DECISION

 

Viking Exchange & Marketing Inc. v. Volodimir Chmil / Paysine Ltd

Claim Number: FA2409002114188

 

PARTIES

Complainant is Viking Exchange & Marketing Inc. ("Complainant"), represented by Tao Tran, California, USA. Respondent is Volodimir Chmil / Paysine Ltd ("Respondent"), represented by Andrei Boiko, Bulgaria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <voyeur-house.tv>, registered with Name.com, Inc.

 

PANEL

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 5, 2024. Forum received payment on September 5, 2024.

 

On September 9, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <voyeur-house.tv> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 September 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 2024 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@voyeur-house.tv. Also on September 12, 2024, 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 October 1, 2024.

 

On October 2, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Viking Exchange & Marketing Inc., operates in the adult entertainment industry. It contends that the <voyeur-house.tv> domain name is identical or confusingly similar to Complainant's registered trademark VOYEURHOUSE (serial number 98201584, USPTO).

 

The domain name incorporates Complainant's distinctive trademark in its entirety, leading to significant consumer confusion by implying an unauthorized association with Complainant's brand, especially when searched for on Google. This similarity misleads consumers into believing Respondent's website is affiliated with or endorsed by Complainant, thereby diluting the distinctiveness of Complainant's trademark and causing harm to Complainant's brand's reputation and goodwill.

 

Respondent should be considered as having no rights or legitimate interests in respect of the domain name despite offering similar services. Respondent has not filed for a trademark and is not authorized or licensed to use Complainant's trademark VOYEURHOUSE. Respondent's use of the domain name causes consumer confusion by suggesting an affiliation or endorsement with Complainant's brand which does not exist. This misleading use exploits Complainant's trademark's reputation and dilutes its distinctiveness, indicating a lack of legitimate interest or rights in the domain name and necessitating its removal to protect Complainant's trademark rights.

 

The domain name should be considered as having been registered and being used in bad faith because the Respondent intentionally chose a domain name identical or confusingly similar to Complainant's trademark VOYEURHOUSE to capitalize on Complainant's established reputation. Respondent's actions are aimed at diverting customers seeking Complainant's services to its website, thereby causing confusion and potentially damaging Complainant's brand's reputation. This intentional exploitation of Complainant's trademark indicates bad faith registration and use, as outlined in Policy ¶ 4(b), necessitating the removal of this infringing domain name.

 

B. Respondent

Respondent acknowledges the similarity between its domain name <voyeur-house.tv> and Complainant's claimed trademark VOYEURHOUSE. However, Respondent contends that Complainant has failed to establish the requirement under ¶ 4(a)(i) of the Policy, as it did not possess any trademark rights at the time of Respondent's domain name registration in 2015. Therefore, any similarity is incidental and does not infringe upon rights that did not exist.

 

The words "voyeur" and "house" are generic and descriptive terms widely used in the adult entertainment industry. Their combination is not unique and is not exclusively associated with Complainant. Numerous other entities use these terms descriptively, which diminishes the distinctiveness of Complainant's trademark.

 

Complainant has not provided sufficient evidence to demonstrate that Respondent lacks rights or legitimate interests in the domain name. Since registration of the <voyeur-house.tv> domain name in 2015, Respondent has continuously and legitimately used the domain name to provide a bona fide offering of services in the adult entertainment sector. At that time, there was no activity on Complainant's website. Over the past nine years, Respondent has become widely known by the domain name, establishing a substantial customer base and industry reputation. Respondent's activities are lawful and Respondent has not attempted to create any association with Complainant or its alleged trademark.

 

Respondent has obtained detailed traffic data comparing its website with Complainant's website. The analysis from SEMrush, covering the entire registration period of the domain name, shows that:

 

(i)                      Respondent's website "www.voyeur-house.tv" has a significantly higher Authority Score (49) compared to Complainant's website (35), indicating greater trustworthiness and influence in search engines.

(ii)                      Respondent's website generates approximately 1.7 million visitors, vastly surpassing Complainant's 48,600 visitors.

(iii)                      Respondent ranks for 35,500 organic keywords, whereas Complainant ranks for 8,300, demonstrating Respondent's superiority in search engine optimization.

(iv)                      Respondent has 35.1 million backlinks compared to Complainant's 21,900, reflecting Respondent's stronger SEO efforts and online presence.

(v)                      These metrics confirm Respondent's substantial and legitimate interests in the domain name, established through years of effort and investment.

