Tenza Trading Ltd. v. WhoIs Privacy Corp.
Claim Number: FA1508001634997
Complainant is Tenza Trading Ltd. (“Complainant”), represented by Anna Vradenburgh of Apogee Law Group, California, USA. Respondent is WhoIs Privacy Corp. / Maksim Iazynin (“Respondent”), represented by Matthew Shayefar and Valentin Gurevitz of Boston Law Group, P.C., Massaschusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <porntubemovs.net> and <porntubegals.net>, registered with Internet Domain Service BS Corp. of Nassau, The Bahamas and TLD Registrar Solutions Ltd. of London, United Kingdom, respectively.
The undersigned certify that they have acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelists in this proceeding.
Michael Albert, David Sorkin, David P. Miranda, as Panelists.
Complainant submitted a Complaint to the Forum electronically on August 25, 2015; an amended Complaint was submitted on September 1, 2015; and the Forum received timely payment.
The Registrars confirmed by e-mail to the Forum that the disputed domain names were registered with them, that Respondent is the current registrant of the domain names, and that Respondent is bound by the relevant registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
The Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, notifying Respondent of its deadline to 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. After an extension to the deadline was granted, Respondent provided a timely and complete
Response on October 19, 2015.
On October 25, 2015 an Additional Submission was received from Complainant.
On October 27, 2015, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael Albert, David Sorkin, and David P. Miranda as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under the Policy to employ reasonably available means calculated to achieve actual notice to Respondent through submission of Electronic and Written Notices.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges:
- that it owns a United States trademark registration for the mark PORNTUBE (U.S. Registration No. 3,936,197) for entertainment services, namely, providing a website featuring adult entertainment; entertainment services, namely, providing a website featuring photographs, videos, related film clips, and other multimedia materials in the field of adult entertainment. It alleges that first use of this mark in interstate commerce for these goods was at least as early as May 2005. It also claims parallel registrations in other countries; and provides evidence of such registrations.
- that it has engaged in extensive and successful advertising, at considerable expense, of the services is provides in connection with its mark;
- that in the federal court litigation captioned Calista Enterprises Ltd. v. Tenza Trading Ltd., Case No. 3:13-cv-01045-SI (District of Oregon), it obtained a judgment against another party that it alleged was infringing its mark;
- that the disputed domain names registered by Respondent, porntubemovs.net and porntubegals.net, were registered on June 13, 2014 and November 25, 2014, respectively;
- that the disputed domain names are confusingly similar to Complainant’s registered mark and are used in connection with virtually identical categories of products and services;
- that Respondent has no legitimate interest or rights in the domain names inasmuch as, given the enormous commercial success of the business associated with Complainant’s mark and the high volume of traffic it regularly obtains (attaining, at one point, a global rank of 1617 and a US rank of 2262 as measured by traffic ranking site Alexa.com), Respondent must have known that it had no legitimate rights or interest in the disputed domain names, which encompass Complainant’s mark in its entirety and merely add two descriptive suffixes. Moreover, Respondent’s use is commercial, and thus competes with Complainant’s;
- that Respondent’s use of the disputed domains is and has been in bad faith, as evidenced by the abovementioned facts as well as by the fact that the disputed domain names completely subsume Complainant’s mark, and that they have been used to promote and market adult entertainment products and/or services in direct competition with Complainant, long after Complainant’s use began and became well-known in the industry, thus constituting an attempt to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site. Complainant alleges that it is inconceivable that Respondent, the owner of online adult entertainment websites, was unaware of Complainant’s mark prior to Respondent’s registration of the domain names.
B. Respondent
Respondent’s core defense to each of the above three elements is its allegation that Complaint’s mark is generic.
