Wiluna Holdings, LLC v. Michael Stadlin / IMS Internet Management Services GmbH
Claim Number: FA1311001529658
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John P. Sullivan of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Michael Stadlin / IMS Internet Management Services GmbH (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clips4all.com>, registered with United Domains AG.
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.
Nathalie Dreyfus acting as Chair, Peter Müller and Jonas Gulliksson as Panelists (hereafter “the Panel”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2013; the National Arbitration Forum received payment on November 13, 2013. The Complaint was submitted in both English and German.
On November 14, 2013, United Domains AG confirmed by e-mail to the National Arbitration Forum that the <clips4all.com> domain name is registered with United Domains AG and that Respondent is the current registrant of the name. United Domains AG has verified that Respondent is bound by the United Domains AG 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 November 20, 2013, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of December 10, 2013 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@clips4all.com. Also on November 20, 2013, the German language 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 December 2, 2013.
A Response was received on December 2, 2013 and Additional Submission was received from Complainant on December 9, 2013. Additional Submission was received from Respondent on December 12, 2013.
On December 12, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus acting as Chair, Peter Müller and Jonas Gulliksson as the Panel.
Having reviewed the communications records, the Administrative 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 name be transferred from Respondent to Complainant.
Complainant
a) Complainant is the owner of the CLIPS4SALE.COM and CLIPS4SALE marks, used in connection with adult-oriented entertainment media including downloadable film clips, photographs, musical performances, and more. Complainant has used these marks for this purpose since July 2003, and has since registered both the CLIPS4SALE.COM mark (Reg. No. 3,508,680 filed Jan. 27, 2006; registered Sep. 30, 2008) and CLIPS4SALE mark (Reg. No. 3,554,200 filed Jan. 30, 2006; registered Dec. 30, 2008) with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibits 1-2.
b) The <clips4all.com> domain name is made up of a derivative of Complainant’s CLIPS4SALE.COM mark. Respondent has merely substituted the term “sale” for the term “all” in the domain name.
c) Respondent is not commonly known by the <clips4all.com> domain name. The disputed domain name is registered in the name of Respondent, “Michael Stadlin.” Respondent has no connection or affiliation with Complainant and does not have a license or consent to use the CLIPS4SALE.COM mark in any manner.
d) The disputed domain name resolves to Respondent’s competing website. Complainant notes that the screenshot it provides as its Exhibit 9 of the <clips4all.com> domain name’s resolving website demonstrates that the disputed domain name is used for the distribution of adult-oriented video clips and other media of women, and is targeted to the same customers as Complainant’s offerings.
e) Consumers searching for Complainant will be directed to Respondent’s domain name, thus disrupting Complainant’s business.
f) Respondent is making a blatant attempt to trade on the goodwill established by Complainant after great efforts. It is apparent that Respondent has targeted Complainant’s marks as the domain name registered is confusingly similar to the CLIPS4SALE.COM mark and Respondent’s website directly competes with Complainant’s website.
Respondent:
a) Regarding the kind, nature, content and registration of the domain name, Respondent maintains that Complainant operates websites containing adult content only, whereas Respondent does operate the domain <clips4all.com> as a non-adult website with only non-adult content other than nudity or pornography. Respondent asserts that comparison with the Complainant’s website gives proof of the big differences concerning content and design of the two websites and shows that contrary to the allegations of the Complainant nothing has been copied from Complainants website.
b) Complainant’s assertion that Respondent has no right or legitimate interest is an unfair accusation and a pure assumption of Complainant not having any other arguments. Respondent also argues that its interest in the domain name is prior to Complainant’s trademark applications, that it could not buy the domain <clips4all.com> until April 2, 2006 because it was already registered and that Respondent made substantial investments after buying it in order to give the domain name a good image and a good search engine’s referencing.
c) No confusion is possible between the disputed domain name and Complainant’s trademarks because of the differences in the design, targets and content.
d) Complainant has confirmed in 2011 to the National Arbitration Forum Dispute FA1104001385080 that “Consumers that do not visit adult oriented sites, such as the non-adult oriented site CLIPS4ALL.COM, are not relevant consumers.”
Both parties have presented additional submissions.
Complainant
a) Complainant has provided in particular quotations from Respondent’s website and asserts that its content is related to adult material.
b) This content being similar, Complainant maintains that Respondent’s website is in direct competition with its own.
Respondent
a) Respondent asserts, among other things, that the words “sale” and “all” are different and the word “clip” included in the Complainant’s trademarks should not be registered as a trademark since it is a “publicly recognized expression”.
b) Complainant and Respondent are not competitors.
Preliminary Issue: Language of proceeding
The Panel notes that the proceeding is in the German language since the registration agreement of the disputed domain name is in that language. At the request of the Panel, Respondent made an English translation of the Response and of the additional submission. In the end, both Complainant and Respondent have provided copies of their materials in English. The Panel notes that while the dispute was supposed to be in German, the submission of English language materials gives the Panel the option to elect to continue with these proceedings in English or German. The Panel has decided to continue with these proceedings in English.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
First of all, Complainant contends that it is the owner of the CLIPS4SALE.COM and CLIPS4SALE marks, used in connection with adult-oriented entertainment media including downloadable film clips, photographs, musical performances, and more. Complainant states that it has used these marks for this purpose since July 2003, and has since registered both the CLIPS4SALE.COM mark (Reg. No. 3,508,680 filed Jan. 27, 2006; registered Sep. 30, 2008) and CLIPS4SALE mark (Reg. No. 3,554,200 filed Jan. 30, 2006; registered Dec. 30, 2008) with the USPTO. See Complainant’s Exhibits 1-2. The registration of a mark, regardless of the location of the parties, satisfies the required showing of rights under the Policy. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the <clips4all.com> domain name is made up of a derivative of Complainant’s CLIPS4SALE.COM mark. Complainant notes that Respondent has merely substituted the term “sale” for the term “all” in the domain name. The Panel notes that the replacement of one term in a mark for another has been found to fail to remove the disputed domain name from the realm of confusing similarity. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).
