InfoNet Media Group, Inc. v. WaveSide Entertainment LLC
Claim Number: FA1510001642512
Complainant is InfoNet Media Group, Inc. (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, North Carolina, USA. Respondent is WaveSide Entertainment LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <livesexyjobs.com>, <sexymodelingjobs.com>, and <sexywebcamjobs.com>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2015; the Forum received payment on October 15, 2015.
On October 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <livesexyjobs.com>, <sexymodelingjobs.com>, and <sexywebcamjobs.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@livesexyjobs.com, postmaster@sexymodelingjobs.com, postmaster@sexywebcamjobs.com. Also on October 16, 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.
A timely Response was received and determined to be complete on October 26, 2015.
Complainant’s Additional Submission was received and determined compliant on October 28, 2015.
On November 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SEXY JOBS mark in connection with providing employment placement services for the adult entertainment industry. See Compl., at Attached Annex 5 (home website <sexyjobs.com>). Complainant has registered the SEXY JOBS mark with the likes of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,294,611, registered Feb. 26, 2013), establishing rights in the mark. Respondent’s <livesexyjobs.com>, <sexymodelingjobs.com>, and <sexywebcamjobs.com> domain names are confusingly similar under Policy ¶ 4(a)(i) as each domain incorporates the mark fully while eliminating spacing between words, adding a generic/descriptive term (“live,” “modeling,” or “webcam”), and appending the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name as the WHOIS demonstrates that Respondent is “WaveSide Entertainment LLC.” See Compl., at Attached Annexes 1—3. Additionally, while Respondent uses the disputed domain names to solicit job seekers in the adult-entertainment industry in an effort to compete with Complainant, no bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered and used the <livesexyjobs.com>, <sexymodelingjobs.com>, and <sexywebcamjobs.com> domain names in bad faith. Respondent offered to sell the disputed domains to Complainant for a total of $20,500 USD, in excess out out-of-pocket costs as per Policy ¶ 4(b)(i). Next, Respondent’s disputed domain names redirect Internet users to websites offering services in direct competition with Complainant, disrupting Complainant’s business under Policy ¶ 4(b)(iii). Further, Respondent presumably financially gains through its disruptive use as per the language of Policy ¶ 4(b)(iv). Last, Respondent registered the disputed domain with actual knowledge of Complainant’s rights in the SEXY JOBS mark.
B. Respondent
Respondent does not dispute Complainant’s claim to rights under Policy ¶ 4(a)(i).
The mark, SEXY JOBS, is generic and Complainant should not be considered to have a monopoly on the phrase on the Internet.
Respondent’s use of the disputed domain names is bona fide with respect to its solicitation of webcam modeling services, distinguishable with Complainant’s business in advertising jobs in various adult fields. Further, Respondent has been involved in the adult-entertainment industry since its first domain was registered on February 17, 2011. See Resp., at Attached Annex 2 (<wavesideentertainment.com>). Respondent engaged Complainant to advertise Respondent’s offerings from November 2010 through May 2012. See Resp., at Attached Annex 3.
Respondent did not register or use the disputed domain names in bad faith. First, Respondent offered the domains at fair market value and are not an indication of Respondent’s bad faith. Next, Respondent has operated with a legitimate interest, since before Complainant owned the rights to SEXY JOBS, quelling Complainant’s assertions of bad faith disruption, attraction for commercial gain, and actual knowledge.
C. Additional Submission – Complainant
Complainant filed and Additional Submission on October 28, 2015. In this Submission, Complainant claims that the Forum has recognized trademarks as the basis of a Complaint without qualification or mention as to the strength of the trademark. In essence, the Complainant is arguing that the trademark SEXY JOBS is registered with the USPTO and, as such, it deserves recognition here.
Complainant further claims that the mere addition of a generic word and the addition of a gTLD does not adequately distinguish a disputed domain name from the underlying trademark at issue. Complainant thoroughly researched this issue in Forum cases and is quite confident that the trademark SEXY JOBS deserves broad protection.
The remainder of Complainant’s well pleaded Submission can be summarized as simply not accepting Respondent’s claim that it had no knowledge of the SEXY JOBS mark prior to registering the disputed domain names.
C. Additional Submission – Respondent
Although Respondent’s Additional Submission was submitted after the deadline prescribed by Rule 7, the Panel did consider it in making the Panel’s determination.
