eGalaxy Multimedia Inc v. RDCTO Limited
Claim Number: FA0110000100705
Complainant is eGalaxy Multimedia Inc., Toronto, Ontario Canada (“Complainant”) represented by David Warga, of Warga Law Firm. Respondent is RDCTO Limited, Dalston, London, United Kingdom (“Respondent”).*
The domain name at issue is <newsnudes.com>, registered with Tucows, 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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 18, 2001; the Forum received a hard copy of the Complaint on October 19, 2001.
On October 19, 2001, Registrar Tucows, Inc. confirmed by e-mail to the Forum that the domain name <newsnudes.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. Registration Agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on November 12, 2001.
A timely Additional Submission, “Reply to Respondent’s Response”, was received from Complainant November 16, 2001.
On November 27, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant claims that the marks “Nude News” and “Naked News” are registered in and/or applied for in several categories of goods or services in a number of jurisdictions throughout the world. In particular, Complainant claims that “Nude News” and “Naked News” are registered in Mexico and in Hong Kong and that it has pending trademark applications for both “Nude News” and “Naked News” in the United States, Canada, Argentina, Australia, Taiwan, Japan and the European Union.
Complainant complains that Respondent’s domain name <newsnudes.com> is confusingly similar to Complainant’s registered trademark for “Nude News” because of a strong degree of resemblance, appearance, sound and the idea suggested.
Respondent utilizes <newsnudes.com> for the same type of services provided by Complainant, that is a news and information service with unclothed presenters.
Complainant complains that the domain name in question is merely a reverse order of the words contained in Complainant’s alleged mark “Nude News” with the addition of the letter (s) after “nude.”
Complainant complains that Respondent has no rights or legitimate interests in respect to the domain name because (a) it has only been registered since August 15, 2001 (b) the <newsnudes.com> Website has only been active since October 1, 2001 (c) Respondent does not have a registered trademark for “News Nudes” anywhere in the world (d) Respondent has never previously been commonly known by the trademark “News Nudes” or by the domain name <newsnudes.com> (e) Respondent has not developed sufficient good will or reputation which may otherwise give rise to legitimate rights or interests to the domain name <newsnudes.com> and (f) Respondent’s domain name is clearly calculated to create confusion between Respondent’s similar internet service and Complainant’s Internet service.
Complainant claims that it operates a famous website located at <nakednews.com> and paid television broadcast program entitled <nakednews.tv> and that Complainant has used its famous trademarks “Naked News” and “Nude News” since at least as early as December 1999.
Complainant further claims that it has gained a global reputation for providing quality news, information and entertainment services and that the site is visited by approximately 6 million visitors per month.
Complainant complains that Respondent has registered and used the domain name <newsnudes.com> primarily for the purpose of preventing Complainant from reflecting the mark in a domain name or disrupting Complainant’s business or attracting for commercial gain Internet users to the Respondent’s Website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s Website.
Complainant alleges that on or about August 14, 2001, Mr. Daniel Higgins of Respondent sent an e-mail to Complainant inquiring about licensing Respondent’s content for the U.K. and proposing a telephone pay-per-call solicitation business. Complainant responded to Mr. Higgins requesting additional information and Higgins sent additional information on August 14, 2001, said information consisting of a proposal for the parties to do business together.
Complainant contends that on August 15, 2001, Respondent registered the domain name <newsnudes.com> for commercial gain without obtaining the Complainant’s consent or authorization while fully aware of the notoriety and well-established trademarks of Complainant.
Complainant contends that there was further correspondence between the parties through August 2001 and then on October 1, 2001, Respondent sent an e-mail to Complainant’s agent announcing the launch of a directly competitive website at <newsnudes.com>.
Complainant contends that after August 17, 2001 it did not wish to pursue any further discussion with Respondent due in part to “fraud, false and deceptive representation and unfair trade practices” associated generally with Internet/telephone pay-per-call solicitations.
Respondent contends that Complainant does not have any valid trademark registrations for the generic and/or descriptive mark “Nude News” but rather has merely applied for such registration.
Respondent claims that it has rights and legitimate interests in and to the disputed domain name because it incorporates a common generic term and before notice of this dispute, the disputed domain name had been used in connection with the bona fide provision of nude news services. Thus, Respondent claims it has not registered and/or used the domain name in bad faith.
Respondent contends that it has the right to use a descriptive domain name for a product or service that it describes. Respondent further contends that Complainant has not proffered any evidence that the domain name was acquired primarily for the purpose of selling, renting or transferring it to Complainant, reflecting its trademark in a domain name or to disrupt Complainant’s business or attract customers seeking to purchase its products.
