Vivid Entertainment, LLC v. Digital
Pulsar c/o Alex V Client sun001
Claim Number: FA0508000542007
PARTIES
Complainant
is Vivid Entertainment, LLC (“Complainant”),
represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria, LLP, 42 Delaware Avenue, Suite 300,
Buffalo, NY 14202. Respondent is Digital Pulsar c/o Alex V Client sun001
(“Respondent”), 1539 Platte Street, Denver, CO 80202.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <vividcams.com>,
registered with Spot Domain Llc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 18, 2005.
On
August 17, 2005, Spot Domain Llc confirmed by e-mail to the National
Arbitration Forum that the <vividcams.com>
domain name is registered with Spot Domain Llc and that the Respondent is the
current registrant of the name. Spot
Domain Llc has verified that Respondent is bound by the Spot Domain Llc
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
August 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
12, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@vividcams.com by e-mail.
Respondent
failed to timely submit a copy of the Response, as required by ICANN Rule
5(a). However, in its discretion, the
Panel will consider the untimely Response.
See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight
to be given to the lateness of the response is solely in the discretion of the
panelist); Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum
July 2, 2002) (“In the interest of having claims decided on the merits and not
by default and because Complainant has not been prejudiced in the presentation
of its case by the late submission, Respondent’s opposition documents are
accepted as timely.”); Strum v.
Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a
Response inadmissible because of formal deficiencies would be an extreme remedy
not consistent with the basic principles of due process. . .").
By Order of October 7, 2005, the Panel gave Complainant until
October 11, 2005, within which to submit a Reply to Respondent’s Response. Complainant has not submitted a Reply.
On September 27, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant, Vivid Entertainment, LLC, makes the following assertions:
1. Respondent’s <vividcams.com> domain name is confusingly similar to
Complainant’s VIVID and VIVID VIDEO marks.
2. Respondent does not have any rights or
legitimate interests in the <vividcams.com>
domain name.
3. Respondent registered and used the <vividcams.com> domain name in
bad faith.
B. Respondent, Digital Pulsar, contends:
1. Complainant, Vivid Entertainment, LLC,
has failed to provide evidence of
ownership of the marks VIVID and VIVID VIDEO. According to Complainant’s exhibits the marks are owned by Vivid
Video, Inc.
2. The marks were registered after the
domain name.
3. The <vividcams.com> domain
name is not confusingly similar to
Complainant’s marks because the domain name contains the word “cams”
which distinguishes Respondent’s domain name from Complainant’s mark.
4. Complainant’s marks are descriptive and
have no secondary meaning.
5. VIVID mark is not exclusive to
Complainant as registration of the VIVID mark has been granted to twelve
additional entities.
6. Respondent has rights and legitimate
interests in respect of the <vividcams.com> domain name.
7. Respondent’s website offers a different
product from Complainant, offering a place for amateurs to display their
cams. Respondent is not in competition
with Complainant.
8. The disputed domain name incorporates
common generic terms.
9. Respondent is not using the domain name
to divert Internet users from Complainant’s websites.
10. Respondent has established a loyal
following in the webcamming community over the last five years.
11. Respondent has not registered or used the
<vividcams.com> domain name in
bad faith.
12. Respondent has a right to use a
descriptive domain name for a product or service it describes.
13. Complainant has not proffered any
evidence that the domain name was acquired primarily for the purpose of
selling, renting or transferring it to Complainant or to disrupt Complainant’s
business or attract customers seeking to purchase its non-competing products.
14. Respondent acquired the <vividcams.com>
domain name before Complainant’s marks were registered. In five years of operation, the website has
acquired its own goodwill.
FINDINGS
Complainant claims to be one of the
world’s leading producers and providers of “adult” entertainment in various
media under the VIVID and VIVID VIDEO marks.
Complainant operates a website at <vivid.com> featuring adult
entertainment. Complainant redirects
traffic from its <vividvideo.com> domain name to the <vivid.com>
website. According to Complainant’s
exhibits, the marks VIVID and VIVID VIDEO are owned by Vivid Video, Inc. Complainant has not shown any relationship
between it and Vivid Video, Inc.
Respondent registered the <vividcams.com> domain name on
October 3, 2000.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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
claims to be the owner of the VIVID and VIVID VIDEO marks. According to Complainant’s exhibits, the
marks are owned by Vivid Video, Inc.
Complainant has not shown any relationship between it and Vivid Video,
Inc. Accordingly, Complainant has
failed to show ownership of the registered marks. See Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see
also American Information Corporation
d/b/a American Information Network v. American Informetrics, Inc., FA 97339
(Nat. Arb. Forum July 19, 2001) (Registration of a mark is prima facie evidence
of the registrant’s ownership of the mark).
Nor has Complainant produced evidence of secondary meaning. Complainant has failed to establish rights
in the VIVID and VIVID VIDEO marks.
Since
Complainant has failed to establish rights in the VIVID and VIVID VIDEO marks under Policy ¶ 4(a)(i), it is unneccessary to
address the other two elements.
DECISION
Having
failed to establish the first element required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vividcams.com>
domain name NOT BE TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.,
Panelist
Dated: October 25, 2005
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