HushHush Entertainment, Inc. v. Top Deck Internet Services Inc.
Claim Number: FA0706001008198
Complainant is HushHush Entertainment, Inc. (“Complainant”), represented by John
Yates, of Greenberg & Bass LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackzilla.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
G. Gervaise Davis, III, P-E H Petter Rindforth, Darryl C.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 14, 2007.
On June 21, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <blackzilla.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 June 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 16, 2007.
A timely and complete Additional Submission was received from Complainant on July 23, 2007.
On July 24, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed G. Gervais Davis, III, Petter Rindforth, and Darryl C. Wilson, Chair as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is an adult entertainment company that began its business operations in 2005 when it established a web presence using the mark BLACKZILLA. Complainant asserts that it has common law, service and trademark rights in the mark BLACKZILLA based on use in commerce in May 2005, on subsequent expenditures on promotional goods and services, and on the incorporation of the name with various other phrases on its Internet websites. Complainant argues that Respondent’s domain name <blackzilla.com> is confusingly similar to its mark, that Respondent has no rights or legitimate interests to the domain name, and that Respondent registered and is using the disputed domain in bad faith.
Respondent contends that Complainant has no trademark rights in the mark BLACKZILLA. Respondent claims that <blackzilla.com> was first registered four years prior to Complainant’s use of the BLACKZILLA mark and that Respondent has a legitimate interest to its domain mark which it lawfully purchased and is using in the same manner that it has been used since its initial registration. Respondent also argues that Complainant’s mark is not protectable as it is either generic or descriptive. Respondent further asserts that it did not improperly re-register the domain, nor is it using the disputed domain in bad faith.
C. Additional Submissions
Complainant’s additional submissions reassert Complainant’s contentions that Respondent is not using the disputed domain name in a legitimate fashion. Complainant stated Respondent’s website was “a mere link farm.” Complainant also contended that the earlier registration date of <blackzilla.com> relative to the use of the BLACKZILLA mark was irrelevant because Respondent purchased and began using the domain knowing of Complainant’s use of the mark. Complainant argued that the assertions of genericness or descriptiveness regarding the BLACKZILLA mark were irrelevant as was any evidence or argument tendered in support of that assertion.
Complainant, Hush Hush Entertainment (HHE) is an adult entertainment company that began its business operations in May 2005. Complainant’s business focuses on Internet pornographic websites as well as providing and selling DVD services based on its websites. In June 2005 Complainant began developing the website, <mymomsfuckingblackzilla.com> which it currently maintains. Complainant has a DVD service called My Daughter is Fucking Blackzilla Nos. 1-12 and one titled My Hot Wife is Fucking Blackzilla Nos. 1-10. As of May 2007, Complainant had eighteen different websites and seventeen DVD series however only those designated above specifically incorporated the mark BLACKZILLA. Complainant has expended much time, money, and effort promoting its adult entertainment products. Complainant states that it believes “if it were able to own and use the website at issue here, <blackzilla.com>, an important impediment to Complainant’s continued growth and expansion would be eliminated.” Complainant filed an application for registration of the service mark BLACKZILLA on June 7, 2006, and for the registration of the trademark BLACKZILLA on January 15, 2007. Complainant also filed for registration of the trademark and service mark BLACKZILLA! on January 17, 2007. To date the applications have been rejected and no registration of the mark has occurred.
Respondent, Top Deck Internet (TDI) is the present owner of the disputed domain <blackzilla.com>. The domain registered prior to HHE’s use and possibility as early as on September, 2001. The domain has been used from that time to the present to provide access to inter-racial adult-entertainment sites and content. TDI acquired the domain name and its associated rights in August 2005 for the purposes originally associated with the domain’s usage and have continually used the domain and its attendant website to provide links to other pornographic Internet websites. HHE contacted TDI regarding the purchase of disputed domain, just as it had contacted TDI’s predecessors in interest but neither TDI nor its predecessors have been able to negotiate satisfactory terms for the sale or exchange of the disputed domain.
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.
The Complainant has filed several pending trademark applications with the United States Patent and Trademark office (“USPTO”) for the BLACKZILLA mark (i.e. Serial No. 78/902386 filed June 7, 2006; Serial No. 77/083056 filed January 15, 2007). Although Complainant is not the owner of any registered trademark or service mark for BLACKZILLA or similar.
Registration of a trademark with a governmental authority is not necessary provided that a complainant can show common law rights in a mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant asserts that it has used the disputed domain name in commerce since May 2005. Even if the registration date of the disputed domain name is considered to be August 2005, when Respondent secured the same, and not the date of the original registration (which the evidence presented suggests occurred sometime between September 2001 and November 2003), the Complainant had only used the BLACKZILLA trademark for about three months before Respondent’s domain name registration.
Complainant states that the existence of the disputed domain prior to its adoption of the BLACKZILLA mark is irrelevant since Respondent knew of Complainant’s use of the mark when Respondent purchased the domain name. However the timing related to the establishment of rights has played an important role in determining whether Policy ¶ 4(a)(i) has been satisfied. See Eden Stone Co., Inc. v. Edenstone, FA 992132 (Nat. Arb. Forum July 6, 2007) (“In order to satisfy Policy ¶ 4(a)(i), Complainant must establish rights in the EDEN mark that predate Respondent’s registration of the disputed domain name, which Complainant has not done.”); see also Leinart v. Rothmann Group, FA 949681 (Nat. Arb. Forum June 11, 2007) (“To prevail under Policy ¶ 4(a)(i), Complainant must establish that it had rights predating Respondent’s registration of the disputed domain name.”); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“[Policy ¶ 4(a)(i)] necessarily implies that the Complainant’s [trademark] rights predate the Respondent’s registration and use of the Domain Name. Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally.”).
While domain registration dates have been considered, Policy ¶ 4(a)(i) does not expressly require rights in a trademark to predate the registration of the disputed domain name. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP Policy does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)).
Complainant further asserts that it has used the BLACKZILLA mark in connection with several websites and DVD series with adult-oriented content and that it has spent considerable time and money promoting the BLACKZILLA mark. The Panel notes, however, that Complainant has offered very little evidence in support. The advertising receipts provided as Exhibit 1 of the Complaint does not mention the BLACKZILLA mark and are all from 2007.
Additionally, Complainant’s assertions that traffic to its websites has increased due to Complainant’s promotion of the BLACKZILLA mark does not render support to Complainant’s contentions. Complainant produces several genres of adult-oriented entertainment through various websites and DVD series, and only three expressly use the BLACKZILLA mark in some form. Thus the Complainant has provided insufficient evidence that it has common law rights through extensive and continuous use that has resulted in the public associating the term with Complainant. See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).
As the Complainant has failed to present sufficient proof of rights in the BLACKZILLA mark according to Policy ¶4(a)(i) it is unnecessary to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
G. Gervaise Davis, III, P-E H Petter
Rindforth, Darryl C. Wilson, Chair, Panelist
Dated: August 7, 2007
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