eGalaxy Multimedia Inc v. T1
Claim Number: FA0111000101823
PARTIES
The Complainant is eGalaxy Multimedia, Inc., Toronto, Canada (“Complainant”) represented by David Warga, of Warga Law Firm. The Respondent is Ted Barnes T1, Abbotsford, Canada (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <nakednew.com>, registered with Tucows, 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 the National Arbitration Forum (“the Forum”) electronically on November 9, 2001; the Forum received a hard copy of the Complaint on November 9, 2001.
On November 9, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <nakednew.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 November 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of Nocember 3, 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 postmaster@nakednew.com by e-mail.
A timely Response was received and determined to be complete on November 28, 2001.
Additional submissions received December 3, 2001.
On
December 11, 2001, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel,
the Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Identity/confusing
similarity
Save for the generic top-level suffix “.com”, <nakednew.com> is similar or confusingly similar to the Complainant’s registered trademark for NAKED NEWS. In the alternative, the omission of the letter “S” after the word NEWS is not sufficient to alleviate confusion among Internet users and does not change the overall impression of the trademark.
Illegitimacy
The Respondent should not have any rights or legitimate interests in respect of the domain name in dispute for the following reasons:
(a)
the
domain name in dispute has only been registered by the Respondent since October
6, 2000 ;
(b)
the
Respondent does not have a registered trademark for NAKED NEW anywhere in the
world;
(c)
the
Respondent has never previously been commonly known by the trademark NAKED NEW;
(d)
the
Respondent is not a licensee of the Complainant;
(e)
the
Respondent’s use of the domain name in dispute in conjunction with offering
pornographic services, pornographic banner ads and links to other pornographic
sites dilutes the distinctiveness and goodwill of the NAKED NEWS trademark;
(f)
the
Complainant has prior rights in the domain name in dispute;
(g)
the
Respondent has not developed sufficient goodwill nor has Respondent established
any reputation which may otherwise give rise to any legitimate rights or
interests in the domain name <nakednew.com>;
(h)
the
Respondent’s web site, accessible through the domain name <nakednew.com>,
is a clearly calculated to create confusion between the Respondent’s similar
Internet service and the Complainant’s Internet service, and therefore
infringing upon the Complainant’s trademark.
The Respondent has registered and used the domain name <nakednew.com> in circumstances indicating that the registration was effected primarily for the purpose of (i) preventing the Complainant from reflecting the mark in a domain name, or (ii) disrupting the Complainant’s business, or (iii) attracting, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
The Respondent registered the domain name <nakednew.com> for commercial gain without obtaining the Complainant’s consent or authorization while fully aware of the notoriety of the Complainant’s well-established trademarks.
B. Respondent
The names Naked News and Naked
New are descriptive and are not entitled to legal protection under U.S. and
Canadian law. The Complainant
has no registered trademarks in Canada or the United States.
The
meanings of the names are clearly different. Naked news means having no clothes
on the body, Information about recent events or happenings, especially as
reported by Newspapers, radio or Television.
Naked new means having no clothes on, Just found, discovered or learned,
never used or worn before, fresh. The words new and news are not synonyms. Nowhere
on the naked new site does Respondent offer any news or news services
The
Respondent has been known as naked new since October 6, 2000 and has a fully
functional website. Respondent has been
working on this site since October 6, 2000. Respondent provides quality
entertainment to Internet users via humorous pictures with nudity. Most
pictures are changed weekly. Respondent also offer naked new videos, an
assortment of clips.
The Complainant did not operate a website at <nakednews.com> and had not filed for a trademark at the time the Respondent acquired the domain name. Therefore no license was required from the Complainant, nor is it possible to create confusion with a non-existent website.
Complainant started using the name after the applications for trademarks were filed.
The Complainant claims to have used its so-called famous trademark,
naked news, since December 1999. Complainant offers nothing to back up that
statement or any evidence to support the claims of trademark use since January
2000.
The Complainant says the NAKED NEWS trademark has become famous due to
heavy publicity, use and media coverage worldwide, but this is from February
24, 2001 to November 2001. There is no evidence of media coverage before that
date. Respondent does not dispute the fact that the Complainant has become
famous but that fame came long after Respondent registered the disputed domain
name.
