Justin.tv, Inc. v. Amador Holdings Corp / Alex Arrocha
Claim Number: FA1203001436777
Complainant is Justin.tv, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Amador Holdings Corp / Alex Arrocha (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <justintv.com> and <jtvshows.com>, registered with POWER BRAND CENTER CORP.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Sir Ian Barker as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2012; the National Arbitration Forum received payment on March 28, 2012.
On April 3, 2012, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <justintv.com> and <jtvshows.com> domain names are registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the names. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@justintv.com, postmaster@jtvshows.com. Also on April 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 27, 2012.
Timely Additional Submissions were received from the Complainant on May 2, 2012 and the Respondent on May 4, 2012.
On May 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker as Panelist.
The Complainant complained in its Additional Submissions about the lack of a signature in the Response and submitted that the Response should therefore be disregarded. The Panel accepts the Respondent’s explanation of inadvertance and will consider the Response.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant conducts lifecasting video – i.e. non-stop video blogging. Its users in numerous countries share videos and chat in real time with other viewers. The Complainant operates through its <justin.tv> website which has 41 million visitors per month. It hosts more than 428,000 channels streaming real-time video.
The Complainant registered the domain name <justin.tv> in 2006 and since 2007 has used the website of this domain name to market its JUSTIN.TV services such as video blogging and streaming.
For years before the disputed domain names were registered to the current registrants, Complainant used the JUSTIN.TV brand throughout the world. Its services have been written about favourably in well-known media outlets.
Although the Complainant owns no registered trademarks, the JUSTIN.TV brand has become well-known through the Complainant’s extensive marketing and its years of success. The Complainant has common law trademark rights.
Registration of the disputed domain name <justintv.com> to the present Respondent took place on March 14, 2012. WHOIS records show previous registration to other entities.
When the website under either of the disputed domain names is entered, a dialogue box appears on screen with a congratulatory message offering a prize if the visitor enters an email address. Upon clicking the ‘OK’ button, the website, thus revealed, imitates the Complainant’s website. The Complainant’s mark is displayed as are the words ‘LIVE CHANNEL’ written in white, next to a search function.
From the time of the current registration of the disputed domain names to the present Respondent, the disputed domain names resolved to another copycat website. The disputed domain names are both confusingly similar to the Complainant’s common law mark.
The disputed domain name <justintv.com> is nearly identical to the Complainant’s mark which is commonly referred to as “justintv” without the dot. The disputed domain name <jtvshows.com> simply abbreviates the Justin word and lengthens the tv term by adding the word ‘shows’.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant gave the Respondent no such rights or interests. The Respondent uses the disputed domain names to attract internet users to the websites and capitalizes on the confusion caused to internet users by the sites which copycat the Complainant’s sites.
The Respondent has registered and is using the disputed domain names in bad faith. The disputed domain names were registered long after the Complainant began using its common law mark. They were registered to take advantage of the value and goodwill associated with the JUSTIN.TV mark. Such conduct has been held to be bad faith under many decisions under the Policy. The Respondent is attempting to profit from the fame of the Complainant’s mark.
Bad faith at the time of registration by the Respondent is shown by:
(a) presumed actual knowledge of the Complainant’s mark;
(b) the Respondent’s blatant attempt to take advantage of the Complainant’s goodwill in its mark; and
(c) the Respondent’s use of the disputed domain names to disrupt the Complainant’s business with a copycat website that attempts to collect private information from users under false pretences.
B. Respondent
The Complainant has no registered trademark. A trademark search shows ‘JTV’ marks belonging to others.
The Complainant’s unregistered mark and the disputed domain names are neither identical nor confusingly similar.
The Complainant utilizes .TV – a country code – rather than .com. The Complainant’s mark is Justin.tv, with the dot, as was expressed in a published interview with one of the Complainant’s founders.
The Complainant’s mark is merely descriptive or generic. The common forename “Justin” is generic and refers to various celebrities who bear that name. The Complainant has not shown common law trademark rights sufficient to meet the burden of overcoming a generic term. There is no evidence of significant secondary meaning. There is no evidence of consumer surveys or other studies to show that the public has come to associate the disputed domain name with JUSTIN.TV.
