Virtual Dates, Inc. v. Xedoc Holding SA
Claim Number: FA0503000433802
PARTIES
Complainant
is Virtual Dates, Inc. (“Complainant”),
represented by Howard Neu of Law Office of Howard Neu, P.A., 1152 North University Drive, Pembroke Pines, FL 33024. Respondent is Xedoc Holding SA (“Respondent”), represented by Paul Keating of Ctra de Prats 6, 08500 Vic (Barcelona) Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <voyuer.com>,
registered with Network Solutions, Inc.
PANEL
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.
R. Glen Ayers,
Jr., Hon. Carolyn M. Johnson (ret.) and M. Kelly Tillery served as
Panelists. Mr. Ayers served as
Chair.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 3, 2005.
On
March 9, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <voyuer.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain name
disputes brought by third parties in accordance with ICANN’s Uniform Domain Name
Dispute Resolution Policy (the “Policy”).
On
March 18, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 7,
2005 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@voyuer.com by e-mail.
A
timely Response was received and determined to be complete on March 25, 2005.
On April 14, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed R. Glen Ayers, Jr., Hon. Carolyn M. Johnson (Ret.) and M. Kelly
Tillery as Panelists. Mr. Ayers served as Chair.
RELIEF SOUGHT
Complainant
requests that the domain name <voyuer.com> be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant, Virtual Dates, Inc., alleges that it holds a service mark called
“Voyeur.com” registered with the U.S. Patent and Trademark Office. It alleges that it registered the mark in
2000. Attached as Exhibit “A” is
registration information showing that Complainant alleges first use in commerce
in 1998; the mark is related to adult Internet websites. Complainant alleges that the Respondent has
registered the domain name <voyuer.com> which it asserts is
confusingly similar. Complainant
asserts that <voyuer.com> (the domain name) is being used as a
link to adult websites.
Note:
The mark and domain name are spelled differently.
Complainant asserts that Respondent is
not using the domain name in connection with a bona fide offering of goods and
services, is not known by the domain name, and has not acquired any rights in
the trademark, which is almost identical to the domain name. In addition, Complainant asserts that there
is no “legitimate non-commercial or fair use of the identical or confusingly
similar domain name.”
Finally, Complainant says that the domain
name is being used “in bad faith” for the purpose of disrupting the business of
Complainant.
B.
Respondent
In its
response, the owner of <voyuer.com> denies the allegations. Respondent first asserts that Complainant
does not own the domain name, <voyeur.com> (note the spelling of this
domain name and the mark are identical; this domain name is owned by New
Century Investments, Ltd.). The
differently spelled domain name owned by Respondent was first registered in
1997, four months before any alleged use in commerce by Complainant of the
mark, “Voyeur.com.” Respondent also
asserts that it purchased <voyuer.com> from the original owner at
public auction in January of 2005 for $112,000.
Respondent disputes that there is a mark
which “trumps” its domain name. It
points out that a mark registered after a domain name cannot serve as a basis
of a claim under ICANN Policy.
Respondent claims to be a successor-in-interest, having purchased the
domain name from the original registrant.
Further, Respondent points out that the registered mark is merely
descriptive and has no meaning. This
mark is registered on the “Supplemental Register,” which is an admission that
the term is not inherently descriptive.
Complainant, says Respondent, certainly has offered no evidence, much
less a preponderance of the evidence, that the mark has achieved any secondary
meaning. All Complainant has said is
that <voyeur.com> reflects “a well-known destination on the Internet and
a Brand that stands for Adult Entertainment on the web.” Complainant gives no evidence supporting
these allegations and the alleged 1,500 visits per day. In fact, the domain that receives those
1,500 visits per day is not even owned by Complainant. Respondent goes on to discuss and argue the
descriptive nature of the mark and the generic nature of the word “voyuer” or
“Voyeur.”
Respondent has pulled the application for
the mark and presented the application as an exhibit. The application reflects that the mark was first used in commerce
in 1998. The application was refused
because the mark was merely descriptive of the “audience for applicant’s
services.” (USPTO, dated June 11,
1999.) The application was then amended
to permit registration on the Supplemental Register, and the entry on the
Supplemental Register was made.
Respondent also disputes the alleged
use. First, the domain name is owned by
a third party, New Century Investments, Ltd.
The domain name has been merely used to redirect web users to a series
of different adult entertainment sites, Respondent’s conclusion is that there
is no evidence of any development of a secondary meaning. On the other hand, Respondent asserts that
it certainly has rights in the mark. Respondent
alleges that it purchased, registered and commenced use of the domain name
before it had any notice of the Complainant’s registration and therefore, this
is a pre-existing, bona fide use under ICANN Policy, at 4(c)(i).
Lastly, Respondent asserts no bad faith,
alleging that Complainant has failed to establish any bad faith. As the first to register, it certainly could
not have registered the domain name with the intent to disrupt Complainant’s
non-existing business or its non-existing interest in the as-yet unregistered
mark. As to bad faith, Respondent
argues that, at best, Complainant owns a mark appearing on the Supplemental
Register. It does not own the domain name
<voyeur.com> and is not using the name in question in commerce, except a
domain name redirecting traffic to other adult web sites.
Respondent argues that its domain name
has been used openly and obviously, along with a large number of other similar
names, all of which incorporate various spellings of the word voyeur, alone or in
combination with other words.
Respondent concludes with a challenge to
the very good faith of Complainant’s actions, asserting that Complainant failed
to note the long use by Respondent of the alternative spelling.
C.
Additional Submissions
Both Complainant and Respondent filed
additional submissions.
Complainant’s additional submission
consists of an Affidavit of Richard Schwartz who declares that he is both the
managing director of the owner of the mark Voyeur.com and the managing director
of the entity, New Century Investments, Ltd., which owns the domain name
<voyeur.com>. He alleges that he
has transferred the domain name <voyeur.com> to Virtual Dates, Inc. He also alleges that he knows Slavik Viner,
who purchased the differently spelled domain name, <voyuer.com>. He states that Viner knows how much revenue
is generated by the tradename “Voyeur.com.”
He states that the domain name Voyeur.com has been existence since 1994
and that he purchased it in 1997. He
asserts that only his domain name and Respondent utilize the word “voyeur” in
exactly the same way, so that there is confusion. He asserts that Respondent valued the name so much that it paid
$112,000 for the differently spelled version.
Complainant’s additional submission includes summaries of domain name
decisions.
Respondent urges the Panel to ignore the
Schwartz Affidavit because no evidence of the alleged registration in 1997 of
the domain name <voyeur.com> is provided. Further, Respondent points out that the Affidavit and the
original pleadings, including trademark application, are contradictory. The trademark application says that the
first use was 1998, not 1994 or 1997.
As to Schwartz’ assertions of transfer between companies, Respondent
points out that this is very convenient.
Respondent goes on to point out a number of domain names similar to
<voyeur.com> and <voyuer.com>, many of which predate the
trademark application. Respondent then
goes on to explain and distinguish each of the citations to domain name
decisions provided by Complainant and assert that the analysis of cases
“[g]rossly [m]isrepresents” those decisions.
The supplemental response goes on to discuss the lack of secondary
meaning for the mark and to argue that
the alleged mark is nothing more or less than an address from which domain
users are redirected to other pornographic websites. Respondent asserts that the Complainant is trying to seek a
ruling that grants it rights in the word “voyeur.” This, says Respondent, would impact all of those domain names
like voyeurs.com, voyeurteens.com, 777voyeur.com, voyeurxxx.com, or thousands
of other variations. In its response,
Respondent notes that there are 3,801 domain names that incorporate the term
“voyeur,” whether spelled properly or as “voyuer” or “voyer.” Because Complainant has shown no secondary
meaning, Complainant’s arguments must fail.
FINDINGS
Complainant has failed to demonstrate
that it has anything more than a registration on the supplemental registry,
which does not create a trademark of sufficient strength to enable Complainant
to assert that it holds a mark as to which <voyuer.com>
(misspelled) is either identical to or confusingly similar. Because Complainant does not establish the
existence of a mark, Complainant’s request for relief will be denied. Factually, the supplemental register,
reflecting registration when the mark has been denied, creates a presumption
that the mark is merely a generic or descriptive term. Put simply, the burden of proof is on
Complainant and Complainant has failed in this burden of proof. The hurdles for showing that a generic term
like “voyeur” has acquired a secondary meaning are high – Complainant has not
cleared even the first hurdle.
The Panel is most disturbed by
Complainant’s additional submission.
The Schwartz declaration is unsupported by any evidence. The Schwartz Declaration contradicts the
very trademark application on which Complainant basis its request for relief. And most importantly, Complainant’s analysis
of the various domain name decisions contained in its supplemental pleading is,
as Respondent points out, confusingly similar.
For example, Complainant states that Evans and Southerland v. Real
Image, FA 96112 (Nat. Arb. Forum Dec. 18, 2001) was not a case in which the
supplemental registration was sufficient.
In fact, the panel in Evans & Sutherland found that the
evidence demonstrated common law rights in the mark. Common law rights can only arise when a secondary meaning has
attached. Complainant mischaracterizes
the decision in The Cold War Museum v. Nicolas Jampol, FA96594 (Nat.
Arb. Forum Feb. 8, 2001). There, strong
evidence had been presented of the acquisition of a secondary meaning by a mark
that might otherwise be characterized as merely a generic “name.”
As to Respondent’s right to the mark,
since Respondent has demonstrated conclusively that it registered its domain
name before a registration of the trademark was ever attempted. Schwartz’ misleading affidavit to the
contrary, with the first use of “Voyeur.com” as a mark in commerce in 1998, the
1997 registration means that Respondent had rights in the name. See Roberta Chiappetta d/b/a
Discount Hydroponics v. C.J. Morales, 1103 (WIPO Jan. 20, 2003); see also, Kaleidoscope Imaging, Inc. v. V Entertainment a/k/a
Slavik Viner, FA 203207
(Nat. Arb. Forum Jan. 5, 2004) and Phoenix Mortgage Corp. v. Tom Toggas,
D2001-0101 (WIPO Mar. 30, 2001).
Finally, there is simply no evidence of
bad faith. While the trademark
registered on the supplemental register and the differently spelled domain name
certainly compete, there is simply no evidence that the domain name was
registered to hijack those folks who wish to look at dirty pictures, for the
domain name was clearly the first registration. See, Warm Things, Inc. v. Weiss, D-2202-0085 (WIPO
Apr. 18, 2002).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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;
(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.
Complaint has failed to demonstrate that it owns a mark to
which the domain name at issue is identical and/or confusingly similar. Its alleged mark is merely registered on the
supplemental register. That is not
sufficient.
As to rights to
the domain name, Respondent’s rights to the domain name certainly precede the
registration of the mark on the Supplemental Register.
Complainant has offered no evidence of
bad faith; it only offered unsupported allegations based upon use of a domain
name, which predates its alleged mark.
DECISION
Complainant
has not established all three elements required under the ICANN Policy; the
Panel concludes that relief shall be DENIED.
DATED:
April 27, 2005.
R.
GLEN AYERS, JR., Chair
HON.
CAROLYN M. JOHNSON (RET.)
M.
KELLEY TILLERY
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