4355768 Canada Inc. v. John Doe
Claim Number: FA2106001952023
Complainant is 4355768 Canada Inc. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is John Doe (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xjerkmate.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2021; the Forum received payment on June 21, 2021.
On June 23, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <xjerkmate.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@xjerkmate.com. Also on June 23, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 disputed domain name <xjerkmate.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that the service marks JERKMATE NEVER JERK OFF ALONE AGAIN, that are the subject of its applications, described below, have acquired a level of distinctiveness, also referred to as secondary meaning, to acquire a protectable status as trademarks at common law.
Complainant claims first use of the marks in commerce on July 6, 2018 and in support of this assertion refers to screenshot archives from the Wayback Machine service of The Internet Archive and the Screenshot History tool of the service provider DomainTools that it claims illustrates its use of the <jerkmate.com>, <jerkmatelive.com> and <jerkmate.tv >domain names at that time.
Complainant refers to a Google Trends report attached as an appendix to the Complaint. The report, in the form of a graph, shows measurements of worldwide searches for the term “JERKMATE” since July 2018. The graph shows that measurable interest of web users carrying out searches for the term started in December 2018, just a few months after the date of first use of the Complainant’s Marks in July 2018), By March 2019 it had reached 40% of its current peak of popularity. The peak was reached between March 28 and April 4, 2021, around the date when the disputed domain name was acquired by Respondent. The novelty and the suddenness of the interest in searches for the term coincides with Complainant’s use of the term as a trademark.
Complainant further refers to a report from Complainant’s advertising and accounting records and attached as an appendix to the Complaint. This report states that between July 2018 and May 2021, sales under Complainant’s mark totaled approximately USD 77 million. In just under three years from 2018 to 2021, the total number of visits worldwide now totals at just over 3.8 billion, with an estimated 250+ million visits per month.
Complainant submits that the disputed domain name is confusingly similar to its JERKMATE service mark arguing that the disputed domain name incorporates the mark in its entirety mark and that the mark is the dominant term, clearly recognizable within the disputed domain name. Complainant adds that the addition of the generic or descriptive letter “x”, which is commonly used as descriptive of “X rating” classification for movies with adult content does not reduce the confusing similarity with the JERKMATE mark.
Complainant adds that the generic Top-Level Domain (“gTLD”) extension <.com> is viewed as a standard registration requirement for a domain name and as such is generally disregarded under the first element confusing similarity test.
Complainant submits that Respondent has no rights or legitimate interests arguing that Respondent is not commonly known by the disputed domain name given that the only names that Respondent appears to have been commonly known by are those found as the registrant’s name and organization in the WHOIS record of the disputed domain name, namely “John Doe”.
Complainant adds that the website linked to the disputed domain name contains no information to identify the registrant or the website operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or “privacy policy” usually found on websites.
Complainant asserts that it never requested, allowed or authorized Respondent to register or hold the disputed domain name or to use Complainants’ marks, or any other Complainant’s trademarks, tradenames, domain names or any other identification element of the Complainant or imitation thereof.
Complainant contends that Respondent’s use of the disputed domain name cannot be considered “fair” as it falsely suggests affiliation with the trademark owner; and panels established under the Policy have held that where a domain name at issue consists of a trademark plus an additional term (at the second- or top-level), such composition cannot constitute fair use. Complainant argues that this reasoning holds true for the addition of the letter “x” to Complainant’s mark to form the disputed domain name.
Complainant adds that Respondent cannot show use of, or demonstrable preparations to use, the disputed domain name (or a name corresponding to the disputed domain name) was in connection with a bona fide offering of goods or services before any notice to him of the dispute, because the evidence shows that Respondent is using the disputed domain name to take parasitic advantage of the goodwill attaching to Complainant’s marks through illegitimate monetization means including web traffic diversion and white label affiliate marketing and tracking.
Complainant further submits that there is sufficient evidence to demonstrate that by using the disputed domain name for commercial, illegitimate and/or unfair purposes, Respondent cannot claim to be making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark at issue.
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing Respondent cannot credibly claim to have been unaware of its JERKMATE mark, because the mark is widely known and highly specific.
Complainant argues that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor and submits that the WIPO Jurisprudential Overview 3.0 notes that panels have applied the notion of a “competitor” beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise.
Complainant refers to dated screenshots from the website to which the disputed domain name resolves, which are attached as an appendix to the Complaint, and argues that they show that Respondent is using the disputed domain name to divert web traffic away from Complainant’s websites. The screenshots show a website also named “JERKMATE” to which it alleges the disputed domain name <xjerkmate.com> resolves.
Complainant contends that Respondent’s website displays adult content and services, such as live webcam performances featuring nudity and sexual activities which are same genre as those provided by Complainant and directly compete with the services provided by Complainant.
Complainant explains that a “white-label service” is one supplied by one provider (the supplier) that others (the affiliated marketers) rebrand to make it appear as if they had made it. When applied to web content and domain names, this allows domain name holders to monetize their traffic and earn revenue. An affiliate marketer can customize the website to which his domain resolves by adding branding and texts.
Complainant states that its objection is not to Respondent’s use of affiliate programs per se, but objects to Respondent’s use of the disputed domain name which is confusingly similar to the Complainant’s mark to deliver Respondent’s competing service. Complainant argues that such use amounts to passing off.
