Candid Color Systems, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1107001399989
Complainant is Candid Color Systems, Inc. (“Complainant”), represented by Ryan L. Lobato of McAfee & Taft, A Professional Corporation, Oklahoma, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), represented by Paul Keating of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwpartypics.com>, registered with Fabulous.com Pty Ltd.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2011; the National Arbitration Forum received payment on July 22, 2011.
On July 24, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <wwwpartypics.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2011 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@wwwpartypics.com. Also on July 29, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 August 18, 2011.
On August 23, 2011, the Forum received an Additional Submission from Complainant, which was timely and in compliance with the Forum’s Supplemental Rule 7.
On August 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
On August 29, 2011, The Forum received Respondent’s “Objection and Rebuttal to Complainant's Supplemental Filing”. This submission also was timely and in compliance with The Forum’s Supplemental Rule 7.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends as follows:
Complainant registered its PARTY PICS marks with the USPTO, and owns the <partypics.com> domain name. Respondent’s domain name incorporates Candid’s full trademark without any changes. The sole difference between Complainant’s domain name and the disputed domain name is the deletion of a “.” element between Complainant’s sub-domain “www” and Complainant’s second level domain name “partypics”. Due to the use of identical literal elements, Respondent’s <wwwpartypics.com> domain name is confusingly similar to Complainant’s federally registered PARTY PICS mark and <partypics-com> domain name.
Respondent’s domain name employs a classic typosquatting tactic of eliminating the “.” between the “www” element and the second level domain name. Respondent does not have a federal trademark registration for WWWPARTYPICS, nor is Respondent known by that name. Respondent does not have permission or any reasonable justification for registering a domain name consisting exclusively of Complainant’s domain name minus the “.” element. Until Respondent received a cease and desist letter from Complainant, Respondent’s domain name displayed a parking page with pay-per-click links to third parties. Following Complainant’s cease and desist letter, Respondent changed the domain name to redirect users to <quiztakeweb.com/d/w4w6w91>, a third party pay-per-click landing page for yet another third party website. Respondent does not use the disputed domain name for a bona fide offering of goods. Prior panels have held that where a respondent is using a disputed domain name to provide pay-per-click links to other websites, the respondent does not have rights or legitimate interests in the disputed domain name, and that typosquatting is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent uses a typosquatting alternative of Complainant’s domain name to misleadingly divert consumers to a pay-per-click website, which is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent registered and used the domain name <wwwpartypics.com> in bad faith. Respondent uses a typosquatting tactic to attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation of Respondent’s website. Respondent’s purpose in registering and using the confusingly similar domain name is to profit through the receipt of fees obtained each time an Internet user clicks on one of the disputed links.
B. Respondent
In its Response, Respondent contends as follows:
Respondent’s asserted mark is “party photographs”, which is descriptive notwithstanding its registration under Section 2(f). The USPTO rejected Complainant’s trademark application as being merely descriptive. The disputed domain name consists of a descriptive combination of ordinary dictionary terms, not distinctive and certainly not fanciful.
Respondent is using the disputed domain name in a fair manner to offer bona fide goods or services. The presence of the term “www” in the disputed domain name is not itself evidence of lack of legitimate interests. The disputed domain name is employed in PPC (“pay-per-click). This use is considered a bona fide offering of goods and services and a legitimate interest under the Policy. Any claim that PPC should be illegitimate per se is particularly misguided when the domain name in question consists of generic or descriptive terms.
There is no link available on the website to Complainant’s website and no mention of Complainant or its products. Nothing on the webpage suggests that Respondent or the goods or services offered should in any way be related to Complainant.
Respondent is not using the disputed domain name to divert consumers. Complainant has not provided any evidence that it is well known that Internet users would see the term “party pics” as a reference to Complainant. Where the asserted mark is so obviously descriptive, the mere possibility of confusion is not sufficient to show an illegitimate intent on behalf of Respondent to divert consumers.
There is no requirement that the Respondent be commonly known by the domain name, or that Respondent hold trademark rights in the disputed domain name, or be authorized by Complainant. Domain names and in particular generic or descriptive domain names, to which no one can claim exclusive rights, are legitimately registered on a “first come, first served” basis.
