National Arbitration Forum

 

DECISION

 

Motion Picture Association of America, Inc. v. Northshore Management, Inc.

Claim Number: FA0711001115194

 

PARTIES

Complainant is Motion Picture Association of America (“Complainant”), represented by Andrew Baum, of Darby & Darby P.C., 7 World Trade Centre, 250 Greenwich Street, New York, NY 10007-0042.  Respondent is Northshore Management, Inc. (“Respondent”), represented by Timothy P. Dillon, of Dillon & Gerardi, APC, 4660 La Jolla Village Drive, Suite 775, San Diego, CA 92122.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <r-rated.com>, registered with Moniker Online Services, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Linda M. Byrne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2007.

 

On November 30, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <r-rated.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 December 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 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 postmaster@r-rated.com by e-mail.

 

On December 14, 2007, Respondent requested an extension of time for filing a response.  On December 17, 2007, the Forum granted this request, extending the date by which Respondent could file a Response to January 10, 2008.

 

A timely electronic submission from Respondent was received on January 10, 2008.  However, a hard copy of the Response, as required by ICANN Supplemental Rule 5, was not received.

 

Complainant and Respondent each filed an Additional Submission on a timely basis.

 

On January 17, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant submits that it owns U.S. trademark registrations for RATED R, R & Design, and R RESTRICTED & Design. Complainant argues that its RATED R mark is famous, and contends that Respondent’s domain name <r-rated.com> is confusingly similar to Complainant’s trademark; that Respondent does not have any rights or legitimate interest with respect to the domain name; and that the domain name has been registered and used in bad faith by virtue of the confusion created by Respondent and by virtue of Respondent’s intention to attract visitors and re-direct them to other websites that would generate click-through revenue for Respondent. 

 

B. Respondent

 

Respondent argues that Complainant owns no valid trademark rights in the term “R-RATED” and that the term is descriptive in nature, being equivalent to “adult-oriented,” and being used to describe “any manner of items including clothing, shoes, jokes, hair styles, music, people, books and websites.”  The Respondent also argues that the differences between “R-RATED” and “RATED R” are sufficient to avoid confusion, especially considering that a descriptive mark should be accorded a relatively narrow scope of protection.

 

Respondent alleges that it has used <r-rated.com> in connection with the bona fide offering of goods or services, i.e., “Respondent has utilized the mark as a portal to provide links to websites for adult content and services – including photographs, novelty devices, clothing, membership to various adult-based online communities and sale of other adult oriented products.”  Respondent explained that its business has in the past few months “generally moved away from the adult-oriented/ adult content business model,” and that Respondent has moved <r-rated.com> to a “domain parking service.”  Respondent alleges that Complainant has failed to prove that Respondent acted in bad faith.

 

C. Additional Submissions

 

Complainant’s Additional Submission attaches a 2007 decision of the Trademark Trial and Appeal Board, which stated, “Based upon this undisputed evidence of record, we find that opposer’s RATED R mark is famous for purposes of the fifth du Pont factor.  Such fame must be accorded dominant weight in our likelihood of confusion analysis.”  In that case, the Trademark Trial and Appeal Board found likelihood of confusion between the RATED R mark and the opposed mark, RATED R SPORTSWEAR.  The Complainant also attached a “Report on a Survey of the Fame of the Trademark ‘RATED R’.”  The report concluded, “The results of this survey reveal a very high level of fame for the trademark ‘Rated R’ in terms of movies, movie ratings and related associations.”

 

Respondent’s Additional Submission provides the addresses for nine sample websites that demonstrate “the ubiquitous uses of the terms [Rated R and R Rated].”  Respondent argues that its use of the disputed domain name equates to a descriptive meaning of the term, i.e., “providing adult oriented material (photos, products, memberships, etc.).”  The Respondent also argues that the use of “descriptive domain names for paid advertising links or directory pages can be a legitimate commercial activity” and that Respondent has not acted in bad faith because its use of “Rated R” is “consistent with the publicly adopted meaning” of the term.

 

FINDINGS

 

As an initial matter, the Panel notes that the hard copy of the Response was not received by the response deadline, which was December 26, 2007. Accordingly, the Response is deficient under ICANN Rule 5.  The Panel has sole discretion as to the amount of weight given to the Response, and in this case the Panel has elected to fully consider the Response.  See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (deciding to consider the respondent’s response even though it was deficient because it provided useful information to the panel in making its decision); see also Metro. Life Ins. Co. v. Secure Whois Info. Serv., FA 910715 (Nat. Arb. Forum Mar. 16, 2007) (deeming any procedural deficiencies to be inconsequential and deciding to consider the response, which was only received in hard copy before the deadline). 

 

Complainant owns a U.S. registration for the certification mark RATED R (U.S. Reg. No. 1,436,926, dated April 14, 1987).  This registration covers “entertainment services rendered through the medium of motion pictures,” and states that the RATED R mark has been used since at least as early as 1970.  The registration contains a disclaimer of the exclusive right to use the word “RATED.”  Complainant also owns a U.S. registration for a certification mark for the stylized letter “R” (U.S. Reg. No. 1,170,739), as well as several “R RESTRICTED” registrations.

 

The majority of motion pictures released in the United States are submitted to Complainant for rating.  All printed materials for a film that receives an R rating must reproduce the designation RATED R.  The “R” rating means that a movie patron under the age of 17 should be accompanied by a parent or adult guardian.  Complainant owns a family of “r-rated” domain names, including <r-rated.net>, <r-rated.org>, <r-rated.info>, etc.  These domain names resolve to sites that allow a computer user to obtain information about Complainant’s movie rating system.    

