4355768 Canada Inc. v. Gary Van Leeuwen / GUTS Media
Claim Number: FA2108001957956
Complainant is 4355768 Canada Inc. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Gary Van Leeuwen / GUTS Media (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue <jerkmate.xxx>, registered with NameCheap, Inc..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2021; the Forum received payment on August 3, 2021.
On August 3, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <jerkmate.xxx> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 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@jerkmate.xxx. 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send emails to the Forum, see below.
On August 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is an international web marketing company based in Quebec City that has built an international network of web marketing professionals. It operates a cost per action (CPA) online advertising network under the trademark CRAKREVENUE, a platform focused on affiliate marketing, a type of performance-based marketing in which a business rewards one or more affiliates for each lead (i.e. visitor or customer) brought by the affiliate’s own marketing efforts. In 2021, it has been ranked #5 in the worldwide Top 20 CPA Networks (overall and in the Top CPA Networks for Affiliates and Publishers) and #4 in the Top CPA Networks for Advertisers and Merchants according to mThink BlueBook ranking. The Blue Book is an annual ranking of the Top 20 cost-per-sale and cost-per-acquisition networks worldwide, informed by a four-month industry-wide survey, input from a panel of industry experts, as well as other weighted data. mThink is the online publishing division of mThinkDigital, which positions itself as a leading interactive marketing services agency focused on digital strategy, content marketing, customer acquisition and e-commerce. Complainant is specialized in monetizing web traffic and generates sales from such qualified traffic in more than 200 countries. Complainant’s expertise has allowed for a network of more than 35,000 affiliates (which continues to grow) to be paid over 250 million USD in affiliate commissions so far. In 2018, Complainant became a market participant in the camming and cybersex industry under the JERKMATE trademark and related domain names <jerkmate.com>, <jerkmatelive.com>, and <jerkmate.tv>. Complainant, through the platform associated with its domain names, offers a different approach to live web cam performance by allowing cam-to-cam experience enabling users and models to see each other through the performance. Complainant filed to register its JERKMATE mark in the United States on Dec. 9, 2020, and argues common law trademark rights dating back to 2018.
Complainant alleges that the disputed domain name is identical or confusingly similar to its JERKMATE mark because it wholly incorporates Complainant’s mark while merely adding the “.xxx” generic top-level domain. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name nor has Respondent been authorized to use Complainant’s JERKMATE mark. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent passes off as Complainant and provides competing services at the resolving website. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because Respondent passes off as Complainant and offers competing services on the resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the JERKMATE mark: in order for a “.xxx” domain name to become a resolving live website and offer any content, the domain holder must attest to being a provider of adult entertainment services; thus, it is implausible that Respondent was not aware of Complainant’s web sites and marks when it registered the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. It its emails to the Forum, Respondent states, in pertinent part: “If you would have contacted me to negotiate a transfer and or at least an offer I would really have appreciated that. I am a person of trust and would like to see if we can get to an understanding since I understand that your client would like the domain. Is a negotiation possible and can you ask your client what would be reasonable to transfer this domain? I can setup a transfer via Sedo or such?” And: “To the [Complainant’s] representative please contact me and share with me your thoughts and or offer to transfer this domain. … perhaps we can come to agreement for a domain transfer.”
Complainant owns rights in the mark JERKMATE uses it to offer adult entertainment services.
Complainant’s rights in its mark date back to 2018.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving website offers services that compete with those of Complainant.
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 does not yet have registered trademark rights in the mark JERKMATE. Even if it had such rights, they would not be relevant for the instant proceedings, because the relevant date is filing application date, Dec. 9, 2020, which is subsequent to the registration of the disputed domain name, June 2, 2020. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
However, Complainant claims common law rights dating back to 2018. A complainant may establish a secondary meaning in a mark based on a variety of factors including its longstanding use of the mark, its holding of an identical domain name, media recognition, and marketing. Complainant provides evidence of use of its <jerkmate.com>, <jerkmatelive.com>, and <jerkmate.tv> websites dating back to 2018. Complainant provides Google Trends reports showing significant volumes of searches for the term “jerkmate” starting a few months after Complainant launched its websites. Complainant also provides a blog published in 2019 that refers to its trademark. The Panel finds that this is sufficient evidence to find common law trademark rights under the Policy. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”); see also 4355768 Canada Inc. v. John Doe, FA2106001952023 (Forum July 20, 2021) (“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.”). Therefore, the Panel finds that Complainant has rights in the JERKMATE mark dating back to 2018 under Policy ¶ 4(a)(i).
The disputed domain name wholly incorporates Complainant’s mark, merely adding the “.xxx” gTLD. A domain may be found to be identical, under Policy ¶ 4(a)(i), where the addition to a complainant’s mark is merely a gTLD. See McKool Smith, P.C. v. Chelsea Davis, FA 1529145 (Forum Dec. 30, 2013) (“The Panel finds that the <mckoolsmith.xxx> domain name is identical to Complainant’s MCKOOL SMITH mark in this respect under Policy ¶ 4(a)(i).”). Therefore, the Panel may finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: absent a Reply, WHOIS information may be used to determine whether a Respondent is commonly known by a domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information lists “Gary Van Leeuwen, GUTS Media” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The resolving website offers services that compete with those of Complainant. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent knew of Complainant’s mark prior to registering the disputed domain name. The Panel accepts Complainant’s submission to the effect that, as a provider of adult entertainment services, Respondent likely knew of Complainant’s web sites. However, Complainant does not provide evidence showing that Respondent was necessarily aware of the secondary meaning acquired by Complainant’s mark, and thus that Complainant had common law trademark rights dating back to 2018. Consequently, the Panel finds that Complainant has failed to satisfy its burden of proof for this element of the Policy and it will not further discuss this allegation.
Respondent has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website offers services that compete with those of Complainant. Use of a domain name to provide competing services may be evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jerkmate.xxx> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 27, 2021
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