Nor is the disputed domain name <jtvshows.com> identical or confusingly similar to the Complainant’s unregistered mark. The Complainant has no trademark rights in the term ‘JTV Shows’. No association between ‘JTV Shows’ and ‘JTV’ has been shown.
The Complainant has not shown that unregistered trademarks are recognised in Chile where the Respondent carries on business.
The Complainant’s mark is neither famous nor distinctive but is generic. The laudatory media articles were published in 2010 not at the time of the Complainant’s launch in 2007. Panels have routinely denied relief to claimants asserting rights in popular forenames like Justin which is too generic to justify a grant of exclusive rights.
The Complainant cannot base its claim to rights on a stylized Justin.TV mark. The Complainant’s websites are properly identified as being those of the disputed domain names and not those of Justin.TV. There is no intent to deceive users.
Various decisions under the Policy were cited by the Respondent on what must be established to justify a finding that the Complainant has a common law trademark. In particular, the Respondent claims that there is no proof of secondary meaning, nor evidence of advertising, volume sales or length or manner of use was provided. The claim for 41 million unique visitors does not state the time period for this number. The media articles are not international, nor do any refer to ‘jtvshows’.
The Respondent is a Chilean entity in the business of marketing and advertising by means of internet-driven surveys. Its business has no overlap with the Complainant’s. The Respondents makes a bona fide offering of services. The Complainant has not proved that the Respondent has no legitimate rights or interests in the disputed domain name.
The Respondent did not know of the Respondent’s unregistered trademark when the disputed domain names were registered. The alleged trademark was generic.
The Respondent is not using the disputed domain names in bad faith when it conducts its advertising and marketing surveys online. Having rights in a mark does not preclude another from establishing rights in it – particularly when the alleged mark is a common word. The Complainant is not entitled to an exclusive right to use a banner, search function or browse button. No confusion has been proved.
Registration of the disputed domain name <justintv.com> was completed on October 4, 1999 and the domain name has been owned by Alex Arrocha since then through companies and/or partners. This was long before the Complainant’s business commenced.
The disputed domain name <jtvshows.com> although registered in March 2012, was to have been used in conjunction with the other disputed domain names but the Respondent has been delayed in starting a project “as a result of the Complainant’s unwarranted actions”.
C. Complainant’s Additional Submissions
As at May 1, 2012, internet visitors to the Respondent’s websites are still forwarded to a “Sham” website that offers a free iPhone in exchange for taking part in a survey. Apart from this survey, the website remains a copycat of the Complainant’s website. Consequently, the Respondent is exploiting the goodwill of the Complainant’s brand and is confusing internet users into thinking there is some connection between these websites and the Complainant.
The Complainant has clearly established common law trademark rights in the JUSTIN.TV mark by:
(1) documenting its substantial web-traffic;
(2) showing coverage of its services in journals such as the ‘New York Times’ and ‘The Guardian’; and
(3) illustrating how it uses its brand to promote its services online. A declaration under penalty from Emmett Shear, one of the Complainant’s co-founders, supports these contentions. In particular, this declarant states that the Complainant’s website has had over 800 million visitors since the 2007 launch – about 50-100 million visits a month. Since 2009, about 1 million visits per month are from Chile. The Complainant’s employees and customers typically refer to the Complainant as JUSTIN TV (without the dot).
The Respondent is passing off the Complainant’s mark which is one proof of a common law mark.
An Alexa.com report shows that the Complainant’s website is the 356th most-visited site in Chile. The Chilean press has recognised and praised the Complainant’s business achievements.
No case law supports the Respondent’s argument that .TV is not part of the Complainant’s mark. This is not a scenario where a registrant claims only the root term without the TLD indicator. Marks should be evaluated as a whole.
The word ‘Justin’ is not generic when used to promote the Complainant’s services. A secondary meaning has been shown.
