InfoNet Media Group, Inc. v. Russ Chick
Claim Number: FA1303001490457
Complainant is InfoNet Media Group, Inc. (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, North Carolina, USA. Respondent is Russ Chick (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sexyjobs.biz>, registered with Moniker Online Services, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 19, 2013; the National Arbitration Forum received payment March 19, 2013.
On March 19, 2013, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <sexyjobs.biz> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC verified that Respondent is bound by the Moniker Online Services, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2013, 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@sexyjobs.biz. Also on March 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
1. Policy ¶ 4(a)(i)
a. Complainant registered the SEXY JOBS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,294,611 filed January 24, 2012, registered February 26, 2013).
i. Complainant’s registration lists a first use in commerce of February 28, 1998.
b. Complainant has common law trademark rights in the SEXY JOBS mark dating back to at least 1998 supported by the following:
i. Complainant has owned and operated the <sexyjobs.com> domain name since February 28, 1998, and its site has become the leading provider of online employment placement services for the adult-oriented entertainment industry.
ii. From 1998–2008, Complainant generated some $2.5 million in revenue from the operation of its <sexyjobs.com> domain name. To date, Complainant earned total revenues of approximately $4.1 million from the services it provides at this domain.
iii. Complainant continuously marketed its <sexyjobs.com> site online from 1998 to present, spending some $80,000.00 in Internet-related marketing expenses between 1998 and 2008.
iv. According to statistics obtained from the Internet information website <alexa.com>, Complainant’s <sexyjobs.com> site is the #1 most popular website in the Adult Business Employment category, the #6 most popular website in the Adult Business category, and the #206 most popular website in the entire Adult Industry category.
v. Complainant’s services in connection with the SEXY JOBS mark have been recognized by numerous media outlets prior to Respondent’s December 20, 2008, registration of the <sexyjobs.biz> domain name.
c. Respondent’s <sexyjobs.biz> domain name is identical to Complainant’s SEXY JOBS mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is using the <sexyjobs.biz> domain name to maintain a website that directly competes with Complainant by providing links to “Find Talent” and “Find Jobs” and by allowing job seekers in the adult-oriented entertainment industry to post resumes that can be reviewed by producers and employers.
b. Respondent is not commonly known by the <sexyjobs.biz> domain name as the WHOIS information indicates that Respondent is known as “Russ Chick.”
3. Policy ¶ 4(a)(iii)
a. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SEXY JOBS mark, based on the fact that Respondent was a customer of Complainant’s <sexyjobs.com> site prior to Respondent’s registration of the disputed domain name.
b. Respondent’s <sexyjobs.biz> domain name redirects Internet users to a website purporting to offer services in direct competition with those offered by Complainant under its SEXY JOBS mark, thereby disrupting Complainant’s business and indicating bad faith under Policy ¶ 4(b)(iii).
c. Respondent benefits commercially when users choose to take advantage of the services offered on its competing website. Respondent is thus capitalizing on the likelihood that Internet users seeking Complainant’s services will confuse the source of the disputed domain name as being affiliated with Complainant, which is evidence of bad faith under Policy ¶ 4(b)(iv).
Complainant established legal and common law rights to and legitimate interests in the mark contained within the disputed domain name.