Complainant contends that it is an Internet company which provides a platform for Internet consultancy and development which launched <newsnudes.com> site after their research showed that there was interest in the U.K. for a news information service presented by female strippers. It contends that it launched its site in September 2001 and has many regularly paying customers.
Respondent contends that <newsnudes.com> is an appropriate descriptive domain name for its service. Respondent further contends that Complainant’s mark is a descriptive term put to a generic use to describe services. Respondent claims that Complainant has no enforceable trademark rights under the UDRP.
C. Additional Submissions
Complainant in its Additional Submission contends that its marks have acquired distinctiveness and secondary meaning. It further contends that Respondent has commenced use of the domain name in conjunction with the offering of pornographic banner ads and links to other pornographic sites and that such dilutes the distinctiveness and good will associated with the “Naked News” and “Nude News” trademarks.
Complainant contends that “Naked News” and “Nude News” trademarks have become famous due to heavy publicity and regular use and media coverage in Canada, the U.S. and the U.K. and various media.
Complainant contends that both marks are famous in the U.K. and have been known in the U.K. since as early as December 1999.
Complainant contends that Respondent had actual notice of these marks long before it registered the domain name in question.
Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant, admissible evidence that the domain name registered by Respondent is identical or confusingly similar to trademarks or service marks in which Complainant has rights. UDRP 4 (a)(i).
Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interests in respect to the domain name in question. UDRP 4(a)(ii).
Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. UDRP 4(a)(iii).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
Respondent’s domain name <newsnudes.com> is obviously not identical to either of the two alleged marks of Respondent – “Naked News” and/or “Nude News.” Nor can Respondent’s domain name be said to be confusingly similar to Complainant’s alleged mark “Naked News”. However, it is possible that Respondent’s domain name <newsnudes.com> may be said to be confusingly similar to Complainant’s alleged mark “Nude News.” The only difference between the two is that Respondent adds an (s) to “nude” and the words “Nude” and “News” are reversed. Since both terms joined together mean the same thing and the two words are identical, merely reversing them and making one plural does not sufficiently dispel any possible likelihood or confusion. Thus, this Panel finds that <newsnudes.com> is confusingly similar to “Nude News”. Cook Motorcars, Ltd. v. Patricia Soto, FA 94992 (Nat. Arb. Forum July 18, 2000) [“motorscook.com” confusingly similar to “cookmotor.com”].
This however, does not end the inquiry under UDRP 4(a)(i). Complainant must prove that the domain name in question is not only confusingly similar to its alleged mark, but also that its alleged mark is a “trademark or service mark in which the Complainant has rights.”
Although Complainant has indicated that it has a number of applications pending for “Nude News”, pending applications do not establish trademark rights. However, it does contend that it has registrations of “Nude News” in two (2) places - Mexico and Hong Kong.
Annex One to Complainant’s Complaint indicates that there are two (2) Registrations for “Nude News” in Mexico as follows: Application #455917; Application Date: 10/31/00; Class IC #38; Registration #689563; Registration Date: 2/28/01 and Application #460190; Application Date: 11/28/00; IC #41; Registration #699663; Registration Date: 5/29/01; and one (1) in Hong Kong – Application #24501/00; Application Date: 11/6/00; IC #41; Registration #B10634/01; Registration Date: 10/20/01.
Respondent has presented no evidence to indicate that said marks are not so registered.
The issue is thus whether such registrations in and of themselves constitute sufficient evidence to establish that Complainant has rights in and to those marks.
Although a trademark registration is certainly strong evidence that a Complainant has rights in a mark and may even constitute a presumption of same, it is certainly not conclusive of this important requirement of UDRP 4(a)(i).
Since there are well over 150 nations or nation groups which have official trademark registries and the United States has 50 states which have their own registries and each and every one of those registries has at least slightly different laws, rules, regulations, standards and examination procedures, the mere fact that a Complainant has successfully secured a registration from one or more cannot be conclusive on this point. Some jurisdictions permit virtually instant registration with little or no review or examination, See, e.g., Telaxis Commun. Corp. v. Minkle, No. D2000-0005 (WIPO March 5, 2000) [Morocco – 1 day] and some issue registration upon application without any substantive examination. See, e.g. Ciccone v. Parisi, No. D2000-0847 (WIPO Oct. 12, 2000) [Tunisia].
Many, if not most or even all, states in the United States issue registrations without any significant examination.
Thus, Complainant’s registrations are merely some evidence that it has rights in and to these alleged marks.
There can be no doubt that the words “nudes” (or “nude”) and “news” are generic. They are common descriptive words which denote a class of things. No member of any purchasing public however defined could possibly associate either word with the products or services of any one person or entity.