In particular, Respondent alleges:
- that it has an expert declaration showing that Complainant’s mark is viewed as generic in the industry;
- that because Complainant’s mark (which Respondent calls the “Putative Mark”) is generic and/or descriptive, Complainant can have no trademark rights in it;
- that Respondent uses the disputed domain names in line with the generic meaning of the Putative Mark;
- that Respondent did not know that Complainant claimed trademark rights in the Putative Mark, and had no intention to take advantage of anyone’s trademark rights when he registered and used the disputed domain names;
- that Complainant mischaracterizes the Calista Enterprises litigation, because the judgment entered in favor of Complainant in that action was a stipulated consent judgment and not one decided by the Court; and that previously the Court had entered an order finding that it was not clear whether Complainant’s mark was valid or whether the adverse party (which incorporated that mark into domain names) was infringing it;
- that the addition of the distinctive terms “movs” and “gals” is sufficient to distinguish Respondent’s domain names from Complainant’s Mark;
- that numerous third-party uses as well as survey evidence (and even certain uses by Complainant itself) all support the conclusion of genericness;
- that Respondent makes a bona fide use of the domain names;
- that Respondent had a good-faith belief in the genericness of the mark and therefore did not register and/or use the domain names in bad faith;
- that this dispute is not suited for resolution under the UDRP because it involves resolution of a complex genericness dispute which was the subject of extensive litigation in the Calista case and which turns on considerable expert and other fact testimony and evidence. Respondent cites, e.g., Freetech Services, Ltd. v. N/A, FA 1574454 (Nat. Arb. Forum Sep. 29, 2014) (dismissing complaint on basis that the dispute centered upon the resolution of a legitimate trademark dispute outside the scope of the Policy regarding, inter alia, whether the domain names were generic).
C. Additional Submission
Complainant’s additional submission contends that (1) the Calista summary judgment proceedings referenced by Respondent were non-final and established only the existence of a fact dispute at that stage; whereas the final order was the ultimate resolution; (2) the fact that the final order was by consent does not change its precedential value; and (3) the U.S. and other national registrations are presumptive evidence of non-genericness, and Respondent has not met its heavy burden to overcome that presumption.
When Sir Timothy Berners-Lee invented the World Wide Web in the late 1980s to facilitate the transmission of data and other web resources over hypertext links among scientists, researchers, and others interested in the democratization of communications and the widespread dissemination of knowledge, one can only wonder whether he contemplated the enormous commercial benefits that would accrue to parties such as those before us today – purveyors of what has come to be known as “adult entertainment.”
Be that as it may, we turn to the standards governing our decision. 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.
Complainant has established its ownership of the PORNTUBE mark, through extensive and successful use in commerce as well as multiple national trademark registrations. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Respondent’s disputed domain names are confusingly similar to Complainant’s mark. They incorporate the mark in its entirety, adding only (in each case) a short suffix that does not detract from, and indeed may further suggest affiliation with, plaintiff and its products or services. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Complainant thus has proven the first element under the Policy.
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.”).
Complainant has offered evidence sufficient to show that Respondent knew, or with reasonable certainty can be presumed to have known, of Complainant’s mark; that Respondent has not been licensed or otherwise authorized to use it; and that Respondent is not commonly known by the disputed domain names. The burden thus shifts to Respondent, whose defense hinges on genericness.
Respondent has failed adequately to establish that Complainant’s mark is generic. The mark has served to position Complainant as one of the most sought-after content providers on the Internet. It has been registered in the United States and other countries without any successful challenge. It has been the subject of considerable expenditures of resources on advertising and promotion, and has generated hits from customers well into the millions, if not billions, based on the evidence adduced by Complainant.
Respondent, by contrast, offers the opinion testimony of its purported expert, as well as evidence of a substantial number of third-party uses. As discussed further below, Panels resolving disputes under the Policy are ill-equipped to engage in the type of factfinding necessary to resolve a factually intensive and complex issue such as genericness. Nevertheless, we note that each party has submitted independent expert testimony on this issue, accompanied by data regarding survey evidence and third-party uses. Of all the evidence on this subject that has been submitted, the Panel is particularly struck by the survey evidence adduced by Complainant indicating that, in a survey of 840 qualified respondents, 79% identified PORNTUBE as a brand name, while only 9% identified it as a common name. That evidence, while not necessarily dispositive, is a compelling indication that Respondent has an uphill battle on its hands if it is to persuade a factfinder that Complainant’s mark has become generic.