Complainant adds that such use of the disputed domain name is likely to cause confusion among Internet users and that Respondent is using the disputed domain name in bad faith to generate revenue from Internet users who are likely to falsely believe that Respondent’s website is provided or licensed by the Complainant while such is not the case.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides webcam and cybersex services under the JERKMATE trademark for which it has filed two service mark applications namely
· United States service mark application for the mark JERKMATE, application number 90369950, on December 9, 2020 for services in international classes 38, 41 and 42, claiming first use in commerce on July 6, 2018; and
· United States service mark application for the mark JERKMATE NEVER JERK OFF ALONE AGAIN, application number 90369955, filed on December 9, 2020 for services in international classes 38,41 and 42, claiming first use in commerce on July 6, 2018.
Complainant’s is an Internet based business provided through websites to which its domain names <jerkmate.com>, <jerkmatelive.com> and <jerkmate.tv> resolve.
The disputed domain name <xjerkmate.com> registered on March 18, 2021 and resolves to a website that provides services that compete with those provided by Complainant.
There is no information available about Respondent except for that which is provided in the Complaint together with its annexes, the Registrar’s WHOIS, and the information provided by the Registrar relating to the registration details of the disputed domain name.
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested evidence that it has used the JERKMATE service mark in the provision of online webcam services prior to the registration of the disputed domain name.
Its two trademark applications described above, were filed on December 9, 2020 claiming first use of the marks in commerce on July 6, 2018..Additionally Complainant has adduced uncontested evidence that it has acquired a substantial business and notoriety in the JERKMATE mark which brands its website. Complainant’s evidence from Internet archives and its own internal search trend measurements which have been annexed to the Compliant, show that its websites attract substantial traffic.
Complainant submits that between July 2018 and May 2021, sales under Complainant’s mark totaled approximately USD 77 million and its website worldwide has an estimated total of over 250 million visits per month.
This Panel finds that in the absence of any contrary evidence, Complainant has proven on the balance of probabilities that JERKMATE is a mark that has acquired a level of distinctiveness and secondary meaning denoting Complainant’s services to achieve a protectable status at common law.
In making this finding however, this Panel finds that in themselves, Complainant’s service mark applications do not confer any trademark rights in either mark; that a complainant has a low threshold to pass in order to succeed in establishing rights in a mark under the Policy; and obviously this Decision does not confer any status on the JERKMATE mark beyond this proceeding.
The disputed domain name consists of Complainant’s JERKMATE service mark in its entirety, preceded by the letter “x” and followed by the gTLD <.com> extension.
The term JERKMATE is the dominant element of the disputed domain name. The prefix letter “x” is commonly used as descriptive of “X rating” classification for movies with adult content does not reduce the confusingly similar character of the disputed domain name.
Additionally, in the circumstances of this Complaint, Internet users would consider the gTLD <.com> extension to be a necessary element of a domain name with no distinguishing character.
This Panel finds therefore that the disputed domain name is confusingly similar to the JERKMATE mark in which Complainant has rights. Complainant has therefore satisfied first element in the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests arguing that
· Respondent is not commonly known by the disputed domain name;
· Respondent appears to have been commonly known as “John Doe” as shown by the WHOIS record for the disputed domain name;
· the website linked to the disputed domain name contains no information to identify the registrant or the website operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or “privacy policy” usually found on websites;
· Complainant has never requested, allowed or authorized the Respondent to register or hold the disputed domain name or to use Complainants’ marks, or any other Complainant’s trademarks, tradenames, domain names or any other identification element of the Complainant or imitation thereof;
· Respondent’s use of the disputed domain name cannot be considered to be “ fair” as it falsely suggests affiliation with Complainant as owner of the JERKMATE service mark as it consists of the trademark plus the letter “x” which signifies adult content;
· Respondent cannot show use of, or demonstrable preparations to use, the disputed domain name (or a name corresponding to the disputed domain name) was in connection with a bona fide offering of goods or services before any notice to him of the dispute, because Respondent is using the disputed domain name to take parasitic advantage of the goodwill attaching to Complainant’s marks through illegitimate monetization means including web traffic diversion;
· Respondent cannot claim to be making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain because it is using the disputed domain name to misleadingly divert consumers and tarnish the Complainant’s mark at issue.
It is well established that when a complainant makes out a prima facie case that the respondent has no rights legitimate interests in the domain name in dispute, the burden of production shifts to the respondent to prove such rights.
Respondent has failed to file a Response and has therefore failed to discharge the burden of production it follows therefore that this Panel must find that Respondent has no right or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The evidence adduced in the Complaint shows Complainant’s JERKMATE name and website was widely known when the disputed domain name was chosen and registered.
It is implausible that the registrant of the disputed domain name chose and registered the combination of the letter “x” with Complainants mark by coincidence. Not only is the JERKMATE mark distinctive but the prefix “x” clearly references adult material and content.
This Panel finds therefore that on the balance of probabilities the disputed domain was chosen and registered in order to create confusion among Internet users by taking predatory advantage of the notoriety of Complainant’s JERKMATE mark and website.
The uncontested evidence also proves on the balance of probabilities that Respondent taking advantage of the notoriety of Complainant’s name, mark and website by using the disputed domain name, which is confusingly similar to Complainant’s JERKMATE mark and almost identical to Complainant’s own domain name <jerkmate.com>, to attract and divert Internet traffic to Respondent’s website that provides content and services which compete with Complainant for commercial gain.
As this Panel is found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xjerkmate.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 20, 2021
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