Blu Media LLC v. Hallec
Claim Number: FA0811001235329
Complainant is Blu Media LLC (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brokestraightboy.net> and <collegeboyphysicals.net>, registered with Enom, 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.
Luiz Edgard Montaury Pimenta, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2008.
On November 21, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <brokestraightboy.net> and <collegeboyphysicals.net> domain names are registered with Enom, Inc. and that the Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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,
Respondent’s timely Response was received in electronic copy on December 24, 2008; however the hard copy was received after the Response deadline. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.
An Additional Submission was received from Complainant on December 29, 2008, which was determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.
On December 31, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant argues that his domain name <brokestraightboys.com> was first registered in September 6, 2004. The domain has been marketed and continuously used in commerce, with the first published instance of intent for use in commerce June 28, 2005. Complainant then registered the domain <brokestraightboy.com> in July 29, 2005. The Complainant states that the referred domain name, has been used as a trademark, and has been used in print advertising, online advertising, trade literature, and online promotion. The website hosted under such domain name is a for-profit adult website selling memberships to surfers who wish to view adult entertainment online, specifically adults who wish to view young men engaged in sexual experiences.
Complainant’s domain name
<collegeboyphysicals.com> was first registered in August 3, 2004. The
referred domain name has been marketed and continuously used in commerce, with
the first published instance of intent for use in commerce Febru
Complainant claims to have established common law rights over the trademarks COLLEGEBOYPHYSICALS.COM and BROKESTRAIGHTBOYS.COM, pursuant to Policy ¶ 4(a)(i).
Complainant informs that his website under the domain name <brokestraightboys.com> was first publicly announced as a commercial site on June 28, 2005 and that Respondent applied to become an Affiliate with Complainant on October 18, 2006 where, according to Complainant, the only domain Respondent claimed to use to promote Complainant’s products was the domain name <adult-reactor.com>.
Complainant informs that his website under the domain name
<collegeboyphysicals.com> was first publicly announced when Complainant
sent an e-mail to all affiliates, including Respondent, on Febru
Complainant contends that Respondent received the e-mail on Febru
Complainant argues to have expended significant funds to build the websites for commercial use and that he further expended significant funds to advertise and promote the website to consumers and potential affiliates who assisted in marketing the website to consumers. Complainant informs to have expended over $100,000.00 USD in purchase of Google AdWords since the inception of the websites to help drive traffic to the websites. Complainant informs to have purchased 2 full page advertisements in the magazine Just Us Boys, a full page ad in Genre magazine, print ads in Freshmen magazine, UnZipped magazine, and Men magazine every month to promote the website to consumers and potential affiliates who assist in marketing the website to consumers. Complainant informs to have sponsored events at adult webmaster trade shows to further promote the website to potential affiliates who assist in marketing the websites to consumers. Complainant informs to have sponsored events directed at retail level consumers and expended funds advertising on other websites, including <menonthenet.com>, <juicygoo.com> and <queerclick.com>. Complainant estimates total promotional costs of $250,000 per year for its marks.
Complainant contends that his website under domain name <brokestraightboys.com> has received positive reviews from various website review blogs, including the following locations: http://www.thebestporn.com/review/brokestraightboys/; http://www.rabbitsreviews.com/s2422/Broke-Straight-Boys.html; http://www.justusboys.com/reviews/reviews_15-broke_straight_boys.html; and http://www.gaydemon.com/reviews/Broke_Straight_Boys.html.
Complainant also argues that his website under domain name <collegeboyphysicals.com> has received numerous positive reviews from regular review websites including: http://www.justusboys.com/reviews_307-college_boy_physicals.html; http://www.rabbitsreviews.com/s5448/College-Boy-Physicals.html; and http://www.gaydemon.com/reviews/College_Boy_Physicals.html.
Complainant contends that the website Broke Straight Boys was awarded
Best New Site by Cybersocket Magazine (<cybersocket.com>) in October
Complainant contends that websites <brokestraightboys.com> and <collegeboyphysicals.com>
have both achieved excellent recognition among target markets and created
Complainant states that it has met its burden for showing that it has
established a second
Complainant argues that the domain names in dispute are both dot-net versions of the complainant’s previously registered domain names. Complainant contends that, apart from the TLD suffix, they are identical to Complainant’s unique marks. Complainant also argues that Respondent’s domain names capitalize upon type-in traffic and search engine traffic when surfers are looking specifically for Complainant’s website. Complainant argues that the Respondent’s domain contains links to Complainant’s direct competitors as well as links to Complainant, for which Respondent has earned referral fees. Complainant also argues that the product available at Respondent’s websites under the disputed domain names is primarily the product that Complainant offers or is substantially similar and competing to the product offered on the Complainant’s websites. Complainant also argues that Respondent has directed traffic to the Complainant’s websites for a percentage of sales that is rightfully customer traffic that would have gone directly to the Complainant. Complainant informs to have paid over $164,000.00 USD in referral fees to Respondent since Respondent joined Complainant’s Affiliate program.
