Compelling Content Creators, Inc. v.
Pavel Ushakov
Claim
Number: FA0410000346763
Complainant is Compelling Content Creators, Inc. (“Complainant”)
represented by Thansai K. Preovolos of Preovolos & Associates, ALC, 401 B Street, Suite 1160, San Diego, CA 92101. Respondent is Pavel Ushakov
(“Respondent”), 3437 Rexway Road, Beachwood, OH 44122.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bubblegirls.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically October
19, 2004; the National Arbitration Forum received a hard copy of the Complaint October
22, 2004.
On
October 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <bubblegirls.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. verified that Respondent is
bound by the Go Daddy Software, Inc. registration agreement and thereby has
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
October 28, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 17, 2004, 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@bubblegirls.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 3, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <bubblegirls.com>, is identical to Complainant’s
BUBBLEGIRLS.COM mark.
2. Respondent has no rights to or legitimate
interests in the <bubblegirls.com> domain name.
3. Respondent registered and used the <bubblegirls.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
originally registered the <bubblegirls.com> domain name March 20,
1999. Complainant listed within the
WHOIS information for the <bubblegirls.com> domain name the
<c-c-c-inc.com> domain name, a domain name it owned at the time, and
hostmaster@c-c-c-inc.com as the contact information for the <bubblegirls.com>
domain name. For five years
Complainant used this domain name to direct Internet users to its website that
provided access to and sales of adult-oriented videos. The website sells memberships, videos and
merchandise, and is Complainant’s primary source of income. Complainant has filed for service mark
protection with the United States Patent and Trademark Office (“USPTO”) for its
BUBBLEGIRLS (Serial No. 78,493,313, filed October 1, 2004) and BUBBLEGIRLS.COM
marks (Serial No. 78,493,317, filed October 1, 2004).
Complainant,
believing the <c-c-c-inc.com> domain name no longer held any value,
decided not to renew the <c-c-c-inc.com> domain name registration when
its initial registration period expired.
Respondent then registered the <c-c-c-inc.com> domain name on
September 17, 2004. Respondent
additionally set up the email address hostmaster@c-c-c-inc.com. Shortly thereafter, Respondent transferred
the <bubblegirls.com> domain name from Complainant to
Respondent. Respondent did this by
taking advantage of the fact that Complainant used the <c-c-c-.inc.com>
domain name and its email address as contact information when it initially
registered <bubblegirls.com> with the Registrar.
Upon
transferring ownership from Complainant to itself, Respondent contacted
Complainant using a series of emails.
Respondent offered to return the <bubblegirls.com> domain
name to Complainant in exchange for either five thousand dollars ($5000) or the
right to publish the video content from Complainant’s website on his own
competing adult website. Respondent
also threatened that if Complainant does not wish to accept Respondent’s offer,
Respondent will sell the domain name to a third party.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Registration of
a mark with a governmental authority is unnecessary for a complainant to
establish rights in a mark if a common law mark has been established. See
McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002)
(The ICANN dispute resolution policy is “broad in scope” in that “the reference
to a trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not
require “that a trademark be registered by a governmental authority for such
rights to exist”).
Complainant
established by extrinsic proof in this proceeding that it has rights in the BUBBLEGIRLS.COM mark through ownership
of a common law mark. A common law mark is established when a complainant’s
mark becomes distinctive and acquires secondary meaning. Complainant
established that through Complainant’s continuous use of the BUBBLEGIRLS.COM
mark in commerce since 1999, Complainant’s mark has acquired secondary meaning
and has become distinctive. Thus, Complainant has established secondary meaning
in the BUBBLEGIRLS.COM mark through its continuous and exclusive use.
Furthermore, Complainant’s pending trademark application for the BUBBLEGIRLS.COM mark further supports
Complainant’s ownership of a common law mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see also S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum March 13, 2003) (holding that
Complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Fishtech v. Rossiter, FA 92976 (Nat.
Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in
the mark FISHTECH which it has used since 1982); see also American Anti-Vivisection Soc'y. v.
"Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that the fact that Complainant held the domain name prior to
Respondent’s registration, as well held a pending trademark application in the
mark, evidences rights in the domain name and the mark therein contained).
