Prime Web Tech Stiftung v. Sands of Time, SA
a/k/a Time Sands
Claim Number: FA0810001231213
PARTIES
Complainant is Prime Web Tech Stiftung (“Complainant”), represented by John P. Hains, of Lipsitz Green Scime
Cambria LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livejasmine.com>,
registered with Eurodns S.A.
PANEL
The undersigned certifies that each 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.
The Panel consisted of R.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 28, 2008; the National Arbitration Forum received a
hard copy of the Complaint on October 30, 2008.
On October 29, 2008, Eurodns
On November 4, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 24, 2008 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@livejasmine.com by
e-mail.
A timely Response was received and determined to be complete on
November 24, 2008.
An Additional Submission was received from Complainant on December 1,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from the Respondent on December
5, 2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
On December 3, 2008, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed R.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts and offers conclusive evidence that it holds
trademarks, including “LIVE JASMIN.”
These marks are used in connection with the “electronic transmission of
adult oriented entertainment” in the form of streaming audio video and other
media. These marks were registered in
the
Complainant also has registered the domain name <livejasmin.com>. That domain name was registered in 2001.
The Complaint concerns the domain name <livejasmine.com>. As
Complainant notes, this name is certainly confusingly similar to its mark. Complainant goes on to assert that Respondent
has no rights in the name. Respondent’s
use of the domain name <livejasmine.com>
is alleged to be identical to the use made by Complainant, which is to say,
for adult-oriented entertainment.
Complainant also asserts that Respondent is not known by the name “Live
Jasmine.” As to bad faith, Complainant
asserts that the name was obviously chosen to compete with or utilize
Complainant’s domain name.
B. Respondent
In response, Respondent stated that it does not compete. It states that the domain name <livejasmine.com> is used to
promote interest in Respondent’s business, which is tea, not “T & A.” In October of this year, Respondent says it purchased
the name for US $150.00. Respondent’s
web page clearly reflects that the website is currently being used to promote
tea.
Respondent also asserts that the trademark is completely different from
the domain name. Respondent asserts that
it has a legitimate interest in the domain name for the promotion of jasmine
teas. As Respondent points out, nothing
on the current website has anything to do with adult streaming video. Respondent does admit that it does not use
the domain name as its business name.
Finally, Respondent says that it has made no attempt to mislead
consumers or divert Internet traffic from Complainant to Respondent. Respondent denies registration or acquisition
of the domain name in bad faith.
Respondent denies any knowledge of Complainant and Complainant’s use of
the similar domain name, <livejasmin.com>. Respondent makes other assertions which
allegedly show that there is no bad faith.
Finally, Respondent asserts that it has never attempted to sell the
domain name.
C. Additional Submissions
Additional submissions were received from Complainant and
Respondent. Both were timely received
and were considered by the Panel.
Complainant asserts in its additional response that the names remain
identical or confusingly similar and that it has trademark rights in the name
“LIVE JASMIN” and in the identical domain name <livejasmin.com>. Complainant asserts that there must be some
relationship between the original domain name owner and the current domain name
owner. Complainant relies a great deal
upon the alleged relationship of attorney Paul Raynor Keeting, Respondent, and Respondent’s
predecessor-in-interest.
Respondent’s Additional Submission attempts to counter the “confusingly
similar” argument, and points out that evidence submitted by
Complainant reflects the use of <livejasmine.com>
as of 2006. Respondent points out that
Complainant’s Additional Submission and original submission are rife with
speculation. It also points out that
Complainant asks that the Panel to find that Respondent may at some future
point in time go back to the use of <livejasmine.com>, so as to compete with Complainant’s
adult website.
Respondent clearly states that it “expressly waives any right to object to Complainant’s
right to file a second complainant should such use ever be undertaken. In fact, Respondent
expressly consents to Complainant’s right to file such a complaint in the
event its speculated concerns ever materialize.”
FINDINGS
The Panel is unanimous in its findings. The Complaint does state a prima facie case as to only the first issue. Complainant has demonstrated that it has a
mark LIVE JASMIN and that the domain name <livejasmine.com>
is confusingly similar.
Complainant’s filings only allege that Respondent
had no rights in the domain name and that Respondent was using the domain name,
<livejasmine.com>
improperly. True, Respondent is not
known as “live jasmine.” However, the
Panel notes that Respondent is currently using the domain name in connection
with the promotion of tea drinking and in particular, the consumption of jasmine
tea. Therefore, Respondent has clearly rebutted
Complainant’s unsupported allegations and shown that it has rights in the name
“Jasmine” is, of course, the spelling of the particular adjectival description
of certain type of tea.
