Wiluna Holdings, LLC v. Jordan Levinson / Domain Manager
Claim Number: FA1804001784381
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Jordan Levinson / Domain Manager (“Respondent”), represented by Jason A. Fischer of Fischer Law, P.L., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clits4free.com>, registered with Moniker Online Services LLC.
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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.
On May 2, 2018, Moniker Online Services LLC confirmed by e-mail to the Forum that the <clits4free.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 May 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2018 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@clits4free.com. Also on May 4, 2018, 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 May 24, 2018.
Complainant filed an additional submission with annexes on May 29, 2018.
Respondent filed an additional submission on June 1, 2018
On June 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
A. Complainant
Complainant is the owner and operator of the <clips4sale.com> domain name, which features adult-entertainment orientated media in connection to the CLIPS4SALE.COM mark. Complainant has rights in the CLIPS4SALE.COM mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,508,680, Sep. 30, 2008). See Amend. Compl. Ex. 1. Complainant has also established strong, secondary meaning for the CLIPS4SALE.COM mark. Respondent’s <clits4free.com> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark as Respondent replaces the letter “p” with a “t” and the term “sale” with “free.”
Respondent has no rights or legitimate interests in the <clits4free.com> domain name. Respondent is not licensed or authorized to use Complainant’s CLIPS4SALE.COM mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial for fair use. Rather, Respondent diverts users seeking Complainant’s website to the disputed domain name which features various adult-oriented video and image content.
Respondent registered and is using the <clits4free.com> domain name in bad faith. Respondent disrupts Complainant’s business and attracts users to the disputed domain name which features click-through advertisements and competing goods and services. Furthermore, Respondent engaged in typosquatting when it registered the disputed domain name.
B. Respondent
Respondent registered the disputed domain name on behalf of Web Entertainment Group, Inc. (“WEG”), in connection to that company’s ongoing adult-entertainment business. Respondent registered the “Join4Free” and “Tube4free” marks with the USPTO and used its “4Free”marks in connection to its online, adult-oriented media business. Respondent’s registration of the <clits4free.com> domain name predates Complainant’s USPTO registration of the CLIPS4SALE.COM mark. Respondent’s disputed domain name is also not confusingly similar to Complainant’s mark as Respondent uses the term “clits” instead of the term “clips,” and the terms “sale” and “free” bear no similarity to one another in spelling, pronunciation, or meaning.
Respondent has rights and legitimate interests in the <clits4free.com> domain name as Respondent uses the disputed domain name in connection to its adult entertainment business. Additionally, Complainant claims Respondent attempts to mimic Complainant’s business, but the disputed domain name predates Complainant’s earliest known rights in the mark.
The Panel notes the <clits4free.com> domain name was registered on April 23, 2002. See Amend. Complaint. Ex. 9.
C. Additional Submissions:
A. Complainant
Respondent erroneously alleges multiple times that registration of the domain <clits4free.com> predates Wiluna’s CLIPS4SALE trademark and domain name registrations. Respondent alleges that it registered the domain <clits4free.com> on August 23, 2002, but provides no proof of registration date.
B. Respondent
Contrary to Complainant’s assertion that there is no evidence in the record of these proceedings that show when Respondent registered the Disputed Domain Name, Complainant’s own Exhibit 9 clearly shows the creation date of the Disputed Domain Name’s registration:
Complainant owns the following trademark registrations:
|
Mark |
Registration No. |
Goods or Services |
|
CLIPS4SALE.COM |
3,508,680 |
Entertainment services, namely, providing a web site featuring downloadable film clips, photographs, and other multimedia materials in International Class 041 |
|
CLIPS4SALE |
3,554,200 |
Entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials in International Class 041 |
|
CLIP4 |
4,814,248 |
Downloadable film clips, photographs, and other multimedia files containing artwork, text, audio, and video, all featuring adult themed content provided via an internet website in International Class 009 |
|
CRLIPS4 |
4,800,900 |
Downloadable film clips,photographs, etc. |
Respondent is the registered owner of the following domain name:
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 Panel agrees with Respondent’s claim that its <clits4free.com> domain name predates Complainant’s earliest USPTO registration and first date in commerce. Predating of a complainant’s mark may be evidence that the complainant lacks rights in a mark under Policy ¶ 4(a)(i). See Twin Lakes Telephone Cooperative Corporation v. DNS ADMIN / BEST WEB LIMITED, FA 1725012 (Forum May 23, 2017) (concluding that complainant failed to establish rights in the TWIN LAKES COMMUNICATION marks for purposes of the policy, because registration of respondent’s domain name predated registration of complainant’s mark by approximately five years). Respondent provides its USPTO registrations for its JOIN4FREE and TUBE4FREE marks, which Respondent argues it has rights in for purposes of the disputed domain name. See Resp. Exs. 2 and 4. The disputed domain name was registered on April 23, 2002. See Amend. Compl. Ex. 9. Therefore, the Panel finds Respondent’s disputed domain name predates Complainant’s earliest known rights in the CLIPS4SALE.COM mark per Policy ¶ 4(a)(i).
Additionally ,the Panel concurs with Respondent’s contention that its <clits4free.com> domain name is not confusingly similar to Complainant’s CLIPS4SALE.COM mark as the disputed domain name incorporates vastly different terms. Adding wholly different generic and/or descriptive terms may be sufficient to differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Lorillard Technologies, Inc. v. Mr Paul Pearson / Advanced Diets, FA 1528825 (Forum Nov. 27, 2013) (finding the disputed domain names sufficiently differentiated from the complainant’s marks as “[the] disputed domain names not only add an additional term [(“FLY” and “FLYING”)] to each domain, but also delete a letter [(“S”)] from the mark allegedly incorporated into the domains . . . ”); see also Primo Incense v. Spring.net, FA 96565 (Forum Apr. 12, 2001) (finding that the <primoincense.com> domain name was not confusingly similar to the complainant’s PRIMO mark despite the complainant’s business name of Primo Incense Distributing Company). Respondent claims Complainant’s argument that the term “clit” is a misspelling of the term “clip” is unavailing as the two letters are nowhere near each other on a U.S. English keyboard. Respondent also provides definitions for the terms “clip,” “clit,” and “clitoris.” See Resp. Exs. 5, 6, and 7. Additionally, Respondent contends that the term “free” bears no similarity, pronunciation, or meaning to the term “sale” in Complainant’s mark.
Complainant argues that it had sufficient common law rights in its “CLIPS4SALE” mark at the time that Respondent registered the Disputed Domain Name but Complainant proffered no persuasive evidence.
Complainant has provided some evidence in the form of Google search results to show that it may have made some use its “CLIPS4SALE” mark prior to April 23, 2002, Complainant has not established that those alleged uses afforded its “CLIPS4SALE” mark widespread market recognition, which would be required to imply that Respondent was aware of Complainant’s mark and therefore acted in bad faith. See, e.g., RK Netmedia, Inc. v. Lawton, D2011-0495 (WIPO May 9, 2011) (finding insufficient showing of common law rights before registration of the disputed domain name); see also Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, D2008-0641 (WIPO July 31, 2008) (noting that a complainant relying on common law rights must establish that respondent was “clearly aware” of complainant to show bad faith). The Panel finds Respondent’s disputed domain name is not confusingly similar to Complainant’s CLIPS4SALE.COM mark per Policy ¶ 4(a)(i).
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), Consequently, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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 <clits4free.com> domain name REMAIN with Respondent.
Panelist: Jaime Delgado
Dated: June 18, 2018
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