In this Submission, Respondent attempts to explain what a generic mark is and what its effects could be. Respondent restates its lack of the SEXY JOBS mark prior to registering the disputed domain names and further emphasizes that Complainant had no trouble accepting over $10,000 to advertise Respondent’s services on the SEXYJOBS.COM web site and it only found a problem when Respondent ceased its advertising buy with Complainant.
In this well-pleaded case, the Panel finds for Respondent. Although Respondent clearly included the Complainant’s trademark in the disputed domain name <livesexyjobs.com>, the other disputed domain names are not confusingly similar to the Complainant’s registered trademark SEXY JOBS. Respondent possesses rights and legitimate interests in the disputed domain name <livesexyjobs.com>. Without further evidence, it is impossible to determine if the Respondent registered and is using the disputed domain names in bad faith.
Therefore, the Panel finds that the Complainant has failed to meet each and every burden regarding each and every disputed domain name.
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.
Complainant correctly points out that Respondent included its registered trademark, SEXY JOBS, in the disputed domain names. Respondent correctly points out that this mark, though subsisting on the Principle Register of the United States Patent and Trademark Office, is a particularly weak mark. Respondent calls it generic. In trademark discourse it would be called descriptive. What it is called is not relevant. Either way it is not a strong mark.
However, the USPTO did consider it worth registration. This mere fact gives Complainant rights in or to the mark for purposes of these proceedings. Further, Respondent did include the mark in at least one of the disputed domain names without altering it. That is, in the <livesexyjobs.com> disputed domain name, Respondent merely added the word “live” and a gTLD to Complainant’s trademark to arrive at that disputed domain name. Therefore, the Panel finds that the disputed domain name <livesexyjobs.com> is confusingly similar to Complainant’s registered trademark SEXY JOBS.
However, the Panel also finds that the disputed domain names <sexymodelingjobs.com> and <sexywebcamjobs.com> are not confusingly similar as they each intersperse either “modeling” or “webcam” in between the descriptive but registered words in Complainant’s mark. As such, the Panel finds that these two disputed domain names are adequately distinguished from the weak but registered trademark of Complainant.
As such, the remainder of this opinion addresses the disputed domain name <livesexyjobs.com> only. The Complaint regarding the disputed domain names <sexymodelingjobs.com> and <sexywebcamjobs.com> is hereby dismissed.
Regarding the disputed domain name <livesexyjobs.com>, it is clear that Respondent has rights and legitimate interests in and to that disputed domain name.
Respondent argues that its use of the disputed domain name is bona fide with respect to its solicitation of webcam modeling services, distinguishable with Complainant’s business in advertising jobs in various adult fields. Compare Compl., at Attached Annex 5 (Complainant’s home site), with Compl., at Attached Annexes 13—15 (Respondent’s use of the disputed domains). Respondent also contends that it holds many domain names that contain the words “sexy” and “jobs.” See Resp., at Attached Annex 1. Further, Respondent argues it has been involved in the adult-entertainment industry since its first domain was registered on February 17, 2011. See Resp., at Attached Annex 2 (<wavesideentertainment.com>). Respondent also alleges it engaged Complainant to advertise Respondent’s offerings from November 2010 through May 2012. See Resp., at Attached Annex 3. Panels have held that both unrelated and competing uses may be considered a bona fide use of disputed domains in the following cases: LifeWatch Holding Corp. v. Network Earth, Inc., FA 96301 (Nat. Arb. Forum Jan. 26, 2001) (finding that Respondent could establish rights or legitimate interests in the <lifewatch.com> domain name where Complainant’s identical LIFEWATCH mark was composed of generic and descriptive terms, Respondent provided evidence that it was preparing to launch multiple websites providing a variety of “watch” services, and Respondent’s domain name provided a service unrelated to Complainant); Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
The Panel finds that Respondent has presented sufficient evidence to establish its use of the <livesexyjobs.com> domain name has been legitimate under Policy ¶ 4(c)(i).
Respondent also argues that the words used in the <livesexyjobs.com> disputed domain name are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The Panel finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
As such, the Panel finds in favor of Respondent as this factor applies to the <livesexyjobs.com> disputed domain name.
Both parties make compelling arguments regarding whether the disputed domain names were or were not registered and used in bad faith. Therefore, without further evidence, the Panel finds that it is impossible to determine if the Respondent engaged in bad faith use and registration.
Therefore, the Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <livesexyjobs.com>, <sexymodelingjobs.com>, and <sexywebcamjobs.com> domain names remain with Respondent.
Kenneth L. Port, Panelist
Dated: November 8, 2015
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