Respondent has not acted in bad faith. When the domain name consists of a generic/descriptive term, a finding of bad faith requires evidence establishing actual knowledge, that the respondent registered the domain name with complainant’s mark in mind, to profit from the trademark value associated therewith, and not because of its value as a generic descriptive term. Respondent was unaware of Complainant and its asserted rights when it registered the disputed domain name. Complainant is a U.S. entity and holds only U.S. trademark rights. Respondent is located in the Isle of Man and does not do business in the US.
The evidence shows widespread descriptive use of “party pics” by the public, which defeats any claim that the trademark is distinctive and shows that the primary significance of “party pics” is not to identify Complainant’s or any other specific source but rather to merely describe photographs taken in a social context.
Respondent did not register the disputed domain name to preclude Complainant from reflecting its asserted mark in a domain name. Complainant already owns <partypics.com>, which is identical to Complainant’s mark. Complainant has no right to every domain name containing the descriptive term “party pics”.
Respondent did not register the disputed domain name primarily for the purpose of disrupting the business of Complainant. There is nothing unique about the domain name that would support any inference of malfeasance on the part of Respondent.
Respondent did not register the disputed domain name to attract users by creating a likelihood of confusion. A claim of confusion should require that the Complainant establish at least some degree of popularity or secondary meaning, Complainant has provided no evidence of popularity, let alone secondary meaning. Complainant has not submitted any evidence of a reputation or of consumer recognition anywhere, let alone outside the United States such that it could be assumed that Respondent should have been aware.
C. Additional Submissions
In its additional submission (to the extent admitted by the Panel), Complainant submits a long list of decisions issued by NAF and WIPO panels finding that Respondent has acted in bad faith and ordering in each case the disputed domain names to be transferred from Respondent to the complainants. Complainant contends that this list of UDRP cases is evidence of Respondent's repeat pattern of behavior.
In its “Objection and Rebuttal”, Respondent contends that the additional filing of Complainant is improper because it is unsolicited. Respondent alleges that Complainant's argument as to a pattern of conduct is unavailing because evidence of a pattern of conduct is relevant only when the respondent has registered the domain name so as to prevent the complainant from registering a domain name containing the complainant’s mark, and the basis for this rule is not present in this case.
Complainant is a U.S. company established in 1972. It specializes in photography in special events, providing photofinishing and marketing methods and tools for photographers. Photographs taken during graduation ceremonies, parties, groups (bands, teams, cheer squads, etc.) and the like are processed at a black and white and color-processing lab. Prints and products ordered online are shipped via first class mail.
Complainant owns the following marks registered on the Principal Register of the USPTO:
PARTY PICS, Reg. No. 1,440,252, Reg. Date May 19, 1987, Application filed on December 30, 1985, covering candid photography services of International Class 42. No claim is made to the exclusive right to use “pics”, apart from the mark as shown. Stated first use: September 1968. Stated first use in commerce: September 1970.
[Design Mark Image Deleted] Reg. No. 2,899,150, Reg. Date November 2, 2004, Application filed on October 10, 2033, covering photography services of International Class 41. No claim is made to the exclusive right to use “pics”, apart from the mark as shown. Stated first use and first use in commerce: January 1972.
Complainant owns the <partypics.com> domain name at which it operates a website marketing its services.
The disputed domain name was registered on August 26, 2002.
In an independent visit conducted by the Panel on August 31, 2011 to the <archive.org> website (also known as “The Wayback Machine”), the Panel found only two identical web pages active on February 2, 2011 and March 8, 2011. On each of these pages, under the title “Wwwpartypics.com”, there is a legend stating, “What you need it, when you need it”, followed by a list of “Related Searches”: “Dating”, “porn video”, “magazine subscriptions”, “photo albums”, singles, “party supplies”, “adult dating”, “photo album”, “birthday party supply”, and “sex toys”. Also, the following “Popular categories” are shown: “Sexy lingerie”, “horney (SIC) housewives”, “sex picture”, “single girl”, “dating”, “porn video”, “adult movie”, “sexy older woman”, “hot wives”, “sex toys”, “live sex”, “older women”, “sex chat”, “webcam sex”, “adult dating” and “Russian brides”.
On September 1, 2011, in an independent visit conducted by the Panel, Respondent's website at the disputed domain name redirected the Panel’s browser to a web page at <internetquizonline.com/d/w4w6w91>, on which the following text (original in Spanish) was posted: “Congratulations! Are you the winner from Buenos Aires on September 1st? Please choose a prize and enter your email address at the following page.” At the end of this text there was a button marked “Accept”.
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.
Therefore the Panel decides to allow and consider Complainant's additional submission to the extent that it provides a list of NAF and WIPO cases where Respondent was a party, for two reasons. First, the time available for Complainant to get acquainted with Respondent’s extensive history of UDRP cases under its real identity was extremely short. Under these circumstances it was reasonable to include such list with the additional filing. Also, Complainant had used part of its time to explore a proposal sent by email by Respondent. Second, the Panel cannot overlook that it was Respondent itself who took steps to conceal its real identity behind a privacy shield.
The Panel will also consider Respondent’s reply to the issues raised in Complainant’s additional submission to the extent allowed by the Panel.
Identical and/or Confusingly Similar
Complainant has shown that it owns trademark rights in two PARTY PICS marks registered on the Principal Register of the USPTO. See “Findings” above. The disputed domain name incorporates Complainant’s PARTY PICS mark in its entirety, preceded by the common acronym “www” meaning “World Wide Web”. It is well established by UDRP Panels that the addition of a common or generic term in a domain name is inapt to distinguish the domain name from the mark. Adding the “www” prefix in a domain name has the same effect. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also InfoSpace.com, Inc. v. Registrar Adm’r Lew Blanck, D2000-0069 (WIPO Apr. 3, 2000) (“The addition of www before Complainant’s mark and the addition of "s" after the mark are not sufficient to avoid confusion. Indeed, they appear to be additions designed to take advantage of mistakes that consumers are likely to make when intending to enter Complaint’s web site address”.).
In conclusion, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PARTY PICS mark.
Complainant contends that Respondent is not commonly known by the domain name, that Respondent does not have a federal trademark registration for WWWPARTYPICS, that it has no authorization from Complainant to use its mark in a domain name, and that the addition of “www” to Complainant's mark in the disputed domain name is evidence of typosquatting.
Taken together, Complainant's contentions and supporting evidence are apt to constitute a prima facie case of Respondent’s lack of rights and legitimate interests. See 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.”). For its part Respondent argues that it has rights or legitimate interests in the disputed domain name because Complainant’s PARTY PICS mark is descriptive. Therefore, says Respondent, it has legitimately registered and used the disputed domain name
Considering the details of this case, the Panel believes that Respondent’s argument on descriptiveness is unconvincing. PARTY PICS is a U.S. federally registered, valid mark. Complainant succeeded in overcoming a refusal by the examining attorney by submitting a declaration of acquired distinctiveness. See Annex 4 to the Response, Declaration of Distinctiveness of a Mark under Section 2(f). Because it was satisfied that the mark had become distinctive, the U.S. trademark authority accepted the mark for registration. A UDRP panel must also accept the mark as a legitimate basis for a complaint pursuant to the Policy until the trademark registration is declared invalid or cancelled by the competent authorities. Accordingly, a respondent should not derive any rights or legitimate interests in a domain name from its mere assertion that the valid, registered mark to which the domain name is identical or confusingly similar purportedly is descriptive or common.
As evidence that the disputed domain name is descriptive, Respondent submits a list of results of a Google search for the terms “party pictures minus partypics” . See Annex 6 to the Response. Six websites unrelated to Complainant out of the first ten results contain a reference to “party pics”, while the second link shows Complainant's <partypics.com> website.
Since Respondent's search was for “party pictures”, and not for “party pics”, on September 6, 2011, the Panel conducted an independent Google search for the terms “party pics”. Seven of the first ten results, unrelated to Complainant, contained the terms “party pics” and appeared to refer to photographs taken during an event or party. Complainant's website <partypics.com> was in the third place.
While there is some descriptive use of the terms “party pics” by third parties, this does not mean that Respondent can derive rights of legitimate interests in the disputed domain name from this fact only. In other words, the credibility of Respondent’s argument depends on whether Respondent does use or prepare to use the disputed domain name based on its allegedly descriptive sense. For instance, the respondent in Thompson v. Wedding Channel.com Inc., D2002-0086 (WIPO May 21, 2002), cited at section C of the Response, did use a domain name identical to the complainant’s WEDDING PLANNER mark, allegedly descriptive of wedding planning services, to market similar services.
However, unlike the respondent in Thompson, there is no evidence showing that Respondent has ever used or prepared to use the disputed domain name in a descriptive sense, i.e. in connection with pictures taken during a party, etc. See Kaleidoscope Imaging, Inc. v. V Entertainment, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because this term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).
Complainant and Respondent agree that in the past Respondent used the disputed domain name in a PPC website. Since neither Party has provided copies of web pages at the disputed domain name, the Panel independently visited the “Wayback Machine” and found that only one page from Respondent's website at the disputed domain name was “rescued” by the Machine. On this page, under the title “Wwwpartypics.com”, various links and “popular searches”, mostly related to pornographic or adult contents were posted. There was no reference to party pics or pictures.
Respondent' s argument based on a descriptive use by third parties might favor such third parties, but not Respondent itself. In other words, the issue is not whether third parties might have rights or legitimate interests in the disputed domain name, but whether Respondent itself does have any right or legitimate interest.
Further, the disputed domain name is composed of the “party pics” terms (identical to Complainant's mark), preceded by the “www” acronym. The resulting domain name is not descriptive of any activity, but obviously imitates Complainant's <www.partypics.com> website. Respondent’s registration, which naturally lacks the “.” before “partypics”, appears to simply have been made to capture Internet traffic and generate PPC commissions for Respondent. Internet users, upon entering “wwwpartypics.com” into their browsers and without noticing that they have failed to also enter the “.” between “www” and “partypics.com”, are being redirected to Respondent's website or other Internet locations, allowing Respondent to profit from a PPC system.
In other words, the addition of “www” in the disputed domain name constitutes typosquatting, where Respondent obtains a profit from involuntary typing mistakes made by Internet users. Typosquatting does not give rise to rights to or legitimate interests in a domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name); see also National Association of Professional Baseball Leagues, Inc., v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting […] as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
Respondent's present website at the disputed domain name re-directs the user’s browser to a website at the <internetquizonline.com> domain name. On this website also there is no reference to “pictures taken at parties”. Instead, the user is invited to choose a prize and provide its own email address in - presumably - a scheme to capture users’ email addresses and other personal data for undisclosed purposes. The Panel believes that this use of the disputed domain name is no evidence of rights or legitimate interests in the disputed domain name.
In conclusion, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent is right that a finding of bad faith registration requires that the respondent know or should know of the complainant and its mark at the time of registration, i.e. that the respondent register the domain name with the complainant or complainant’s mark in mind. In the present case, Respondent alleges that it did not know of Complainant's PARTY PICS mark at the time of registration, and that it resides in the Isle of Man.
The Panel believes that the fact that the disputed domain name begins with the “www” acronym in a clear case of typosquatting suggests that Respondent at least knew of Complainant’s website at the “partypics.com” domain name, which in turn is identical to Complainant's PARTY PICS mark.
The Panel does not believe that in the Internet era a respondent’s residence in the Isle of Man, located between Great Britain and Ireland, can be in itself a sufficient explanation for not knowing of foreign complainants owning foreign marks, particularly when complainants, as Complainant in the present case, own and operate commercial websites accessible from any country. In fact, nearly all trademarks relied upon by the complainants in the more than thirty NAF and WIPO domain name disputes brought against Respondent were registered outside of the United Kingdom, and most of these marks were registered in the United States of America. The Panel concludes that Respondent's suggested lack of knowledge of “foreign” complainants or marks because of its residence in the Isle of Man is simply not credible, given Respondent’s history of UDRP cases.
For these reasons, the Panel finds that Respondent registered the disputed domain name with Complainant's mark and website in mind, i.e. in bad faith.
As to the past use of the disputed domain name, it consisted of a website with links to PPC websites mostly related to adult or pornographic content, without any descriptive use of the terms “party pics”. See “Findings” above.
Presently, the disputed domain name is used to re-direct Internet users to a “quiz” website where they are asked to provide their email addresses for Respondent's undisclosed purposes. Id.
The Panel concludes that both the past and present uses of the disputed domain name fit within the description of Policy ¶ 4(b)(iv),
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location,
which is a circumstance of bad faith registration and use. Moreover, Respondent's typosquatting is also evidence of bad faith registration and use. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwpartypics.com> domain name be TRANSFERRED from Respondent to Complainant..
Roberto A. Bianchi, Panelist
Dated: September 6, 2011
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