The disputed domain name <jtvshows.com> is confusingly similar to the Complainant’s mark. The key elements are present in each and consumers are likely to understand them to be similar in meaning. These users will be confused.
WHOIS records show that the disputed domain names have been transferred many times over the years. Obtaining a domain name by transfer can be in bad faith when the transfer occurs after trademark rights have been acquired. No documentation has been supplied to support the Respondent’s contentions.
D. Respondent’s Additional Submissions
Under United States trademark case law, any permutations derived from adding a gTLD to a mark must be ignored. TLDs serve no source-indicating function and their addition to an otherwise registrable mark cannot render it registrable. .tv is the country code for the small Pacific nation of Tuvalu. This TLD is popular and economically valuable because it is an abbreviation of the word ‘television’. The .tv term is descriptive and does not attract common law rights.
The Respondent quoted a NAF decision, Rosanne Barr v. Texas International Properties Associates – NANA, FA 1155782 (Nat. Arb. Forum May 8, 2008). There, the disputed domain name was <rosannetv.com>. The Complainant asserted that the word ROSEANNE constituted a common law trademark owned by the Complainant, formed as a result of the Complainant’s long running television career, including three television shows, each which ran for multiple seasons. She also published books and DVDs under the name “Roseanne”. In support, the Complainant offered evidence of Google results for “Roseanne” as generating large numbers of results for the Complainant. ROSEANNE was never registered as a trademark with the USPTO. Despite the “great deal of evidence” that Ms. Barr was a well known entertainer, the Panel found that “there simply is no evidence that the name ‘Roseanne’ has acquired a secondary meaning identifying goods or services provided by Ms. Barr” despite her “original and famous television show”.
The Panel concluded that the Complainant’s offerings were insufficient and transfer to the Complainant was denied. Although the Panel recognized that some decisions under the Policy had found personal names to have acquired common law marks, it opined that “many of those decisions are not persuasive”.
The Barr decision is on point. For personal names to become common law trademarks, the public must identify the personal name as a symbol which identifies and distinguishes the goods and services of only the trademark holder. See McCarthy on Trademarks and Unfair Competition, p. 578 (2nd ed. 1984). The Complainant here simply has not met this standard requirement. In this case, the Complainant claims to have rights in the name “Justin” dating back to 2006, but there is scant evidence provided to support this claim, merely copies of pages from the Alexa website, and a declaration from the Complainant’s CEO. Otherwise, there are no advertisements, no invoices, no indication of market share, and no figures for sales or turnover in connection with the goods and services. The Complainant has provided copies of traffic searches, yet this only shows that the Complainant’s website is ranked. There is nothing in this evidence to show the number of hits the site received. In any case, a “hit” simply means that someone looked at the site, not that any goods or services were received in connection with the marks at issue.
The Complainant has not produced sufficient evidence of common law rights. The Respondent quoted from the first edition of the WIPO Overview on Selected UDRP Questions (“the WIPO Overview”) in support. The evidence does not even reach the standard of that offered by the Complainant in the Barr decision. The Complainant’s evidence does not support a claim for common law rights, but is merely a collection of self-serving assertions.
There is no proof that the Respondent knew of the Complainant at the time of registration of the disputed domain names. United States case law was cited to show that registration did not include re-registration. The lack of bad faith at initial registration date is transferable to a future owner.
A declaration under penalty was provided by Alex Arrocha. He declared that he was a “principal” of the Respondent and that he registered the disputed domain name <justintv.com> on October 4, 1999 for the purpose of conducting internet surveys relating to television shows. Since that date, either he or a related company has been the listed registrant of that domain name. When available, he utilized privacy services provided by a registrar or hosting company. He had no knowledge of the Complainant prior to the filing of the Complaint. Each renewal has been without knowledge of the Complainant’s business.
The Respondent is conducting a legitimate business, especially where no portions of the website relate to the Complainant’s offerings. The Respondent’s websites do not offer videos, blogs, or the like.
(1) The disputed domain name <justintv.com> is confusingly similar to the Complainant’s common law trademark.