The domain name that Respondent registered, <bubblegirls.com>,
is identical to Complainant’s BUBBLEGIRL.COM mark; Complainant fulfilled its
burden under Policy ¶ 4(a)(i). See Shirmax Retail Ltd. v. CES Mktg Group
Inc., AF-0104
(eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the
conjunctive rather than disjunctive sense in holding that “mere identicality of
a domain name with a registered trademark is sufficient to meet the first
element [of the Policy], even if there is no likelihood of confusion
whatsoever”); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270
(WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing
similarity is to be resolved “by comparing the trademark and the disputed
domain name, without regard to the circumstances under which either may be
used”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Nothing in the
record establishes that Respondent is commonly known by the disputed domain
name. Moreover, Respondent is not
licensed or authorized to register or use a domain name that incorporates
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); see also
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant; (2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question).
In addition,
Respondent approached Complainant, offering to return the disputed domain name
to the Complainant for $5000. or the rights to publish certain video material
on Respondent’s own website.
Respondent’s offer to sell the domain name registration for profit is
evidence that Respondent lacks rights and legitimate interest pursuant to
Policy ¶ 4(a)(ii). See Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain name registration to Complainant,
the rightful holder of the RED CROSS mark”); see also J. Paul Getty Trust v. Domain 4 Sale &
Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate
interests do not exist when one has made no use of the websites that are
located at the domain names at issue, other than to sell the domain names for
profit).
Moreover, the
fact that Complainant once held registration for the disputed domain name is
further evidence that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(a)(ii).
See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that Complainant’s prior registration of the same domain name is a
factor in considering Respondent’s rights or legitimate interest in the domain
name); see also Tercent
Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “Respondent’s opportunistic registration of the
Complainant’s domain name, within 24 hours of its lapse, weighs strongly in
favor of a finding that Respondent has no rights or legitimate interests in the
disputed domain name.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
contacted Complainant shortly after Respondent’s acquisition of the disputed
domain name, offering to sell the domain name for $5,000. or the right to use
Complainant’s video material on Respondent’s own website. The Panel finds that Respondent registered
the domain name primarily for the purpose of selling it back to Complainant,
which supports findings of bad faith registration and use under Policy ¶
4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO
Nov. 27, 2000) (finding that a failure to use the domain name in any context
other than to offer it for sale to Complainant amounts to a use of the domain
name in bad faith); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that Respondent used the domain name in bad faith because he offered
to sell the domain name for valuable consideration in excess of any
out-of-pocket costs); see also Matmut
v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy
paragraph 4(b)(i) where Respondent stated in communication with Complainant,
“if you are interested in buying this domain name, we would be ready to sell it
for $10,000”).
Additionally, the Panel finds that the evidence establishes that
Respondent knew of Complainant’s rights in the BUBBLEGIRLS.COM mark, and the
value of the disputed domain name to Complainant, at the time it registered the
<bubblegirls.com> domain name.
Registering Complainant’s active domain name for its own purposes is strong
evidence that Respondent registered and used the disputed domain name in bad
faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30,
2000) (finding that where the domain name has been previously used by the
Complainant, subsequent registration of the domain name by anyone else
indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of the Complainant’s failure to renew a domain name); see also
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (inferring
that Respondent had knowledge that the <tercent.com> domain name
previously belonged to Complainant when Respondent registered said domain name
the very same day Complainant’s registration lapsed).
Moreover,
Respondent’s scheme to infiltrate and acquire the <bubblegirls.com> domain name and subsequent offer to sell
the domain name back to Complainant indicates Respondent was on notice of
Complainant’s rights in the BUBBLEGIRLS.COM mark. Respondent’s registration and use of the disputed domain name
despite actual or constructive knowledge of Complainant’s rights demonstrate
Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (inferring that Respondent had knowledge
that the <tercent.com> domain name, which previously belonged to
Complainant, when Respondent registered said domain name the very same day
Complainant’s registration lapsed); see also Savage Sys., Inc. v.
Kang, FA 102480 (Nat. Arb. Forum Dec. 31, 2001) (inferring that Respondent
had knowledge that the <savagearchery.com> domain name previously belonged
to Complainant when Respondent registered said domain name the very same day
Complainant’s registration lapsed).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bubblegirls.com> domain name be
TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 17, 2004
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