Blu Media LLC v. Hallec
Claim Number: FA0811001235329
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
second
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
receiving monet
B. Respondent
Prelimin
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”).
Response
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.
FINDINGS
The Panel finds
that a trademark registration is not necess
Complainant asserts
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
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.
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.”).
Complainant
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);
see also
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.
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 <brokestraightboy.net>
and <collegeboyphysicals.net>
domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: Janu