(2) The disputed domain name <jtvshows.com> is not identical or confusingly similar to the Complainant’s common law trademark.
(3) The Respondent has no rights or legitimate interests in the disputed domain name <justintv.com>.
(4) The disputed domain name <justintv.com> was registered and is being used in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The disputed domain name <justintv.com> is obviously confusingly similar to the Complainant’s trading name JUSTIN.TV. The first question is whether the Complainant has trademark rights in the expression JUSTIN.TV.
In the Panel’s view, the Complainant has established a common law trademark. The sheer unchallenged dimension of its video and blogging facilities is demonstrated by the millions of visitors to the website and its worldwide outreach which has attracted huge consumer acceptance and goodwill.
This finding is not at odds with the following extract from the WIPO Overview (2nd edition) as follows:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
(This quotation is from the Second Edition of the WIPO Overview, not the First as cited by the Respondent.)
The Complainant has shown that it is objectively clear that JUSTIN.TV has become a distinctive identifier associated with the Complainant’s services and has acquired a secondary meaning. The Complainant’s business depends on huge website traffic which it has demonstrated it generates. All is achieved under the JUSTIN.TV brand.
Under well-accepted jurisprudence under the Policy, a mere personal name does not qualify for trademark protection except in defined circumstances. The case cited by the Respondent is but an example in support of that proposition. More comprehensive authorities where the point is analysed in far greater depth are Asper v. Communication X Inc., D2001-0540 (WIPO June 21, 2001) and R.E. “Ted” Turner & Ted Turner Film Properties LLC v. Mazen Fahmi, D2002-0251 (WIPO July 4, 2002). Those cases demonstrate the occasions when a personal name can be treated as a trademark. In this case, the forename ‘Justin’ is not on its own. The whole rationale of the brand is the combination of Justin and the expression ‘.tv’. The websites are not about a celebrity named Justin but are about ‘justin.tv’.
The Respondent’s argument that denominators such as .com or .tv do not form part of the domain name for the purpose of deciding whether the domain name is confusingly similar to a mark is not applicable here. The principle would be applicable if this were a dispute involving the Complainant’s .tv registration. The ‘tv’ suffix is part of the domain name and part of the brand.
Here, the .tv is an integral part of the common law trademark. It matters little whether the mark is referred to in common parlance as three words or two. The essential combination of ‘Justin’ and ‘tv’ is present in both modes of expression.
It is sufficient to show for the purposes of Paragraph 4(a)(i) of the Policy that the Complainant enjoys common law trademark rights somewhere. In this case it is in the United States where the Complainant is domiciled. The question about the recognition of common law marks in Chile is irrelevant, although decisions under the Policy have recognized unregistered marks in some civil law jurisdictions.
Accordingly, the Panel holds that the disputed domain name <justintv.com> is confusingly similar to the common law trademark in which the Complainant has rights.
The Panel, however, is unable to come to the same decision in respect of the disputed domain name <jtvshows.com>. The letter ‘j’ is generic. Three-letter combinations are in great demand as domain names. ‘Jtv’ does not inexorably refer to the Complainant’s operations. As the WIPO Overview in Paragraph 1.2 points out, the trademark needs to be recognizable as such within the domain name. Moreover, the Complainant’s trademark is all the weaker for not being registered.
Accordingly, the Complainant has failed to establish the first limb of Paragraph 4(a) of the Policy in respect of this disputed domain name and relief must be denied. It is unnecessary to canvas the other limbs of Paragraph 4(a) in respect of this domain name.
The following analysis will apply only to the domain name <justintv.com>.
Consideration of Paragraphs 4(a)(ii) and 4(c)(i) of the Policy is bound up with a consideration of bad faith registration and use under Paragraph 4(a)(iii) of the Policy. Bad faith registration and use have to be considered separately. But bad faith registration must impact especially on any assessment of any defence under Paragraph 4(c)(i).