The question at hand is whether putting two generic terms together can change their significance. At best, this Panel believes that putting two generic terms together such as “nudes” (or “nude”) and “news” may create a descriptive mark. A descriptive mark can be protectable as a trademark if secondary meaning can be proven. However, a decision on whether these are generic or descriptive need not be reached for reasons set forth hereinbelow.
Having found no likelihood of confusion between “Naked News” and <newsnudes.com>, whether “Naked News” has achieved sufficient secondary meaning to establish trademark rights is not relevant at this point. However, if the record includes sufficient, credible evidence to establish that “Nude News” has achieved secondary meaning in the relevant market place, then it is possible that Complainant just may have trademark or service mark rights in and to “Nude News.”
Complainant states that it has used “Nude News” “since as early as December 1999.” Complainant’s earliest application for registration for “Nude News” anywhere is 10/9/00 in the United States. While Complainant’s submissions include a great deal of publicity and media coverage of its’ use of “Naked News”, all of which just might establish secondary meaning for “Naked News”, they include very little, if any, evidence which might establish secondary meaning in and to “Nude News.”
On this record, this Panel cannot find that “Nude News” is anything other than generic or merely descriptive without secondary meaning. After careful consideration of all materials submitted, it is this Panel’s finding that the term “Nude News” is certainly merely a descriptive term and is probably generic. Finding words generic: CRS Tech. Corp. v. Condo Net, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000); [concierge]; Successful Money Management Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) [seminar; success]; Pet Warehouse v. Pets.com, Inc., D2000-0105 (WIPO Apr. 13, 2000) [pet; warehouse]; Tough Traveler, Ltd. v. Kelty Pack, Inc., D2000-0783 (WIPO September 28, 2000) [kid; carrier]; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001); Lumena S-KA 20.0 v. Express Ventures, Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000); EMoney Group, Inc. v. EOM, Sang Sik, FA 96337 (Nat. Arb. Forum Mar. 26, 2001) [E-money]; Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) [interactive television]; Soccerplex, Inc. v. NBA, Inc. FA 94361 (Nat. Arb. Forum May 25, 2000) [soccer; zone]; Canned Foods, Inc. v. Ult. Search, Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) [grocery outlet]. It clearly designates the services to be provided which could hardly be described in any other terms other than perhaps “unclothed news” or “bare news.” The record does not evidence sufficient secondary meaning in the term to establish trademark rights in and to same.
Thus, Complainant has failed to sustain its burden of proof of the first element of a UDRP Complaint, that is, that it possesses trademark rights in and to a trademark that is confusingly similar to the domain name question. UDRP 4(a)(i).
Rights or Legitimate Interests
Having found that the mark in question, “Nude News,” is generic and/or at least merely descriptive of the entertainment/news services provided (and without secondary meaning) and that Respondent is and has been providing such services since as early as September 2001 and that before any notice to it of the dispute, it used and/or prepared to use the domain name in connection with a bona fide offering of services, this Panel also finds that Respondent has rights and legitimate interests in respect to the domain name. UDRP 4(c)(i).
Registration and Use in Bad Faith
There is no evidence in this Record which establishes that Respondent has registered or is using this domain name in bad faith. Not one of the circumstances set forth in UDRP 4(b) are evidenced herein. While Respondent may have cleverly taken from Canada to the U.K. an interesting and different format for new services, even if such would be actionable anywhere under any theory of law, it is not in a UDRP proceeding.
All that this Panel is empowered to do is to decide whether what has allegedly been taken is in violation of the UDRP. This Arbitrator finds that it is not.
Some may say that “no nudes is good news”, but the Internet purchasing public may continue to keep fully abreast of the news via <nakednews.com> and/or <newsnudes.com>.
The relief requested by Complainant is denied.
Dated: December 11, 2001
* Respondent’s “Response” refers to “undersigned counsel”, but appears to have been filed by “Mr. Daniel Higgins, Director, RDCTO Limited.” Mr. Higgins appears to be a principal and/or employee of Respondent. There is no indication that he is an attorney, barrister, solicitor or other legal professional.
 The “.com” is irrelevant for purposes of this analysis.
 Complainant’s claim that Respondent is using the domain name in bad faith because of its “pornographic” banner ads and links to “pornographic” websites is amusing at best in light of Complainant’s business – the providing of news reporting by strippers. This Panel is not prepared (or qualified) to adjudge either parties’ site as “pornographic” or not. Unlike the sage Justice Stewart, I cannot say that ‘I know it when I see it.’ See, Jacobillis v. State of Ohio, 378 U.S. 184, 197, 84 S.Ct. 1676, 1683. I am, however, prepared to state that Complainant (the pot) is hardly in a position to call Respondent (the kettle) black.
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