The Complainant owns no trademarks for NAKED
NEW and is trying to over-extend its bounds in this case. The words Naked New
are descriptive or generic terms.
Bad Faith
The Respondent has never offered to sell rent or transfer the disputed domain name to the Complainant. The Complainant has no trademark for NAKED NEW. The Complainant has no registered trademarks in Canada, the United States or 188 other countries for NAKED NEWS. The Respondent has not prevented the Complainant from using his domain name. The Complainant had no prior rights to NAKED NEW and has no trademark for NAKED NEW.
According to the Complainant, its site has flourished in the year 2001, so clearly there has been no disruption to its business. The Complainant’s recent attempt to sell adult pornography is clearly calculated to show competition between the two sites.
Respondent’s site has not made any claims of affiliation or endorsement to the Naked News. The Respondent has not misled anyone in anyway. The word News does not even appear on Respondent’s site, nor are there any news broadcasts of any type on Respondent’s site, nor will there be. The Complainant had no website at <nakednews.com>.
The Complainants pending trademarks have no jurisdiction on the word New or news. New and news are not synonyms. The Complainant’s claim to a famous mark has not been shown at the time of acquisition of the name naked new.
The Respondent has been using the name nakednew for over a year now. Due to the complete difference of the name the Respondent should retain the rights to the name.
C. Additional
Submissions
The Complainant’s trademark NAKED NEWS is
registered in Hong Kong and Mexico and had an Internet presence in both
countries and worldwide including Canada, prior to the Complainant’s dates of
registration.
The Complainant is actively prosecuting all NAKED NEWS trademark applications including Canada and the United States on the basis of, inter alia, acquired distinctiveness and secondary meaning.
Illegitimacy
The Complainant’s predecessor-in-title, Bizmedia Inc., an affiliate company, began commercial use of the NAKED NEWS trademark on the Internet as a full motion video program beta version in May 1999 and as a live complete program version in December 1999.
The Complainant’s registration and prior use of the domain name <nakednews.com> including user email messages to feedback@nakednews.com predates the Respondent’s registration of the domain name in dispute by six (6) months, more or less.
The Complainant’s Canadian trademark
application for NAKED NEWS is based upon previous use and has been “used in
CANADA since at least as early as January 1, 2000”, which approximate priority
date (the “Priority Date”) coincides with the Complainant’s first corporate
press release.
The Complainant’s Priority Date based on
previous use precedes the Respondent’s registration date of the domain name in
dispute by nine (9) months, more or less and therefore the Complainant’s
Canadian or other trademark filing date is immaterial in respect of this ICANN administrative
proceeding.
Bad Faith
The Respondent had actual knowledge of the Complainant’s trademark NAKED NEWS at the time of registration of the disputed domain name because on very date of October 6, 2000 on which the Respondent registered the disputed domain name, he also registered the domain name <victoriasinclair.com> which name is associated only with <NakedNews.com> and Naked News TV! (because it is the name of the former lead anchor of <NakedNews.com>). When confronted with this fact the Respondent surrendered <victoriasinclair.com> to the Complainant and received as payment an autographed photo of “Victoria Sinclair”, because he was a fan of hers.
The Respondent’s statement that he purchased the domain name in dispute “due to the fact that it can be used in conjunction with numerous adult products and services” is clearly false and contradictory to the evidence as the name was registered for personal commercial gain and to create a likelihood of confusion with the Complainant.
The Policy does not require evidence of a trademark registration in any jurisdiction, and transfers have been successfully won solely with evidence of common law use of a trademark in common law jurisdictions like Canada. (Saxon Chocolates v Intellare Lab, eResolution Case No. AF-0659, Bennet Coleman & Co. Ltd. v. Lalwani, WIPO Cases no. D2000-0014 and D2000-0015, and Roberts v Boyd, WIPO Case No. D2000-0210).
Complainant is looking to acquire domain
names and is directly related to domain name brokers. The Complainant shows a
pattern of trying to acquire names that they have no rights to. The Complainant
has not shown distinctiveness. The Naked News trademarks are of a restrictive
nature.
