national arbitration forum

 

DECISION

 

Surecom Corporation NV v. Giovanni Rossi

Claim Number: FA1010001352722

 

PARTIES

Complainant is Surecom Corporation NV (“Complainant”), represented by Paul T. Eidsness of Paul T. Eidsness and Associates, PLC, Minnesota, USA.  Respondent is Giovanni Rossi (“Respondent”), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cam4.us>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 18, 2010; the Forum received a hard copy of the Complaint on October 19, 2010.

 

On October 20, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cam4.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 25, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 22, 2010, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <cam4.us> domain name is confusingly similar to Complainant’s CAM4 mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cam4.us> domain name.

 

3.      Respondent registered and used the <cam4.us> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Surecom Corporation NV, owns and operates a free, live adult webcam site known as <cam4.com>.  Complainant asserts common law rights in the CAM4 mark dating back to 1999.

 

Respondent, Giovanni Rossi, registered the <cam4.us> domain name on March 11, 2008.  The disputed domain name redirects Internet users to one of Complainant’s competitors at the <opencams.com> domain name as part of the competitor’s affiliate program.

 

DISCUSSION

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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant asserts common law rights in the CAM4 mark.  The Panel finds that a trademark registration is not necessary to prove rights in a mark if Complainant presents sufficient evidence showing continuous use and the establishment of secondary meaning in the mark to establish common law rights.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also 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). 

 

Complainant asserts that it has continuously used the CAM4 mark since July 28, 1999, when it registered the <cam4.com> domain name.  Complainant launched its website at that domain name in 2007.  Complainant argues that as a result of its hard work, the <cam4.com> website has achieved a ranking as the 355th most popular website in the world in terms of traffic volume, according to Alexa’s Site Info and Traffic Rank analysis.  Complainant alleges that within one year of its launch, Complainant’s website exceeded 15 million page views per month; currently, Complainant asserts that the <cam4.com> domain name is generating 80 million visits per month.  Complainant contends that this dramatic growth in popularity has occurred consistently and rapidly since its launch in 2007. As a result, the Panel finds that Complainant has demonstrated continuous use and the subsequent acquisition of secondary meaning that establish Complainant’s common law rights in the mark for the purposes of 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 Respondent’s <cam4.us> domain name is identical to Complainant’s CAM4 mark because the only difference is the addition of the country-code top-level domain (“ccTLD”) “.us.”  The Panel finds that the addition of a ccTLD is irrelevant in distinguishing between a disputed domain name and Complainant’s mark.  See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of ‘.us’ to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie,” as it uses the trademark in its entirety.  The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”).  Therefore, the Panel concludes that Respondent’s <cam4.us> domain name is identical to Complainant’s CAM4 mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name.  Before the burden to demonstrate evidence of such rights or interests can transfer to Respondent, Policy ¶ 4(a)(ii) requires Complainant to put forth a prima facie case supporting its assertion.  The Panel finds that in this case, Complainant has presented a sufficient case against Respondent.  Respondent’s failure to respond, however, results in a finding that Respondent has not met its burden.  The Panel thus may find that Respondent does not have rights and legitimate interests in the disputed domain name and that Complainant’s arguments may be accepted as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Compañia de Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (finding that because Respondent defaulted and did not demonstrate that it had any rights or legitimate interests, the “Panel assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent’s actual or most likely knowing of the famous or well known marks MOVICOM and BELL SOUTH”).  The Panel will consider the evidence in record in light of the Policy ¶ 4(c) factors in order to make an independent finding on Respondent’s rights and legitimate interests.

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <cam4.us> domain name.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <cam4.us> domain name.  The WHOIS information for the disputed domain name identifies the registrant as “Giovanni Rossi,” which the Panel finds is not associated with the disputed domain name.  The Panel therefore concludes that Respondent is not commonly known by the <cam4.us> domain name and lacks rights and legitimate interests according to Policy ¶ 4(c)(iii).  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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant argues that after registering the <cam4.us> domain name, Respondent signed up to be an affiliate of OpenCams.com.  Complainant alleges that Respondent has now monetized the <cam4.us> domain name and uses it to redirect Internet users to the <opencams.com> domain name, which is a competitor of Complainant, for profit.  The Panel finds that appropriating Complainant’s identical mark to reroute Internet users to Complainant’s competitor does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use according to Policy         ¶ 4(c)(iv).  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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under UDRP ¶ 4(c)(i)).  

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent has an affiliate relationship with one of Complainant’s competitors, OpenCams.com, which the Panel finds effectively places Respondent in the position of a competitor.  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”).  Complainant asserts that Respondent uses the <cam4.us> domain name to divert Internet users likely seeking Complainant to the competing <opencams.com> domain name and website.  The Panel finds that this competitive diversion indicates bad faith registration and use according to 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 [UDRP] ¶ 4(b)(iii).”); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to [UDRP] ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).

 

Complainant alleges that Respondent has monetized the <cam4.us> domain name and uses it to redirect Internet users to the <opencams.com> domain name in exchange for affiliate fees.  Complainant argues that Respondent intentionally registered the <cam4.us> domain name because of the fame of Complainant’s CAM4 mark and the likelihood that Internet users would be attracted  to and confused by the presence of Complainant’s mark in the disputed domain name.  The Panel finds that registering a domain name consisting of Complainant’s mark in order to profit from attracting and misleading Complainant’s customers demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cam4.us> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  November 29, 2010

 

 

 

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