If the relevant date of registration of the disputed domain name is to be in 1999 when it was first registered to anyone then the Complainant cannot succeed. The Complainant’s common law mark did not then exist, so, a finding of bad faith registration would be impossible. Because bad faith registration and use have to be considered separately, it would not matter under this scenario, if subsequent bad faith use by the Respondent of a disputed domain name could be proved.
The registration to the current Respondent, albeit operating through a privacy service, was on March 14, 2012. If that is the date on which bad faith registration must be considered, then the Complainant must succeed, both in negating the defence under Paragraph 4(c)(i) and in proving bad faith registration. It should be noted that the Complainant has not explained why it has taken it six years to bring this Complaint but the doctrine of laches does not apply to proceedings under the Policy.
The legal situation in the United States about re-registration of domain names was canvassed by the Respondent. Whatever that legal situation may be, the 13 years of jurisprudence developed by panelists under the Policy must provide the legitimate guide to interpretation of the Policy – not decisions of national courts (see Paragraph 4.15 of the WIPO Overview).
It is also reasonably well-established in Policy jurisprudence that, even if a domain name had originally been registered in good faith, this fact does not provide protection for subsequent bad faith transferees. When assessing bad faith registration, one normally need only trace the registration date back to the most recent transfer of the domain name. See The Association of Junior League Int’l Inc. v. This Domain May Be For Sale FA857581 (Nat. Arb. Forum, Jan. 4, 2007); see also RapidShare AG & Christian Schmid v. Fantastic Investment Limited , FA 1338403 (Nat. Arb. Forum Oct. 8, 2010); see also WIPO Overview ¶ 3.7; see also BMEzine.com LL v. Gregory Ricks/Gee Whiz Domains Privacy Service, D2008-0882 (WIPO Aug. 21, 2008).
The strictness of the rule may be relaxed where a respondent can demonstrate that there has been no change in beneficial ownership between initial date of registration and last transfer. See Intellogy Solutions LLV v. Craig Schmidt. IntelliGolf.Inc, D2009-1244 (WIPO Nov. 24, 2009).
The Respondent claims to be entitled to rely on the 1999 registration date as being the date when bad faith registration should be assessed. The Respondent submits that the 2012 registration date for this disputed domain name should not be the one at which bad faith should be assessed on the grounds that all the various registrants since 1999 (usually camouflaged by privacy services) were really the alter ego of Mr Arrocha who made a declaration which was proferred with the Respondent’s Additional Submissions and not with the Response, as one might have expected.
Mr. Arrocha declared that he transferred the disputed domain name to “various holding companies”. Yet, there is no documentary evidence of his connection with these “holding companies” such as lists of shareholders or agreements to transfer domain names. Nor is any reason offered as to why it had been necessary to transfer the registered ownership of the disputed domain name so many times. The repeated use of privacy services also causes some skeptical concerns.
Skepticism at this explanation is invited by the copycat nature of the Respondent’s website accessed after personal information is obtained from the internet user. The site then revealed has just too many coinciding factors with the Complainant’s website to justify an innocent explanation for its design. Add to that the uncontradicted evidence that the Complainant’s outreach extends to Chile to the degree described by the Complainant. The clear inference is that as at the date of registration, only two months ago, the Respondent knew about the Complainant’s activities and the fame of its brand. The alleged survey seeking personal information in return for a ‘prize’ is merely a strategy to attract users to the substantive offending website.
The display of the Justin.TV brand on the Respondent’s ultimate website indicates actual knowledge of the Complainant and its business.
Accordingly, the defence under Paragraph 4(c)(i) of the Policy just does not stack up. Moreover, bad faith registration under Paragraph 4(a)(iii) is proved. Bad faith use is also clear from the offending website which lures internet users looking for the Complainant’s website. A user looking for the Complainant’s site cannot help but think that the Respondent’s websites have some connection with or affiliation with the Complainant.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be PARTLY GRANTED and PARTLY DENIED.
Accordingly, it is Ordered that the <justintv.com> domain name be TRANSFERRED from the Respondent to the Complainant and the domain name <jtvshows.com> REMAIN WITH the Respondent.
Hon. Sir Ian Barker, Panelist
Dated: May 17, 2012
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