Illegitimacy
Complainant claims use of the name nakednews
since Jan 1, 2000 but shows no evidence of this. Complainant does not
deny that it had no active website at Nakednews.com at the time of Respondent’s
use. Therefore the Respondent had no prior knowledge, when purchasing the name,
of the Complainant’s intent to use. Regarding the email use of nakednews
Respondent would like to see the message source of the email to verify
legitimate email addresses and dates.
Complainant shows no evidence of any interest
in nakednew
The Respondent’s statements are true. The
Respondent takes this name hijacking attempt very seriously.
Respondent did trademark searches at the time
of registration of the domain name and there were no trademarks. Respondent had
seen Victoria Sinclair on a website that had no affiliation with eGalaxy or
<nakednews.com> which did not exist at the time.
The Complainant had no active website at <nakednews.com> therefore it would be impossible to create confusion.
Complainant had knowledge of my site <nakednew.com> since April of 2001. Complainant’s failure to act on any proceedings in anticipation of his registered trademark which he got in Hong Kong and Mexico (that have restrictions) prior to this hearing, shows a contradiction to his statement.
FINDINGS
<NakedNews.com> is an Internet news delivery program. According to the Naked News Corporate Biography, “Naked News is news done in the nude”; the idea was conceived in Summer 1998 and “went live in December 1999 with the program ‘with nothing to hide’”; the intellectual property is owned by eGalaxy Inc. and is managed by its fully owned subsidiary, the Complainant (Annex b.3 to Reply to Response).
A similar “strip-and-tell news show”, The Naked Truth, has been running on Russia’s
M-1 television network since November 1999 (Annex b.2.21 and 43 to Complaint).
The Complainant became the registrant of the domain name <nakednews.com> on April 4, 2000 (Annex b.4 to Reply to Response). Emails to that address in September 2000 making comments on the Naked News site (Annex b.5 to Reply to Response) indicate that the Naked News program was in operation by that time.
The lead anchor for the Complainant’s program when it commenced was a Ms. Victoria Sinclair, who “deliver[ed] the headlines with enviable panache – a feat made even more impressive by the fact that she’s simultaneously removing an entire skirt suit ensemble” (TIME, April 23, 2001, Annex b.2.21 to Complaint). The site received 6,000 hits in its first month (Annex b.2.28 to Complaint) and considerable publicity from early 2001 (Annex b.2 to Complaint). The Respondent acknowledges that the Complainant is now famous (Response p. 5). The <nakednews.com> site is one of the most popular sites on the Internet, with over 6 million unique monthly viewers (Annex b.3 to Reply to Response).
On October 6, 2000,
the Respondent registered two domain names, namely <victoriasinclair.com>
and <nakednew.com>, the latter being the subject of this
administrative proceeding. After
receiving a letter dated November 24, 2000 from Mr. Warga, acting for Ms.
Sinclair, the Respondent surrendered the domain name
<victoriasinclair.com> in
exchange for a photograph of Ms. Sinclair and reimbursement of his registration
costs. The Respondent did not dispute Mr. Warga’s assertion that Ms. Sinclair
was the ”chief anchorperson of the Naked News” (Annex C.5.1 to
Complaint).
The Respondent has used the disputed domain
name to establish a web site offering pornography, including advertisements and
links to other pornographic sites.
After the Respondent had registered the
disputed domain name, the Complainant applied to register as trademarks in
various countries NAKED NEWS, NUDE NEWS and THE PROGRAM WITH NOTHING TO
HIDE. Prior to the commencement of this
proceeding, NAKED NEWS and NUDE NEWS had been registered as trademarks in
Mexico and Hong Kong and the applications were still pending elsewhere,
including in Canada (where the Complainant resides) and in the United States of
America (where the Respondent resides) (Annex 1 to Complaint).
