Motion Picture Association of America, Inc. v. Northshore Management, Inc.
Claim Number: FA0711001115194
Complainant is Motion Picture Association of America (“Complainant”), represented by Andrew
Baum, of Darby & Darby P.C., 7 World Trade
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <r-rated.com>, registered with Moniker Online Services, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 email@example.com by e-mail.
A timely electronic submission from Respondent was received on
Complainant and Respondent each filed an Additional Submission on a timely basis.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant submits that it owns
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.
As an initial matter, the Panel notes that the
hard copy of the Response was not received by the response deadline, which was
Complainant owns a
The majority of motion pictures released in
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.
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.
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
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
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
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.
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
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.
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.
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
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.
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
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