).
DECISION
Accordingly, it is Ordered that the <boygonebad.com> and <circlejerkboy.com> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: April 17, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum