Livevideo.com Inc. v. Patrick Ty / EE88
Claim Number: FA2107001957449
Complainant is Livevideo.com Inc. (“Complainant”), represented by David Cicotte, Texas, USA. Respondent is Patrick Ty / EE88 (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livevideo.com>, registered with GoDaddy.com, 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.
Aaron B. Newell as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2021; the Forum received payment on July 29, 2021.
On July 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <livevideo.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2021 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@livevideo.com. Also on August 4, 2021, 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 August 20, 2021.
Unsolicited additional submissions were received:
i) Complainant’s additional submission September 7, 2021; and
ii) Respondent’s additional submission September 9, 2021.
The Panel accepts both submissions into the proceedings. Both contain probative information that the Panel finds helpful in respect of the determination of the matter.
On August 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B Newell 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
The Complainant alleges that it operated as a provider of online video entertainment at the subject domain name and by reference to the trademark LIVEVIDEO since 2006 and that these services continued up to in/around 2015.
Complainant states that during this time it published at the domain name a variety of user-generated video as well as original content, much of which can still be viewed today on other streaming platforms.
Complainant estimates that from 2007 through 2011 over 150,000,000 unique visitors would have used its livevideo.com website, following an average investment by the Complainant of USD $100,000 per month over this time in advertising and marketing.
Complainant asserts that it owns a Montana state trademark registration for LIVEVIDEO.COM, a pending Philippines trademark application for this name, and common law rights in the name LIVEVIDEO and/or LIVEVIDEO.COM.
Complainant states that the domain name inadvertently fell out of its control in/around May 2018. No clear explanation is given as to how this happened.
Complainant alleges that Respondent has no bona fide interest in the domain name and offered to sell the domain name to the Complainant for USD $500,000, pursuant to an approach by the Complainant. Complainant provides evidence of the Respondent’s offer.
B. Respondent
Respondent refutes Complainant’s claims to having relevant trade mark rights and notes that it is difficult to claim exclusivity in the term “livevideo” due to the descriptive connotations of the phrase “live video”.
Respondent asks that the Complainant’s second submission be rejected by the Panel.
For proper order: this request is denied given the probative nature of the material therein, and the fact that Respondent had an opportunity to respond or request further time to respond to this submission, but instead asserted “I am not even interested in reading these additional materials”.
C. Additional Submissions
The Panel has nothing further to add in respect of the additional submissions.
The Panel finds that:
i) Complainant was previously the registered owner of the subject domain name, but inadvertently lost its control of the domain name;
ii) Complainant used the domain name for an extended period of time for a video streaming service that at one stage competed with YouTube and attracted millions of users. This appears to have begun in/around 2006 and ended in/around 2015;
iii) Complainant is still associated with the domain name by a certain number of internet users, and Complainant’s content published at the domain name can still be located (and associated with Complainant) at other sites online;
iv) Respondent registered the domain name after the Complainant had lost control over it, and has since used it to promote itself as “The pioneer of one-stop entertainment game live broadcast system” and “based in Silicon Valley, USA”, with imagery related to gambling, but with no obvious business at the domain name save for linking through to other websites;
v) Respondent is not based in Silicon Valley, USA but, rather, is based in Philippines;
vi) Complainant offered to purchase the domain name from the Respondent, Respondent proposed a price of USD $500,000.
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 Complainant’s Montana trademark registration is not an adequate basis for claiming the “rights” necessary under Policy Paragraph 4(a)(i). Numerous panels have held before this one that United States state trade mark registrations that undergo no or very little substantive examination do not give rise to relevant rights under the Policy.
The Complainant’s Philippines trade mark application is similarly inadequate as a foundation for the Complaint. The Complaint was filed prior to the registration of this application.
On this basis, the Complainant has demonstrated no registered rights sufficient to meet the 4(a)(i) criteria.
However, the Panel finds that the Complainant enjoys unregistered common law rights in the LIVEVIDEO.COM name through its extensive use up to and around 2015. This use is well documented online and, while it is clear that internet users who were familiar with the Complainant’s past activities also appear to be aware that the Complainant ceased using the domain name, it is clear that there is a residual goodwill in respect of video streaming services.
For example, a number of the Complainant’s original videos can be found on Youtube and continue to receive a number of views and are recognized as being associated with the LIVEVIDEO.COM name.
Further, Complainant’s LIVEVIDEO.COM business and name appear in discussions online. One internet user commented in 2017 “livevideo.com has long since imploded, gone but not forgotten”. Another in/around 2020: “this site went down a few years ago now ! was one of the best video platforms out there until the script was handed out to all.”
While recent evidence is thin and the goodwill apparently dwindling, I am reminded that I must assess whether unregistered trademark rights exist on a balance of probabilities.
Having regard to that standard, my view is that if a third party recommenced a streaming service at livevideo.com, there would be a meaningful number of internet users who would engage with that service under the mistaken belief that it was or was somehow affiliated with or related to the Complainant, potentially on the basis that the Complainant had resumed its “gone but not forgotten” activities.
On that basis, I consider that on a balance of probabilities the 4(a)(i) criteria is met.
The Complainant alleges that the Respondent registered the domain name in order to take advantage of the Complainant’s past use of the domain name, and its unwitting relinquishment of the domain name.
The Respondent appears to have set up a number of placeholder websites at the domain name since taking control of it in 2018, however despite filing a Response, cannot demonstrate any actual business activity at the domain name.
Rather, Respondent’s Response focusses mainly on asserting that the Complainant does not have exclusivity in the words LIVE VIDEO.
The Response does not explain why or to what end the Respondent registered the domain name. There is no obvious legitimate noncommercial use put into evidence. There is in fact no obvious relevant use at all, nor any demonstrable preparations for any such use. There is only a series of placeholder websites that feature imagery that is related to gambling services and a tagline relating to entertainment, but without any actual gambling services or entertainment being offered, and no plans for any such activity put into evidence.
The Respondent has had two opportunities to show some kind of bona fide purpose for the domain name despite the Complainant’s historical business activities at the domain name. It has not done so.
On balance of probabilities, I find that the Respondent has no rights or legitimate interest in the domain name. I make this finding on the basis that the Complainant has made out a prima facie case that the Respondent lacks a legitimate interest in the domain name, and the Respondent has not provided anything in response that rebuts the Complainant’s prima facie case.
It should be noted that the Panel has considered the obviously-descriptive meaning of the term LIVE VIDEO when arriving at this conclusion.
In this regard, while the domain name is obviously comprised of generic and/or descriptive words suggesting that the content at the website would at least in part feature live video, the Panel takes the view that the Complainant’s historical use of the identical domain name overrides any argument Respondent may make that it has a legitimate interest in the domain name because it is a generic, descriptive term.
First, the domain name is not merely the words LIVE VIDEO, it is an online address at which the Complainant maintained a significant business for over a decade. Second, the Respondent could have, but has not, provided any evidence that demonstrates any actual or intended use of the domain name for anything that can be described as “live video”. In the circumstances, the descriptive nature of the phrase “live video” is insufficient to offset the a) historical use of the domain name by the Complainant (which does much of the work establishing the Complainant’s prima facie case) and b) dearth of evidence by which the Respondent could have shown that despite the Complainant’s historical use, Respondent had actual or intended use of the domain name that is entirely independent from the Complainant’s historical use.
The Complainant provides evidence that the Respondent offered to sell the domain name to the Complainant for USD $500,000 following an approach by the Complainant.
This by itself is insufficient for the Panel to arrive at a conclusion of bad fait use and registration. The Complainant initiated contact, and it is Respondent’s prerogative to respond with a commercial proposal at an amount that Respondent considers appropriate.
With this said, in the overarching circumstances, and noting in particular that i) the Respondent has not provided a compelling explanation for the registration of the domain name (including no obvious plans to actually provide “live video” at the domain name) and ii) the Complainant has established significant historical goodwill in the domain name itself and iii) it is relatively easy through basic online searches to locate evidence of the Complainant’s historical use of the domain name, the Panel finds that on the balance of probabilities the Respondent registered the domain name for the purposes of taking advantage of the Complainant’s historical goodwill at the domain name and/or attempting to sell the domain name back to the Complainant, and/or to otherwise unfairly profit from the registration of the domain name.
On this basis, the Panel finds 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 <livevideo.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B. Newell, ESQ, Panelist
Dated: September 21, 2021
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