 

Therefore, Respondent has established rights and legitimate interests in the domain name and Complainant has not met its burden of proof under ¶ 4(a)(ii) of the Policy.

 

Complainant has failed to provide evidence that the domain name was registered and is being used in bad faith.

 

The significant differences in traffic and online presence indicate that Respondent's website's success does not depend on any association with Complainant's trademark. Respondent's high traffic share (97%) and strong performance in non-branded organic queries (78% of Respondent's traffic) demonstrate that Respondent has built its reputation independently. Meanwhile, Complainant's website appears to have minimal traffic and lower visibility in search engines. This suggests that any confusion or association arising from the similarity of the domain name may have inadvertently benefited Complainant rather than Respondent. Therefore, Respondent did not register or use the domain name in bad faith. The domain name was established and has been successfully operating on its own merits since 2015.

 

Respondent registered the domain name nine years prior to Complainant's trademark application, without any knowledge of a potential conflict. At the time of registration, Complainant had no rights to the trademark and therefore Respondent could not have registered the domain name in bad faith. Complainant has not provided any evidence of bad faith use by Respondent, which has operated its website independently and in good faith since 2015, without intent to deceive or mislead consumers.

 

The traffic statistics also show that users do not confuse Respondent's website with Complainant's. Respondent's significantly higher traffic levels indicate that Respondent attracts users based on its own reputation and services, not due to any similarity with Complainant's alleged trademark. This confirms that Respondent has not used the domain name with the intent to create confusion or to unfairly attract users.

 

In light of the above, Complainant has not met its burden of proof under ¶ 4(a)(iii) of the Policy.

 

FINDINGS

Complainant has failed to establish all the elements entitling it to relief and has engaged in Reverse Domain Name Hijacking.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant has shown that it filed an application (Serial No. 98201584) on September 28, 2023 to register the service mark VOYEURHOUSE on the Principal Register of the USPTO in relation to adult entertainment services, claiming first use in commerce in February 2000. The application was published for opposition on July 9, 2024.

 

A pending trademark application does not confer registered rights upon the applicant. 

 

As noted in paragraph 4.8 of the WIPO Jurisprudential Overview 3.0: "it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include…accessing trademark registration databases."

 

A trademark search conducted by the Panel on October 3, 2024 revealed that the VOYEURHOUSE mark was registered to Complainant on September 24, 2024 (Reg. No. 7,512,467). Hence Complainant has rights in the registered trademark VOYEURHOUSE.

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.

 

The Panel finds Respondent's <voyeur-house.tv> domain name to be confusingly similar to Complainant's mark, only differing by the addition of a hyphen, which does nothing to distinguish the domain name from the mark. The inconsequential ".tv" generic top-level domain ("gTLD") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests 

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <voyeur-house.tv> domain name was registered on September 28, 2015, many years before Complainant registered its VOYEURHOUSE mark on September 24, 2024, with effect from the application date, September 28, 2023. There is no evidence before the Panel that Complainant had previously acquired common law rights in the mark.

 

Respondent has produced Web archive screenshots showing that since November, 2016 the domain name has resolved to websites featuring adult entertainment. This demonstrates that, before any notice to Respondent of the dispute, Respondent has used and is using the domain name in connection with a bona fide offering of goods or services. The Panel therefore finds that Respondent has rights and legitimate interests in respect of the domain name.

 

Complainant has failed to establish this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.

 

(i)                      circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)        Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;

(iii)         Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)        by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

The circumstances set out above in relation to the second element satisfy the Panel that Respondent could not have been aware of Complainant's then non-existent mark when Respondent registered the <voyeur-house.tv> domain name and that Respondent registered and is using the domain name in good faith.

 

Complainant has failed to establish this element.

 

Reverse Domain Name Hijacking

Reverse Domain Name Hijacking ("RDNH") is defined in Rule 1 as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Rule 15(e) provides, in part:

 

"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

 

As noted, the Complaint states that the domain name should be considered as having been registered and being used in bad faith because Respondent intentionally chose a domain name identical or confusingly similar to Complainant's trademark VOYEURHOUSE to capitalize on Complainant's established reputation. However, Complainant had no established reputation in its then non-existent mark when Respondent chose the domain name. The Panel considers that Complainant must have known that its statement was false and that its Complaint should fail. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DECISION

Complainant 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 <voyeur-house.tv> domain name REMAIN WITH Respondent.

 

 

 

Alan L. Limbury, Panelist

Dated: October 4, 2024