Blu Media Inc. v. Roy Magilla a/k/a magilla
Claim Number: FA0905001262183
Complainant is Blu
Media Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <broke-straight-boys.com>, <broke-straight-guys.com>, <broke-ass-boys.com>, <ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 13, 2009.
On May 14, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <broke-straight-boys.com>, <broke-straight-guys.com>, <broke-ass-boys.com>, <ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 May 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 8, 2009 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@broke-straight-boys.com, postmaster@broke-straight-guys.com, postmaster@broke-ass-boys.com, postmaster@ass-lick-boys.com, postmaster@swallow-boys.com and postmaster@boy-alley.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <broke-straight-boys.com> and <broke-ass-boys.com> domain names are confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM mark. Respondent’s <broke-straight-guys.com> domain name is confusingly similar to Complainant’s BROKESTRAIGHTGUYS.COM mark. Respondent’s <ass-lick-boys.com> domain name is confusingly similar to Complainant’s ASSLICKBOYS.COM mark. Respondent’s <swallow-boys.com> domain name is confusingly similar to Complainant’s SWALLOWBOYS.COM mark. Respondent’s <boy-alley.com> domain name is confusingly similar to Complainant’s BOYALLEY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <broke-straight-boys.com>, <broke-straight-guys.com>, <broke-ass-boys.com>, <ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com> domain names.
3. Respondent registered and used the <broke-straight-boys.com>, <broke-straight-guys.com>, <broke-ass-boys.com>, <ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blu Media Inc., has used the BROKESTRAIGHTBOYS.COM, BROKESTRAIGHTGUYS.COM ASSLICKBOYS.COM, SWALLOWBOYS.COM and BOYALLEY.COM marks in conjunction with the advertising and marketing of their corresponding adult-oriented websites. Complainant supports the continuous use of these marks through evidence of website rankings, Internet traffic statistics, and website reviews.
Respondent registered the <broke-straight-boys.com>, <broke-straight-guys.com>, <broke-ass-boys.com>, <ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com> domain names between November 2006 and April 2009. Respondent is using the disputed domain names to resolve to adult-oriented websites containing click-through links which further resolve to websites of Complainant’s competitors.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
A governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) if Complainant can establish common law rights in the mark through a showing of sufficient secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant asserts that the first use of the BROKESTRAIGHTBOYS.COM mark in commerce occurred in September 2004 when its corresponding adult-oriented website was launched. Complainant has demonstrated continuous use of the BROKESTRAIGHTBOYS.COM mark in print, advertising, and marketing in connection with Complainant’s adult-oriented websites since September 2004. Additionally, Complainant registered the BROKESTRAIGHTBOYS.COM mark with the Colorado Secretary of State (Reg. No. 20,091,215,689 issued April 15, 2009). Therefore, the Panel finds that through extensive and continuous use of the BROKESTRAIGHBOYS.COM mark in commerce, together with the fact that Complainant registered the mark with state trademark authorities, Complainant has established sufficient secondary meaning in the mark to confer common law rights predating Respondent’s registration of the disputed domain names pursuant to Policy ¶ 4(a)(i). See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP); see also James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”).
The BROKESTRAIGHTGUYS.COM mark was also first used in commerce in September 2004. Complainant presents evidence of its popularity and positive reviews for the last five years to establish its claim that the BROKESTRAIGHTGUYS.COM mark has acquired sufficient secondary meaning. The Panel concludes that the continuous and extensive use of the BROKESTRAIGHTGUYS.COM mark in connection with the marketing and advertising of Complainant’s adult-oriented websites establishes adequate secondary meaning. The Panel finds that Complainant has established common law rights in the BROKESTRAIGHTGUYS.COM mark predating Respondent’s registration of the disputed domain name pursuant to Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant further asserts that it has common law rights in the ASSLICKBOYS.COM mark. Complainant’s first use of the ASSLICKBOYS.COM mark in commerce occurred in September 2003 when its corresponding adult-oriented website was launched. Complainant demonstrates continuous use of the mark based on its Internet traffic statistics, advertisements and high rankings among adult-oriented websites. Thus, the Panel concludes that through extensive and continuous use of the mark in commerce, Complainant has established secondary meaning in the ASSLICKBOYS.COM mark sufficient to confer common law rights predating Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant contends that the first use of the SWALLOWBOYS.COM mark in connection with its corresponding adult-oriented website occurred in October 2004. The SWALLOWBOYS.COM mark has been used continuously since then in Complainant’s advertising and marketing efforts. Complainant asserts that the resolving website at the SWALLOWBOYS.COM domain name is widely renowned among adult-oriented websites. Thus, the Panel concludes that through extensive and continuous use of the SWALLOWBOYS.COM mark in commerce, Complainant has established secondary meaning in the mark sufficient to confer common law rights which predates Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant alleges that its BOYALLEY.COM mark and the corresponding website have acquired sufficient secondary meaning to confer common law rights pursuant to Policy ¶ 4(a)(i). The first appearance of the mark in commerce occurred in October 2004 and the mark has been used continuously since then in connection with its corresponding website. Complainant presents evidence to establish secondary meaning in the BOYALLEY.COM mark including website reviews, Internet traffic statistics, and its rankings among other adult-oriented websites. Therefore, the Panel finds that Complainant has presented sufficient evidence to convey secondary meaning connected to the BOYALLEY.COM mark. Complainant has established common law rights in the BOYALLEY.COM mark which predates Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant alleges that Respondent’s <broke-straight-boys.com>, <broke-straight-guys.com>, <ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com> domain names are confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM, BROKESTRAIGHTGUYS.COM, ASSLICKBOYS.COM, SWALLOWBOYS.COM and BOYALLEY.COM marks. The domain names each incorporate Complainant’s respective marks in their entirety with the mere addition of hyphens between the terms and the generic top-level domain “.com.” The Panel finds that these modifications fail to alleviate the confusing similarity between Complainant’s marks and Respondent’s disputed domain names. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen). Therefore, the Panel finds that Respondent’s <broke-straight-boys.com>, <broke-straight-guys.com>, <ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com> domain names are confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM, BROKESTRAIGHTGUYS.COM, ASSLICKBOYS.COM, SWALLOWBOYS.COM and BOYALLEY.COM marks respectively, pursuant to Policy ¶ 4(a)(i).
Complainant further alleges that Respondent’s <broke-ass-boys.com> domain name is confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM mark. The Panel finds that the substitution of the term “ass” for the term “straight,” together with the addition of hyphens between the terms and the appended generic top-level domain “.com” is insufficient to distinguish Respondent’s <broke-ass-boys.com> domain name from Complainant’s BROKESTRAIGHTBOYS.COM mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Thus, the Panel concludes that Respondent’s <broke-ass-boys.com> domain name is confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must meet its burden of production for its prima facie case, and then the burden is shifted to Respondent. Respondent must bring themselves within the purview of Policy ¶ 4(c), or put forward some other reason why it can fairly be said to have relevant rights or legitimate interest in relation to the domain names in question. Respondent has failed to respond to the allegations against it. Based on Respondent’s failure, the Panel may accept as true, all reasonable inferences contained in the Complaint. Complainant has presented a prima facie case and the Panel now chooses to consider whether an evaluation of all the evidence presented produces any rights or legitimate interests for Respondent under Policy ¶ 4(c). 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 Policy ¶ 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
The disputed domain names resolve to websites featuring click-through links and advertisements, which divert Internet users to websites of Complainant’s competitors. The Panel presumes that Respondent is generating revenue from such use and therefore finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
Furthermore, Complainant contends that Respondent is not
commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). The WHOIS
information corresponding to the disputed domain names lists registrant as “Roy
Magilla a/k/a magilla.” This information
suggests that Respondent is not commonly known by the <broke-straight-boys.com>, <broke-straight-guys.com>, <broke-ass-boys.com>,
<ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com>
domain names. Based on Respondent’s
failure to respond to the allegations against it, the Panel may accept all
reasonable inferences contained in the Complaint as true. The Panel therefore concludes that Respondent
is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v.
Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the
respondent was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the confusingly similar domain names to divert Complainant’s customers to Respondent’s website containing links to Complainant’s competitors presumably disrupts Complainant’s business. Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s use of confusingly similar domain names, intentionally attempting to attract Internet users to Respondent’s website while presumably generating revenue, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <broke-straight-boys.com>, <broke-straight-guys.com>, <broke-ass-boys.com>, <ass-lick-boys.com>, <swallow-boys.com> and <boy-alley.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 24, 2009
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