 

The website associated with Respondent’s <r-rated.com> domain name previously consisted of a web page displaying a “Warning” that the “site contains explicit sexual content intended only for adults over the age of 18,” and asked the visitor whether he or she would like to “Enter” or “Exit.”  Upon entering, the visitor was directed to a webpage that lists links describing various categories of pornographic websites.  The categories include “Free Porn,” “Live Sex Cam,” and “Live Sex Video.”  As of the date that the Complaint was filed, the content of the <r-rated.com> site had changed to substitute a page of links to web pages, many of which pertain to motion pictures.  The links include “R Rated Movies,” “Watch Movie Trailers,” etc. 

 

On September 4, 2007, Complainant sent a letter to Respondent requesting that Respondent transfer <r-rated.com> to Complainant, but Respondent did not respond to Complainant’s letter.  After receipt of the letter, Respondent changed the content of its website as described above.    

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the RATED R certification mark through its registration of the mark with the United States Patent and Trademark Office (Reg. No. 1,436,926 issued April 14, 1987).  The Panel concludes that this registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

 

Complainant argues that Respondent’s <r-rated.com> domain name is confusingly similar to Complainant’s RATED R mark, as the disputed domain name merely moves the letter “r” from the end of the mark to the beginning, and adds a hyphen between the terms of the mark.  The Panel concludes that these alterations do not sufficiently distinguish the <r-rated.com> domain name from the RATED R mark to negate likelihood of confusion.  Therefore, the Panel concludes that the <r-rated.com> domain name is confusingly similar to Complainant’s RATED R mark pursuant to Policy ¶ 4(a)(i).  See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).

 

Respondent contends that the <r-rated.com> domain name is comprised of a common, descriptive term and as such cannot be found to be identical or confusingly similar to Complainant’s mark.  This Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

Rights or Legitimate Interests

 

Respondent, Northshore Management, Inc., is not commonly known by the <r-rated.com> domain name, and Respondent is not authorized to use Complainant’s RATED R mark for any purpose.  Respondent’s domain name does not constitute a noncommercial or fair use.  These circumstances demonstrate Respondent’s lack of rights and legitimate interests in the <r-rated.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Respondent can establish its rights to and legitimate interests in <r-rated.com> by proving that before any notice of the dispute, Respondent used the domain name “in connection with a bona fide offering of goods or services.”  Policy ¶ 4(c)(i).  

 

Respondent argues that it has a legitimate interest in using <r-rated.com> “as a means of generating revenue by providing links to and information regarding adult oriented websites.”  However, this Panel concludes that Respondent's redirection to pornographic websites is not logically related to the domain name at issue, and therefore Respondent’s use does not constitute a legitimate use under the Policy.

 

Respondent’s <r-rated.com> domain name previously resolved to a website featuring links to third-party websites offering pornographic content, and Respondent accrued click-through fees from this website.  This use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i).  See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to pornographic material and links, while presumably earning a commission or referral fees from advertisers); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).

 

The <r-rated.com> domain name currently resolves to a website featuring links to third-party websites related to motion pictures and DVDs, and Respondent profits from these links.  This use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), which further indicates Respondent’s lack of rights and legitimate interests in the <r-rated.com> domain name pursuant to Policy ¶ 4(a)(ii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Registration and Use in Bad Faith

 

Under the UDRP rules, the following circumstance shall be evidence of the registration and use of a domain name in bad faith under Policy 4(b)(iv):

 

(iv)              by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.

 

Complainant’s mark is R RATED, and Complainant operates several websites such as <r-rated.net>, <r-rated.info>, <r-rated.org>, etc.  Computer users may consult the foregoing sites to learn the rating for a particular movie, or to obtain information about Complainant’s rating system.  It is quite likely that computer users have gone to <r-rated.com> for this purpose, only to be confronted with pornographic links.  As such, Respondent’s registration and use of the domain name has created a likelihood of confusion with Complainant’s RATED R mark by implying a possible sponsorship or affiliation between Respondent and Complainant. 

 

Rather than containing material that would require the supervision of a parent (i.e., a recommendation relating to the Complainant’s “R” rating), the Respondent’s site was a source for hard-core motion picture pornography.  The domain name led to a warning that it contained “explicit sexual content intended only for adults over the age of 18.”  Once a user entered the site, he was confronted with a page including many links to motion picture content, including “Porn Movies,” “XXX Porn Movies,” “Cheap Porn DVDs,” “Gay Sex Movies,” “Erotic Videos,” “Adult XXX Videos,” “Hardcore Sex Videos,” and the like. 

 

The foregoing materials are not related to motion pictures to which Complainant has given an R rating.  Complainant’s registration for RATED R covers certification of motion pictures which “in the opinion of applicant’s rating board, is an adult film in some of its aspects…such that no one under the age of 17 should be admitted unless accompanied by a parent or guardian.”  The R rating does not designate hard-core pornography. 

 

Even accepting Respondent’s argument that “r-rated” is a descriptive term meaning “that which is for adults or that which requires adult supervision,” Respondent did not use the <r-rated.com> domain name in accordance with this meaning.  This Panel concludes that the Respondent used the domain name to attract computer users who were seeking pornography.  Prior cases have found bad faith in this type of situation.  E.g., Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); Encyclopedia Britannica, Inc. v. Zuccarini, D2002-0487 (WIPO Aug. 12, 2002) (using <brittanicaonline.com> to link to pornographic web sites); Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“[d]iversion to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use”, quoted with approval in Mattel, Inc. v. Sabir Jihad, FA 1024388 (Nat. Arb. Forum Aug. 8, 2007) (<exzoticbarbie.com> links to pornography).

 

In view of the foregoing, this Panel concludes that Complainant has met its burden of proof with respect to all three elements of the Policy.

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <r-rated.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Linda M. Byrne, Panelist
Dated:  January 31, 2008

 

 

 

 

 

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