national arbitration forum

 

DECISION

 

Cybertania, Inc. v. WAM / Mattthew Zupek

Claim Number: FA1104001385375

 

PARTIES

Complainant is Cybertania, Inc. (“Complainant”), represented by Leo Radvinsky, Illinois, USA.  Respondent is WAM / Mattthew Zupek (“Respondent”), Wisconsin, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myfreecamvideos.com>, registered with eNom.

 

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2011; the National Arbitration Forum received payment on April 24, 2011.

 

On April 26, 2011, eNom confirmed by e-mail to the National Arbitration Forum that the <myfreecamvideos.com> domain name is registered with eNom and that Respondent is the current registrant of the name.  eNom has verified that Respondent is bound by the eNom 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 April 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@myfreecamvideos.com.  Also on April 27, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on April 27, 2011.

 

On April 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant alleges it is the owner of the service mark MYFREECAMS.COM, which was registered (No. 3,495,750) with the United States Patent and Trademark Office on September 2, 2008, for use in connection with “telecommunication services, namely, transmission of text, voice, pictures and video among computer users via a global communication network; providing on-line chat rooms for transmission of messages among computer users concerning adult themed interactive discussions.” [1]

 

Complainant has owned and operated the website <myfreecams.com> since March 2002.  This site is one of the largest and fastest-growing webcam communities on the Internet.  According to Google Analytics, the site receives in excess of 10 million unique visitors each month.  The site has over 5 million registered members, working with over 100,000 webcam performers in dozens of countries around the world, with millions of dollars in annual revenues.

 

Complainant asserts that the disputed domain name, <myfreecamvideos.com>, is identical or confusingly similar to Complainant’s mark.  Complainant notes that the disputed domain name incorporates the entire mark, adding only the related term “videos.”   According to Complainant, the disputed domain name is readily recognizable as a misspelling of Complainant’s mark and that such change is not sufficient to negate a finding of identicalness or confusing similarity.

 

Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name.  Complainant contends that Respondent is using the disputed site to redirect visitors to competing commercial websites, for which Respondent is likely receiving click-through fees or other advertising fees.  Such use, Complainant maintains, does not constitute legitimate noncommercial or fair use of the domain name, nor use of the domain name in connection with a bona fide offering of services.  Complainant indicates that it has never granted Respondent license or permission to use its mark, nor has Complainant ever had any association with Respondent.

 

With respect to the issue of “bad faith” registration and use, Complainant accuses Respondent of engaging in typosquatting and, as a result, of intentionally attempting to attract Internet users to its website for commercial gain by creating confusion based on a common misspelling of Complainant’s mark.  Such confusion, Complainant asserts, disrupts its business.  Complainant points out that Respondent’s website at myfreecamvideos.com does not contain any disclaimers of affiliation with Complainant and, in fact, displays prominently a banner that reads “MyFreeCam.”   Finally, Complainant states that Respondent is intentionally inserting keywords from Complainant’s website into the Meta Tags of the disputed domain in order to divert customers using search engines to find Respondent’s website.  Such keywords include Complainant’s registered mark, as well as the names of famous performers from Complainant’s website.  “This is a clear example of the Respondent registering and using the Disputed Domain in bad faith to disrupt the business of the Complainant.”

 

B. Respondent

In its Response, Respondent states that “[w]e wish to relinquish rights to the domain name ‘myfreecamvideos.com’ and transfer it to the complainant.”

 

DECISION

 

Respondent has consented to transfer of the <myfreecamvideos.com> domain name to Complainant.  However, after the initiation of this proceeding, eNOM. Inc. placed a hold on Respondent’s account and, therefore, Respondent cannot transfer the disputed domain name while this proceeding is still pending.  In such a situation, where respondent has not contested the transfer of the disputed domain name but, instead, agreed to transfer the domain name in question to complainant, many UDRP panels have decided to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).  The instant panel agrees with this analysis.

 

In view thereof, the Panel concludes that relief shall be GRANTED.

 

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

 

Jeffrey M. Samuels, Panelist

Dated:  May 3, 2011