Nor are we persuaded by Respondent’s argument that the federal district court, in Calista, denied summary judgment on the grounds that there was a fact issue with respect to genericness. First of all, as Complainant notes, the final judgment (albeit rendered with consent, and therefore – as Respondent correctly notes – of less persuasive value than had it been fully litigated in an adversary manner), found a protectable mark of which infringement had occurred on the facts of that case. Secondly, denial of summary judgment is not a finding with any res judicata or collateral estoppel effect, but is simply a preliminary determination regarding whether the court is prepared to make a definitive conclusion at that stage of the case.
Accordingly, we find that Complainant’s mark has not been shown to be generic. Consequently, Respondent has not established any rights or legitimate interests, inasmuch as one cannot build up trademark rights in a mark owned by, or confusingly similar to one owned by, another, in connection with similar goods or services. Complainant thus prevails on the second factor.
Given that genericness was, in essence, Respondent’s core defense in this case, it might appear that Complainant succeeds on the third factor – bad faith – as well, and for the same reasons.
The issue, however, is not so simple. Bad faith has a subjective component. Even though Respondent has not established the mark’s genericness, that does not necessarily mean that Respondent lacked a good-faith belief in the mark’s genericness at the times either of registration or of use or both.
We believe this presents us with a very close question. We have no doubt that Respondent knew of Complainant and its mark, given the fame thereof and the similarity of the industries in which the two entities operate. That alone could establish bad faith. See, e.g., Entrepreneur Media, Inc. v. Smith, 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"). Here, it can be inferred that Respondent knew or should have known of Complainant’s use of the mark, as Complainant’s website was operational since long before Respondent’s registration of the disputed domain names, prominently displayed Complainant’s mark, and was a high traffic site and commonly known in the marketplace. See also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
On the other hand, the above facts would be of little import if Respondent genuinely and in good faith believed the mark to be generic. Here, this Panel, on the present facts, cannot conclude that this claim is implausible. Respondent advances considerable evidence pointing to an argument of genericness, including a large number of third-party uses, some expert testimony, some evidence of allegedly generic usage by Complainant itself, and last but not least, evidence that a federal judge, having been shown a considerable volume of evidence on this very subject, was unable to reach a determination one way or the other at the summary judgment stage of a case. While we have concluded that Respondent has failed to establish genericness, we now further conclude that, nonetheless, Complainant has failed to establish to our satisfaction that Respondent did not have a good-faith belief in the genericness of the mark in question. See Magnetic Shield Corp. v. MuShield, No. FA 158545 (Nat. Arb. Forum Apr. 29, 2008) (respondent's reasonable belief that registered trademark was generic precludes finding of bad faith).
Accordingly, we find that Complainant has, on this record, failed to establish the third required element.
It may well be that, in a proceeding in a court of competent jurisdiction,
Complainant might be able to establish that Respondent could not plausibly have
believed in the genericness defense it raises herein. Nothing in this Panel’s
decision should be deemed to call into question the possibility of such a
conclusion, upon review of all relevant evidence. But proceedings under the
Policy serve a limited function and work best in the context of clear
cybersquatting unencumbered by complex questions of trademark law that turn on
considerable, hotly-disputed, evidence requiring credibility determinations.
In sum, this Panel finds that Complainant has not proved bad-faith registration and use.
Complainant having established only two of the three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <porntubemovs.net> and <porntubegals.net> domain REMAIN WITH Respondent.
Michael Albert, Panel Chair
Dated: November 16, 2015
David Sorkin, Panelist
Dated: November 16, 2015
Complainant’s rights in the PORNTUBE mark are established pursuant to proof of federal trademark registration. Complainant alleges that Respondent uses the <porntubemovs.net> and <porntubegals.net> domain names in bad faith because it uses them to intentionally attract Internet users away from Complainant’s website by competing with Complainant. Respondent does this in order to profit. Complainant has provided, in Annexes 3a & 3b, screenshots of the disputed domains, as well as its own website, in Annex 5, to show that both parties operate within the realm of streaming videos with adult content. Competitive use of another’s trademark constitutes bad faith use pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Thus, Respondent uses the <porntubemovs.net> and <porntubegals.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). There is a presumption of validity to a federal trademark registration that Respondent fails to overcome with claims of genericness. Complainant has offered substantial evidentiary proof including survey information supporting the finding of the USPTO that the mark is registerable. Thus, this panelist finds Complainant has established all elements of its claim.
David P. Miranda, Panelist
Dated: November 16, 2015
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