The disputed domain name is identical to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires Complainant to 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 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 will draw such inferences as the Panel 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
Identical to or Confusingly Similar
Complainant provides evidence of its registration of the SEXY JOBS mark with the USPTO (Reg. No. 4,294,611 filed January 24, 2012, registered February 26, 2013). The Panel holds that this registration establishes Complainant’s legal rights in the mark dating back to January 24, 2012, the date on which Complainant filed its trademark application with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Complainant also claims common law trademark rights in the SEXY JOBS mark dating back to at least 1998. Complainant claims that it has owned and operated the <sexyjobs.com> domain name since February 28, 1998. The Panel notes that Complainant’s USPTO registration of the SEXY JOBS mark also lists a first use in commerce of February 28, 1998. Complainant argues that it has continually identified itself and its services by the SEXY JOBS mark since that time. Complainant provides screenshots from Archive.org for every year between 2000 and 2008 showing its operation of <sexyjobs.com>. In addition, Complainant provides evidence of its revenues, advertising expenditures, and media recognition for the decade prior to Respondent’s December 20, 2008 registration of the <sexyjobs.biz> domain name. Complainant asserts that from 1998–2008, it generated some $2.5 million in revenue from the operation of its <sexyjobs.com> domain name, and that it has earned total revenues of approximately $4.1 million to date. Complainant also asserts that it has continuously marketed its <sexyjobs.com> site online since 1998, spending some $80,000.00 in Internet-related marketing expenses between 1998 and 2008. Further, Complainant provides a “non-exhaustive list of media recognition received by Complainant,” and each recognition predates Respondent’s 2008 registration of the disputed domain name. See Complaint Table 2. Complainant claims that according to statistics obtained from the Internet information website <alexa.com>, Complainant’s <sexyjobs.com> site is currently the #1 most popular website in the Adult Business Employment category, the #6 most popular website in the Adult Business category, and the #206 most popular website in the entire Adult Industry category. Given the evidence provided by Complainant, the Panel finds that Complainant successfully established secondary meaning in the SEXY JOBS mark through its continuous use of the mark, thereby proving common law rights in the mark under Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
Complainant argues that Respondent’s <sexyjobs.biz> domain name is identical to Complainant’s SEXY JOBS mark under Policy ¶ 4(a)(i). Complainant asserts that the disputed domain name incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain (“gTLD”) “.biz.” The Panel notes that the disputed domain name also eliminates the spaces between words in Complainant’s mark. The Panel finds that neither the elimination of spaces nor the affixation of a gTLD is sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark). Consequently, the Panel finds that Respondent’s <sexyjobs.biz> domain name is identical to Complainant’s SEXY JOBS mark for the purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights to 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 argues that Respondent is not commonly known by the <sexyjobs.biz> domain name within the meaning of Policy ¶ 4(c)(ii). Complainant notes that the WHOIS information identifies Respondent as “Russ Chick.” The Panel finds that absent any affirmative evidence in the record to suggest that Respondent is commonly known by the disputed domain name, Respondent cannot be held to have satisfied Policy ¶ 4(c)(ii). See 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). The Panel finds that Respondent is not commonly known by the <sexyjobs.biz> domain name within the meaning of Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the <sexyjobs.biz> domain name to divert Internet users to Respondent’s own site, which provides competing services, is not 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). Complainant alleges that Respondent is using the <sexyjobs.biz> domain name to maintain a website that directly competes with Complainant by providing links to “Find Talent” and “Find Jobs” and by allowing job seekers in the adult-oriented entertainment industry to post resumes that can be reviewed by producers and employers. The Panel agrees with Complainant’s assessment, holding that Respondent’s use of the disputed domain name to offer services which directly compete with those offered by Complainant under its SEXY JOBS mark and that they do not qualify as either 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Respondent makes no contentions relative to ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends as well that Respondent registered and used the disputed domain name in bad faith. Respondent’s <sexyjobs.biz> domain name redirects Internet users to a website purporting to offer services in direct competition with those offered by Complainant under its SEXY JOBS mark, thereby disrupting Complainant’s business. The Panel finds that a respondent’s registration of an identical domain name for the purpose of providing competing services disrupts a complainant’s business, and this supports findings of bad faith pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent benefits commercially when users choose to take advantage of the services offered on Respondent’s competing website, and that Respondent is thus capitalizing on the likelihood that Internet users seeking Complainant’s services will confuse the source of the disputed domain name as being affiliated with Complainant. The Panel agrees, finding that Respondent’s registration of an identical domain name evidences Respondent’s intent to create confusion with Complainant in order to attract Internet users to Respondent’s website, where Respondent generates profits. The Panel finds that Respondent registered and used the <sexyjobs.biz> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Finally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SEXY JOBS mark, based on the fact that Respondent was a customer of Complainant’s <sexyjobs.com> site prior to Respondent’s registration of the disputed domain name. Complainant alleges that Respondent posted advertisements on Complainant’s website for <rdbcams.com> that ran from August 29, 2007, to February 11, 2009. Complainant claims that the WHOIS record for the <rdbcams.com> domain name is identical to the WHOIS record for the disputed domain name. Complainant also submits evidence of an account statement dated August 29, 2007, that was sent by Complainant to Respondent, illustrating that the name and phone number provided by Respondent during its registration as an employer on <sexyjobs.com> are identical to those listed on the WHOIS for the disputed domain name. Moreover, Complainant submits evidence of an email chain starting December 15, 2008, where Respondent used the email address “support@camsmax.com” (the same as the WHOIS for the disputed domain name) to correspond with Complainant regarding Respondent’s employer account on Complainant’s website. In light of the foregoing evidence, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the SEXY JOBS mark prior to Respondent’s registration of the <sexyjobs.biz> domain name, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <sexyjobs.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 1, 2013.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page