As to bad faith, Complainant also does not state
a prima facie case. Respondent has demonstrated that Respondent itself
has not behaved in bad faith. There is
no evidence that the current owner of the domain name has utilized the domain
name in bad faith. (The prior owner may
well have used the name in bad faith.)
Finally, the Panel is strongly persuaded by
Respondent’s admission that future use of the domain name, <livejasmine.com> in order to compete with Complainant would be improper. Respondent has waived or stipulated that such
a utilization by Respondent or any successor to
Respondent would be actionable under ICANN.
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 Panel finds that the domain name is
confusingly similar to the mark and domain name held by Complainant.
Complainant’s registrations with the USPTO and elsewhere are sufficient evidence of Complainant’s rights in the LIVE JASMIN mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”).
The addition of an “e” is not a sufficient distinction. See
Canadian Tire Corp. v. 849075 Alberta
Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names
<ecanadiantire.com> and <e-canadiantire.com> are confusingly
similar to Canadian Tire’s trademarks); see
also Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000)
(finding that the addition of the letter “e” and a hyphen does not affect the
power of the mark in determining confusing similarity). The addition of a generic word like “live” to
a top-level domain is also irrelevant. See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27,
2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,”
“.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i)
analysis). Therefore, the Panel finds
that the disputed domain name is confusingly similar to Complainant’s mark
under Policy ¶ 4(a)(i).
However, the Panel finds that Respondent has
rights in the name.
Complainant has not made a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). Even if the burden shifted to Respondent, it did
show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate interests
in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the
disputed domain name. WHOIS information
lists Respondent as “Sands of
Time, SA a/k/a Time Sands.” Respondent
is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also
Complainant argues that Respondent’s
disputed domain name resolves to a website that lists several choices for adult
entertainment, but this is not or is no longer true. Complainant contends that one of the links
leads to Complainant, and that all such links provide Respondent with referral
fees. Again, this is not true.
Respondent asserts that
it purchased the disputed domain name in order to target jasmine tea consumers,
and those interested in such products.
Respondent submitted evidence of its business formation and resolving
web pages, and evidence that none of its material is related to Complainant’s
adult entertainment operations.
Moreover, Respondent asserts that it depends on “webmaster links” to
drive customers to its website, and that such is a legitimate use. Respondent has made actual use or
demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i). See
Target Brands, Inc. v. ALDnet Media Group & Harrison, FA 227647 (Nat.
Arb. Forum Mar. 24, 2004) (holding that the respondent’s
use of the <targetwholesale.com> domain name to offer search engine
services to wholesale vendors and their customers was a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i)); see also Workshop
Way, Inc. v. Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Finally, the Panel finds that the Respondent has
not and is not acting in bad faith.
Complainant contends that Respondent’s disputed domain name was registered with the primary intent of disrupting Complainant’s business. While this may have been true of the prior owner, there is no evidence that Respondent had any such intent and no evidence that Respondent has used the domain name in bad faith.
There is no evidence that
Respondent has intentionally created a likelihood of confusion as to
Complainant’s affiliation and endorsement of the disputed domain name and
corresponding website for commercial gain via referral fees.
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii) (emphasis added); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent has
not used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom
Cycle, D2004-0824 (WIPO Jan. 18, 2005)
(finding that the issue of bad faith registration and use was moot once the
panel found the respondent had rights or legitimate interests in the disputed
domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA
863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and
legitimate interests in the disputed domain name, his registration is not in
bad faith.”).
Respondent contends that it had no
intent to disrupt or target Complainant.
The Panel agrees that there is no
evidence of bad faith under Policy ¶¶ 4(b)(iii)
and/or (iv). See Mule Lighting, Inc. v. CPA, FA 95558
(Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the
respondent has an active website that has been in use for two years and where
there was no intent to cause confusion with the complainant’s website and
business); see also Goldmasters
Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21,
2000) (finding no bad faith use, even though the respondent’s ownership and
purported use of the domain name frustrated the complainant’s business efforts,
because nothing indicated that the respondent intended to prevent the
complainant from reflecting its mark in a corresponding domain name, to disrupt
the complainant’s business, or to intentionally attract the complainant’s
customers to the respondent’s site by creating a likelihood of confusion).
DECISION
Having failed to establish all three elements as required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
R.
Hon. Robert T. Pfeuffer (Ret.), Panelist
Diane Cable, Esq., Panelist
Dated: December 23, 2008