Complainant informs to have requested the transfer of the domains from Respondent and Respondent has demanded an unspecified sum of money greater than $15,000 for the two domains. Complainant contends that, even if Respondent’s status as an Affiliate of Complainant gave Respondent rights to market Complainant’s products, Complainant’s request for transfer of the domains terminated Respondent’s right to use the COLLEGEBOYSPHYSICALS.COM and BROKESTRAIGHTBOYS.COM marks in the disputed domains. Complainant finally contends that Respondent’s continued use of the marks is without authorization and constitutes trademark infringement.
Complainant contends that Respondent’s use of the domains does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). Complainant further states that Respondent’s intentional diversion of Complainant’s potential customers for commercial gain demonstrates bad faith and that Respondent has not ever been commonly known as the disputed domain name.
Complainant avers that Respondent first used the domain names in question to send traffic to the Complainant in return for a percentage of any sales of memberships sent to the Complainant from the Respondent’s domains. This practice, known as an affiliate program, is common in this industry. Complainant states that Respondent signed up with the Complainant using the domain name <adult-reactor.com> and was given an identifying code for links back to the Complainant. The Respondent, unknown to the Complainant, then used the affiliate code to forward traffic from the disputed domains.
Complainant contends that any rights conferred upon Respondent by Complainant through the Affiliate program are limited and may be revoked at any time and that the request for the transfer of domains effectively revoked any right Respondent may have had in its use of the domains, and even being an authorized Affiliate does not confer rights or legitimate interests to use Complainant’s mark under Policy ¶ 4(a)(ii). Complainant contends that Respondent attracts Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark. Complainant states that Respondent’s use of Complainant’s mark to increase its customer base is evidence of bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent agreed
to the Affiliate terms as a condition to signing up for the program and
Respondent’s Response was timely received in electronic copy; however the hard copy was received after the Response deadline. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, chooses to accept and consider this Response, as it considers that the electronic copy is sufficient to give notice to the Panel and to the Complainant of Defendant’s defense arguments. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Respondent contends that it was contacted by Complainant on November, 7, 2008, when Complainant informed he was unhappy with the two disputed domain names, even though Complainant received traffic from the two disputed domain names for over a year.
Respondent contends that Complainant was aware of the existence of the two disputed domain names since their creation.
Respondent copies several ICQ chats between Complainant and himself.
Respondent alleges he did not know he was cybersquatting the Complainant when he acquired the two disputed domain names and that his intentions were from the start in good faith.
Respondent contends he did not try to sell the disputed domain names at an inflated price and that all he intended was to receive a fair price for almost one and a half year of work on the two disputed domain names, considering that Complainant knew about them.
C. Additional Submissions
Complainant has submitted an Additional Submission.
In such Additional Submission Complainant contends that it is well established that even when a trademark holder allows another to use its trademark, that right to use may be revoked at any time. Even if Respondent’s status as an Affiliate of Complainant gave Respondent rights to market Complainant’s products, Complainant’s request for transfer of the domain terminated Respondent’s right to use the COLLEGEBOYSPHYSICALS.COM and BROKESTRAIGHTBOYS.COM marks in the disputed domain names. Respondent’s continued use of the marks is without authorization and constitutes trademark infringement.
Complainant contends that Respondent, by affirming he did not know he was cybersquatting, ends up admitting to be cybersquatting. Respondent claims to not know what it was doing would be defined as cybersquatting but this is not a defense. Lack of knowledge that the practice of registering similar domain names is cybersquatting does not demonstrate good faith. The Respondent’s intentions were to send traffic to Complainant through the disputed domain names. Although Respondent did not realize at the time this practice is cybersquatting and in bad faith, it still is bad faith. The Complainant strongly urges the Panel not to find that lack of knowledge of the rules results in showing of good faith, thus setting a precedent that would be used in all future cases. It is well settled that even authorized distributors of a product do not have the right to register similar sounding domain names to sell the original product.