The Canadian application claims use in Canada
since at least as early as January 1, 2000 on services (Annex 1.5 to
Complaint). One of the two U.S. applications claims that date as the date of
first use in [U.S.] commerce (Annex 1.8 to Complaint). There is some material
before the Panel to support these assertions, in the form of subsequent press
reports referring to the December 1999/January 2000 launch of the program, such
as pages 13, 16, 21, 32, 35, and 43 of Annex b.2 to Complaint.
The Complainant became the registrant of the
domain names <nakednews.org> and <thenakednews.org>, both on
November 9, 2000 and <nakednewsdaily.com> on November 29, 2000.
Other parties, apparently not associated with the Complainant, became registrants of the domain names <naked-news.com> on June 3, 1998; <thenakednews.com> on September 11, 1998; <nakednews.net> on June 29, 1999 and <naked-news.net> on October 16, 1999 (Annex D to Response). There is no evidence before the Panel that any of those third parties have used their domain names to establish active web sites.
DISCUSSION
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
words Naked and News, taken separately, are common descriptive words. Taken
together, their meaning is not immediately apparent, because it is an unusual
combination. The adjective is usually
used to describe people but not always, as in “naked truth”, “naked
aggression”, “naked light” and “naked flame”. Perhaps the closest synonym to
naked news is bare facts.
It
takes some imagination and perception to derive from the expression naked news
the meaning of a visual news program with naked presenters. The words NAKED NEWS are therefore
suggestive of the Complainant’s services, rather then descriptive of them, and
are thus capable of functioning as a trademark by distinguishing the
Complainant’s services from the services of others. See the discussion in Pet
Warehouse v. Pets.Com, Inc. (WIPO Case No. D2000-0105) and the
cases there cited.
Since
the Respondent registered the disputed domain name, the Complainant has registered
NAKED NEWS as a trademark in Mexico and Hong Kong and accordingly it has rights
in that mark in those countries. Under the Policy, a Complainant does not have
to show that it has a trademark in the jurisdiction of the domain name
registrant or registrar.
The
Policy protects holders of common law trademarks as well as holders of
registered trademarks: see, for example, Cedar
Trade Associates, Inc., v. Gregg Ricks (Nat. Arb. Forum Case FA 93633); Bennett Coleman & Co. Ltd. v. Steven S.
Lafwani (WIPO Case No. D2000-0014); SeekAmerica
Networks Inc. v. Tariq Masood (WIPO Case No. D2000-0131) and Passion Group Inc. v. Usearch, Inc.
(eResolution Case No. AF-0250).
The Respondent accepts that the Complainant has become famous since the Respondent registered the disputed domain name (Response p. 5). Having regard to the tremendous publicity given to and popularity of the NAKED NEWS program since early 2001 and to the fact that, on the evidence, it is the only program operating under that name, the Panel finds that, by about April, 2001, the trademark NAKED NEWS had become distinctive of the Complainant’s services, at least in Canada and the U.S.A. The Complainant now has rights in that trademark at common law.
This is an unusual case because, on the evidence, the Complainant’s rights in the trademark arose between the date of registration of the disputed domain name and the commencement of this proceeding. However, for the purposes of paragraph 4(a)(i) of the Policy, it is sufficient for a Complainant to establish that, at the time of filing the Complaint, the Complainant has rights in a trademark.
Identical and/or
Confusingly Similar
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000‑0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered: Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO Case No. D2001-1195); Energy Source Inc. v. Your Energy Source (Nat. Arb. Forum Case FA 96364); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC. (WIPO Case No. D2001-1121 and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Technology, Inc. v. Northern Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar 31, 2000).
The Complainant has established this element.
Rights or Legitimate
Interests
The Complainant has the burden of proof on this, as on all issues. The Complainant did not authorize the Respondent to register the disputed domain name or otherwise license the Respondent to use the words NAKED NEW. Respondent is not commonly known by the disputed domain name.
However,
the Complainant did not apply for registration of any trademark until after the
Respondent had registered the disputed domain name. Nor is there evidence that the mark had by then become
distinctive of the Complainant’s services. In order to determine whether the
Respondent has any right to or legitimate interest in the disputed domain name,
it is necessary to examine closely the nature of the domain name, the
explanation given by the Respondent for choosing it and whether the Respondent
knew of the Complainant’s Naked News program when he registered the disputed
domain name.
The combination of the two adjectives Naked and New is odd and incomplete (leaving unanswered the question “naked new what?”). The Respondent offers only the weakest explanation for having chosen it as a domain name, namely that it can be used in conjunction with numerous adult products and services such as naked new pictures, videos, etc. Although it can be so used, that explanation for having chosen it cannot be accepted, having regard to the Panel’s finding (below) that the Respondent was aware of the Naked News program when he registered the disputed domain name.
The Panel is satisfied that when, on the same day, he registered the two domain names <victoriasinclair.com> and <nakednew.com>, the Respondent did know of the Complainant’s Naked News program. Ms. Sinclair was the lead anchor of that program. The Respondent was apparently sufficiently impressed by Ms. Sinclair to take the trouble to register her name as a domain name, yet he offers no evidence of the web site, unrelated to the Complainant, not even the name of that site, where he claims to have seen Ms. Sinclair. He did not dispute the assertion in Mr. Warga’s letter that she was the lead anchorperson on the Naked News. The Panel accepts the Complainant’s assertion that Ms. Sinclair was, at the time, publicly associated only with the Complainant’s program, since this is consistent with the subsequent reports of the establishment of the Complainant’s site.
It stretches credulity too far to accept that the Respondent registered both domain names on the same day without knowing of the connection between Ms. Sinclair and the Complainant’s program.
The Panel concludes from the simultaneity with which the Respondent registered the two domain names that the Respondent chose the disputed domain name because of its confusing similarity to the name of the Complainant’s Naked News program in order to divert to his web site, for commercial gain, Internauts intending to reach the Complainant’s site. For an example of such “typo squatting” see Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol (WIPO Case No. D2001-0491).
The
question arises under paragraph 4(c)(i) of the Policy whether, before notice to
him of this dispute, the Respondent’s use of the disputed domain name in
connection with his pornographic site amounts to a bona fide offering of
services, thus demonstrating the Respondent’s right to and legitimate interest
in the disputed domain name.
The
offering of pornography is a legitimate activity. But the
registration and use of a descriptive domain name does not demonstrate a
Respondent’s legitimate interest in it, where it is shown that the domain name
has been chosen with intent to profit from or otherwise abuse the Complainant’s
trademark rights: Allocation Network GmbH v. Steve Gregory (WIPO Case
No. D2000-0016); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and
"Madonna.com" (WIPO Case No. D2000-0847).
Here
the Complainant has not shown that it had trademark rights at the time of the
registration of the disputed domain name. But the Respondent’s purpose, as the
Panel finds, was to divert traffic from the Complainant’s site to his own,
whether or not the Complainant had trademark rights. Under these circumstances, the Panel finds that the Respondent
has not used the domain name in connection with a bona fide offering of
services.
Accordingly,
even though the Complainant has not shown that it had acquired trademark rights
at the time of the registration of the disputed domain name, the Respondent has
no right or interest in the disputed domain name.
The Complainant has established this element.
The Panel is satisfied that the Respondent registered the disputed domain name because of its confusing similarity to the name of the Complainant’s Naked News program in order to divert to his web site, for commercial gain, Internauts intending to reach the Complainant’s site. This is an act of bad faith towards the Complainant which does not depend on the Complainant having trademark rights at the time. Paragraph 4(b) of the Policy does not limit the circumstances which shall be evidence of bad faith registration or use.
The Panel is also satisfied that the Respondent has used the disputed domain name with intent to attract, for commercial gain, Internauts to his web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Even though the Complainant has not shown it had rights in the trademark NAKED NEWS at the time of registration of the disputed domain name, the Respondent has continued to use the disputed domain name in order to divert traffic from the Complainant’s <nakednews.com> site even after April 2001, when the NAKED NEWS mark had become distinctive of the Complainant’s services. Under paragraph 4(b)(iv) of the Policy, such circumstances constitute evidence of both bad faith registration and bad faith use.
The Complainant has established this element.
DECISION
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <nakednew.com> be transferred to the Complainant.
Alan L. Limbury, Panelist
Dated: December 23, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page