MFCXY Inc. v. John Holmes
Claim Number: FA1504001616557
Complainant is MFCXY Inc. (“Complainant”), represented by Lawrence G. Walters, Florida, USA. Respondent is John Holmes (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <myfreecamsvideos.net> , <myfreecams4you.com> and <myfreecams-chaturbate-videos.com>, ('the Domain Names') registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2015; the Forum received payment on April 27, 2015.
On April 28, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <myfreecamsvideos.net> , <myfreecams4you.com> and <myfreecams-chaturbate-videos.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2015 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@myfreecamsvideos.net, postmaster@myfreecams4you.com, postmaster@myfreecams-chaturbate-videos.com. Also on May 5, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" 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 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
Complainant's contentions can be summarized as follows:
Complainant is the owner of a service mark for MYFREECAMS.COM for, inter alia, adult chat room services and has operated a popular adult entertainment website online in association with this mark since 2002. The web site currently receives in excess of ten million unique visitors per month working with over 100,000 web cam performers in dozens of countries with millions of dollars in annual revenues.
MYFREECAMS.COM is an invented name and has established considerable secondary meaning through use, advertising and marketing such that customers identify it with a single source of origin of services.
The Domain Names are identical or confusingly similar to the Complainant’s mark and incorporate the entire mark with slight deviation of adding the related terms 'videos' or '4YOU'. Such changes are not sufficient to negate a finding of identicalness or confusing similarity. The Domain Names are readily recognizable as intentionally confusingly similar to the Complainant’s mark.
Respondent’s use is diverting and confusing customers searching for the Complainant’s mark to competing commercial web sites
This is not legitimate non-commercial or fair use, nor a bona fide offering of services.
Complainant has never granted Respondent licence or permission to use its mark and nor has the Complainant ever had any association with the Respondent.
Respondent is using the Domain Names in bad faith by typo squatting on Complainant's well known mark and web site. By so doing the Respondent is intentionally attempting to attract Internet users to its web sites for commercial gain by creating confusion based on a common modification of Complainant’s mark. It is intentionally redirecting visitors to a competitor for personal financial gain.
The Respondent is well aware of the Complainant, its mark and its web site and the confusion caused disrupts the business of Complainant while benefitting the Respondent. Respondent's web site does not contain any disclaimers. In fact it prominently displays an image that reads 'MyFreeCams' . The Respondent is also inserting keywords into the content of its web sites attached to the Domain Names in order to divert customers from search engines. Such keywords include 'MyFreeCams.com' and even the names of famous performers from Complainant’s web site. This is a clear example of the Respondent registering and using the Domain Names in bad faith to disrupt the business of the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of a service mark for MYFREECAMS.COM for, inter alia, adult chat room services and has operated a popular adult entertainment website online in association with this mark since 2002.
The Domain Names were registered in 2013 and have been pointed to commercial web sites with adult content that compete with and are not associated with the Complainant.
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 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.
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.”).
Identical or Confusingly Similar
The Domain Names consist of MYFREECAMS, a sign confusingly similar to the Complainant's MYFREECAMS.COM mark used with generic terms, 'videos', '4you' or '-chaturbate-video' respectively, plus the gTLDs .net or .com.
The addition of generic terms or words or punctuation does not serve to adequately differentiate a disputed domain name from a registered mark. See AM. Express Co. v MustNeed.com FA 257901(Nat Arb. Forum June 7, 2004) (finding the respondent's sign <amextravel.com> domain name confusingly similar to Complainant's AMEX mark because the 'mere addition of a generic or descriptive word to a registered mark does not negate' a finding of confusing similarity under Policy 4(a)(i). Further past panels have found that the addition of punctuation marks , such as hyphens, is irrelevant in the determination of confusing similarity See Health Devices Corp. v Aspen STC, FA 158254 (Nat Arb Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a) (i).)
The gTLDs .net and .com do not serve to distinguish the Domain Names from the MYFREECAMS mark, which is the distinctive component of the Domain Names. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that the Respondent is not commonly known by the Domain Names, is not using them to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the names. The Complainant contends that the sites are set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights to make a profit.
The web sites attached to the Domain Names uses the trading name 'MyfreeCams' and keywords including 'myfreecams.com' and the names of performers from the Complainant site. The Respondent has used the site to promote services in competition with those of the Complainant. It uses the Complainant's trade mark and does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc. v Benjamin FA 944242 (Nat. Arb. Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panellist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent’s use of the site is commercial and he is using it to make profit from web sites which compete with the Complainant in a confusing and disruptive manner. As held above the Panel believes that the use is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they offering competing adult chat room services under a very similar name to the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myfreecamsvideos.net>, <myfreecams4you.com> and <myfreecams-chaturbate-videos.com> domain names be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: June 10, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page