However, the Panel also notes that Complainant’s trademarks are composed only of generic terms. In the case of HomeVestors of America, Inc. v. Cristino Chico FA904273 (NAF April 2, 2007, finding the Complainant owned the name WE BUY UGLY HOUSES and the disputed domain name was I SELL UGLY HOUSES), the Panel held that the common part of both names, namely “ugly houses”, was generic and the similarity was denied. See also RevZilla Motorsports LLC v. Tom D’Azevedo, FA1304001496506 (finding that “there is no confusing similarity where, as in this case, the two names have a suffix in common and one moreover that is also a dictionary word, but no similarity between their prefixes”). In the present case, both trademarks are composed of generic terms or at least terms of low distinctively with regards to the designated services. These types of trademarks have low distinctively and their range of protection is very narrow.
Therefore, the fact that the prior trademarks and the disputed domain name differ by their suffixes “sale” and “all” could be sufficient to distinguish them.
In view of the situation, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i). However, in consideration of the complexity of the case, the Panel has decided to analyze the other two elements of the policy.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Among other things, Complainant contends that Respondent is not commonly known by the <clips4all.com> domain name and thus does not have rights or legitimate interests in the disputed domain name. Complainant notes that the disputed domain name is registered in the name of Respondent, “Michael Stadlin.” Complainant claims that Respondent has no connection or affiliation with Complainant and does not have a license or consent to use the CLIPS4SALE.COM mark in any manner.
Complainant also asserts that the disputed domain name resolves to Respondent’s competing website. Complainant notes that the screenshot it provides as its Exhibit 9 of the <clips4all.com> domain name’s resolving website demonstrates that the disputed domain name is used for the distribution of adult-oriented video clips and other media of women, and is targeted to the same customers as Complainant’s offerings. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel held that the respondent’s use of the disputed domain name to sell goods in competition with the complainant did not give rise to any legitimate interest in the domain name.
Respondent answered that the websites targets and purpose are different as Complainant website provides Internet Users with adult content showing nudity while its own website is aimed at a more general public and is not showing nudity.
The Panel considers that even if the disputed domain name does not present Internet User nudity, both websites target a mature public with sexual implicit or explicit material as provided by both parties in their Exhibits. The Panel also notes that in the dispute involving the domain name clips4xxx.com, the holder of the domain name clips4sale.com (which seems to be related to Complainant) considered that the websites <clips4all.com> and < clips4sale.com> had different activities (non adult oriented and nudity free content against pornographic content).
The Panel also considers that Respondent is not a mere cybersquatter targeting a third party business for the sake of selling the disputed domain name at a very high price. Indeed, it seems obvious that Respondent has a business activity via the disputed website. The Panel wonders whether the present dispute is even in the scope of the UDRP since the latter was implemented to address abusive cybersquatting.
Therefore, the Panel finds that Complainant has not made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant asserts that Respondent registered and is using the <clips4all.com> domain name in bad faith. Complainant argues that consumers searching for Complainant will be directed to Respondent’s domain name, thus disrupting Complainant’s business. The Panel notes that previous panels have found that a respondent who operates a competing website at the disputed domain name is disruptive to the complainant’s business and warrants an inference of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business”). Complainant also argues that Respondent is making a blatant attempt to trade on the goodwill established by Complainant after great efforts. Complainant alleges that it is apparent that Respondent has targeted Complainant’s marks as the domain name registered is confusingly similar to the CLIPS4SALE.COM mark and Respondent’s website directly competes with Complainant’s website.
The Panel notes that trademark registration in the United-States provides for national constructive notice. However, both signs were registered in 2008 after the registration of the disputed domain name and Respondent is not located in the United-States, so Respondent did not have constructive notice via the trademark registrations.
Complainant argues that constructive notice started in 2003, which corresponds to the registration date of Complainant’s domain name clips4sale.com. In addition, Complainant has provided an annex according to which Michael Stadlin was one of Complainant’s clients from 2004 to 2007. The said evidence does not contain any mention of the domain name clips4sale.com. There is therefore no evidence that Respondent was aware of the domain name clips4sale.com in 2003.
In addition, the disputed domain is not obviously confusingly similar to Complainant’s trademarks due to their generic compositions. As such, the Panel cannot agree with Complainant when arguing it is apparent that Respondent has targeted Complainant’s marks.
The Panel also notes that the parties do not dispute that Respondent registered the disputed domain name on April 2, 2006, around seven years prior to this proceeding. It appears to the Panel that any business disruption or confusion suffered by Complainant as a result of Respondent's domain name registration was either non-existent or de minimis, else Complainant would have taken action in a more timely fashion. Previous panels have found that the principles associated with the equitable doctrine of laches may inform the panel in cases such as this. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
Therefore, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is ordered that the <clips4all.com> domain name REMAIN WITH Respondent.
Nathalie Dreyfus acting as Chair, Peter Müller and Jonas Gulliksson as Panelists
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