Complainant further contends that Respondent refused to accept US $15,000 for the two domain names after receiving over US $165,000 in commissions in just two years. Respondent does not deny that it demanded more that US $15,000 but simply tries to justify that demand by a weak claim that it wanted a fair price without further substantiation.
The Panel finds
that a trademark registration is not necess
rights in the BROKESTRAIGHTBOY.COM mark and COLLEGEBOYPHYSICALS.COM mark. Complainant registered these marks as domain
names on July 29, 2005 and August 3, 2004, respectively. Complainant contends that it has marketed
these disputed domain names continuously for its provision of adult-oriented
materials. Complainant asserts it has
expended over $250,000 annually in promoting its marks, has been positively
reviewed by numerous websites, and sponsors events to promote its marks. The Panel finds that Complainant has
sufficient common law rights in the marks under Policy ¶ 4(a)(i)
through a showing of second
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 contends that the <brokestraightboy.net> and <collegeboyphysicals.net> domain names are confusingly similar to the BROKESTRAIGHTBOY.COM and COLLEGEBOYPHYSICALS.COM marks, respectively, in that the sole changes are the substitutions of the generic top-level domain “.com” for “.net.” In Cybertania, Inc v. Domain Drop S.A., FA 1118626 (Nat. Arb. Forum Feb. 28, 2008), the panel noted that “[the respondent’s] disputed domain names contain [the complainant’s ULTRAXXXPASSWORDS.COM] mark in its entirety but substitute the gTLD ‘.com’ with the gTLD ‘.org’…[which does not] prevent a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).” See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Likewise, the Panel finds that the <brokestraightboy.net> and <collegeboyphysicals.net> domain names are confusingly similar to the BROKESTRAIGHTBOY.COM and COLLEGEBOYPHYSICALS.COM marks, respectively, under Policy ¶ 4(a)(i).
The Panel finds that the Complainant has established the first element of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show 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.”).
asserts that Respondent has never been commonly known by the disputed domain
names. Complainant’s submitted WHOIS
information lists Respondent as “Hallec.”
Respondent did not prove he is commonly known by the disputed domain
names. The Panel finds that Respondent lacks rights and legitimate interests in
the disputed domain names under Policy ¶ 4(c)(ii). See Instron Corp. v.
Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that
the respondent was not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain names and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute);
Complainant alleges that Respondent is using the disputed domain names to redirect Internet users to Complainant’s competitors’ websites, and is using Complainant’s affiliate program to capture Complainant’s “type-in and search engine traffic.” Complainant asserts that Respondent, though an authorized affiliate, lacks the right to use Complainant’s mark in an infringing manner. Respondent asserts that it developed the websites at the disputed domain names to help increase traffic for Complainant through Complainant’s affiliate program, and that Complainant consented and encouraged this practice. The Panel finds that, even considering that Respondent helped increase traffic for Complainant’s website, he did it with the purpose of gaining profit with it, through commissions paid by Complainant, and not out of generosity. In its Additional Submission, Complainant also argues that Respondent’s rights, if they existed, to use the mark in advertising as an affiliate terminated when Complainant requested transfer of the disputed domain names. The Panel finds that Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that the Complainant has established the second element of the Policy.
Complainant alleges in its Complaint and Additional Submission that Respondent offered to sell the disputed domain names to Complainant for US $15,000. Respondent asserts that it was not trying to sell the disputed domain names to Complainant at an inflated price, but merely sought to recover expenditures over one and a half years that it developed the disputed domain names without protest from Complainant. By the analysis of the ICQ conversations brought by the parties, it is clear it was the Complainant who first approached Respondent offering to buy the domain name and that Respondent did not agree on the price offered. Thus, the Panel cannot find that Respondent primarily registered the disputed domain names to sell them to Complainant.
The Panel finds, however, that Respondent
knowingly infringed Complainant’s rights when it registered the disputed domain
names, as it was obviously aware of Complainant’s existence and prior rights.
Even though Respondent alleges to have registered the disputed domain names
aiming to help increase Complainant’s web traffic, it is clear to the Panel
that Respondent did not do this out of generosity, on the contr
Complainant alleges that Respondent’s use of
the disputed domain names to host advertisements for Complainant’s competitors
constitutes bad faith registration and use under Policy ¶ 4(b)(iv)
as Respondent has created a likelihood of confusion as to Complainant’s
endorsement or sponsorship of the disputed domain names. Complainant also alleges that Respondent has
misused Complainant’s affiliate program to achieve this alleged commercial
gain. The Panel finds that Respondent
engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Deluxe Corp. v.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brokestraightboy.net> and <collegeboyphysicals.net> domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist