Wiluna Holdings, LLC v. Privacy.co.com, Inc Privacy ID# 1100134.
Claim Number: FA1805001789612
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Privacy.co.com, Inc Privacy ID# 1100134. (“Respondent”), represented by Paul Keating of Law.es, Barcelona, SPAIN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <video4sale.com>, registered with Sea Wasp, 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.
Mr. Eduardo Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2018; the Forum received payment on May 31, 2018.
On June 1, 2018, Sea Wasp, Llc confirmed by e-mail to the Forum that the <video4sale.com> domain name is registered with Sea Wasp, Llc and that Respondent is the current registrant of the name. Sea Wasp, Llc has verified that Respondent is bound by the Sea Wasp, 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 June 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2018 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 email@example.com. Also on June 4, 2018, 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 June 28, 2018.
Additional Submission from Complainant on July 3, 2018 , in which Complainant replied to Respondent’s arguments and response. Additional Submission from Respondent was filed on July 8, 2018.
On July 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Machado 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 "Rule s") "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 name be transferred from Respondent to Complainant.
Complainant engages in the distribution of adult-oriented materials under the CLIP4SALE and related marks, since at least 2003. Complainant has obtained trademark registrations for “CLIPS4SALE.COM” (Reg. No. 3,508,680, registered Sep. 30, 2008) and “VIDEOS4SALE” (Reg. No. 5,446,255, registered Apr. 17, 2018) through the United States Patent and Trademark Office (“USPTO”). See Compl. Exs. 1 & 3, in which copies of such registration certificates are provided as evidence.
Complainant argues that Respondent’s <video4sale.com> domain name is confusingly similar to Complainant’s “CLIPS4SALE.COM” and “VIDEOS4SALE” trademarks. Complainant also provided evidence that the <video4sale.com> domain name is used to redirect traffic to another adult-oriented website, a service named “BLUECAMS”. See Compl. Ex. 11. Such service provides content similar with Complainant’s, and Complainant argues that Respondent might be profiting from such redirection through click-through advertisement.
Therefore, Complainant claims that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. As per Complainant’s claims, Respondent registered and uses the <video4sale.com> domain name in bad faith, which motivated this Complaint to the Forum.
Respondent argues that the disputed domain name is not confusingly similar to CLIPS4SALE.COM, since the terms “clip” and “video” have different meanings, and do not carry any resemblance as to generate actual confusion.
Also, Respondent alleges that Complainant’s trademark rights over the “VIDEOS4SALE” trademark were obtained several years after Respondent registered the domain name. Complainant’s trademark registration was granted in 2018, while the disputed domain name was initially registered in 2004. Therefore, Respondent does have prior rights and legitimate interests in the <video4sale.com> domain name to validate this Complaint. Furthermore, the domain name registration predates Complainant’s rights in the VIDEOS4SALE mark. See Resp. Ex. 1.
Subsequently, Respondent claims use of the domain name to also provide videos for sale to the public, as shown in Complainant’s Exhibit 11, which is consistent with its descriptive nature. In fact, Respondent argues that word elements such as “clips4sale” and “videos4sale” should be deemed as generic and descriptive, such as “churrasco” or “pizzeria” are for restaurant services (as they reflect Brazilian steakhouses and Italian restaurants that serve pizza) . See Resp. Supplemental Response. p.14.
Respondent counters Complainant’s argument that he registered the domain name in bad faith, as Respondent registered the domain name prior to Complainant establishing any rights over the trademark. Therefore, Respondent could not have registered the disputed domain name specifically to target Complainant’s services, reason why no bad faith could be claimed.
Finally, Respondent alleges that the Complaint should be denied under the doctrine of latches, and also specifically requests that the Panelist finds that Complainant has engaged in the practice of “Reverse Domain Name Hijacking” when presenting the Complaint.
C. Additional Submissions
On his July 03, 2018 Additional Submission, Complainant emphasize the argument that Respondent uses the disputed domain name with the intent to misleadingly drive consumers away from Complainant’s website. Complainant also presented additional exhibits, which were reviewed by the Panelist.
Respondent also filed an Additional Submission on July 08, in which Respondent contests the right of Complainant to file “unsolicited” additional submissions, as well as other claims. Respondent presented additional exhibits, which were also reviewed by the Panelist.
Finally, Respondent filed evidence of e-mails exchanged with the Complainant’s attorney, from June 22, July 07 and July 08, 2018, regarding this dispute.
Complainant is Wiluna Holdings, LLC, a corporation established in 2011 in Wilmington, State of Delaware, United States of America. Complainant is engaged in the adult/porn industry and is the owner and operator of the website operating at the URL www.clips4sale.com . Complainant also owns trademark registrations for “CLIPS4SALE.COM” (Reg. No. 3,508,680, registered Sep. 30, 2008) and “VIDEOS4SALE” (Reg. No. 5,446,255, registered Apr. 17, 2018), both filed with the USPTO and valid in the United States of America.
Respondent is Xedoc Holding S.A., a corporation established in Luxembourg. While Respondent did not provide information about its activities, Panelist was able to find information about Respondent through the website: https://xedoc.com/ . In such website, and at the date in which this information was verified by the Panelist (the website was visited on July 16, 2018), Respondent claims its activities as “We own Premium Domain Names and invest in Start ups” and “We own IP”, with “IP” probably meaning “intellectual property rights”. Therefore, Panelist concludes that the Respondent is engaged in the domain name ownership/transfer/ investment business.
It is important to note that Respondent appears to use the services of Savvy Investments, LLC ("Privacy.co.com Inc.”), a company based in Wyoming, USA that provides “WHOIS privacy” services, i.e., domain name contact information for parties interesting in not disclosing their identity as owners of a specific domain name.
The disputed domain name involved in this Complaint is VIDEO4SALE.COM. The domain is registered since February 2009. When Panelist accessed the address <www.video4sale.com>, it redirects the user to an adult website named “BLUECAM”. The company which appears as responsible for the adult website (MultiMedia LLC of Lake Forest, California, USA) does not appear to have any corporate “ties” with the Respondent.
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 claims rights in the CLIPS4SALE.COM (e.g. Reg. No. 3,508,680, registered Sep. 30, 2008) and VIDEOS4SALE (e.g. Reg. No. 5,446,255, registered Apr. 17, 2018) marks through its registration of the marks with the USPTO. See Compl. Exs. 1 & 3. Registration of a mark with the USPTO can sufficiently establish the complainant’s rights and interest in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark... Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panelist understands that Complainant has established rights in the trademark VIDEOS4SALE for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <video4sale.com> domain name is identical or confusingly similar to Complainant’s mark The Panelist agrees that the word elements VIDEOS4SALE and VIDEO4SALE.COM are confusingly similar.
While Respondent argues that its registration of the <video4sale.com> domain name predates Complainant’s alleged rights in the mark, the Panel may find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Finally, Respondent contends that the <video4sale.com> domain name is comprised of common and generic/descriptive terms. The Panelist finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii))
Paragraph 4(a)(ii) of the Policy requires that Complainant must build a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii))”).
Complainant contends that Respondent has no rights or legitimate interests in the <video4sale.com> domain name, and alleges that Respondent has never been legitimately known by the VIDEOS4SALE or CLIPS4SALE.COM mark.
As per the evidence disclosed, Respondent does not appear to be engaged in any offer of goods and services under the disputed domain name. In fact, considering Respondent’s activities in the domain name ownership/ transfer/ investment business, the only evidence available is that the domain name redirects traffic to an adult video service named “BLUECAM”, which does not appear to be owned by, or associated with, the Respondent.
Furthermore, Complainant argues that Respondent diverts Internet users seeking Complainant’s website to its own website where it offers adult-oriented content in competition with Complainant, and profits from click-through advertisements. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
However, Respondent´s arguments that the domain name registration predates Complainant’s rights in the VIDEOS4SALE trademark, and that the terms of the <video4sale.com> domain name are common and generic/descriptive, are very important and both need to be taken into consideration.
A respondent can be found to have rights and legitimate interests in a domain name when its registration of the domain name predates the rights established by a complainant. See Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark). The Respondent registered the domain name in 2009, whereas Complainant registered the domain name in 2018. See Resp. Ex. 1. Accordingly, the Panel finds that Respondent’s registration of the domain name predates Complainant’s established rights in the mark when conducting its Policy ¶ 4(a)(ii) analysis.
Also, the trademark VIDEOS4SALE, registered only in the U.S., is not inherently distinctive as to block its possible coexistence with the <video4sale.com> domain name, which is available on a worldwide basis. And finally, the fact that Respondent is engaged in the domain name ownership/ transfer/ investment business is not per se evidence of lack of legitimate interest, particularly if the disputed domain name is composed of generic word elements, and it does not appear to be confusingly similar with a highly distinctive prior trademark.
Investing in generic domain names, for use, ownership or resale, is a legitimate business activity and disputes over such generic domain names may not fit within the core purposes of the UDRP. See Wiluna Holdings, LLC v. Michael Stadlin / IMS Internet Management Services GmbH, FA 1529658 (Forum Jan.13, 2014) (“Indeed, it seems obvious that Respondent has a business activity via the disputed website. The Panel wonders whether the present dispute is even in the scope of the UDRP since the latter was implemented to address abusive cybersquatting”).
Therefore, Respondent’s defense was able to 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 (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 (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).
In view of the above, the Panelist finds that Complainant did not provide sufficient evidence that the Respondent lacks rights or legitimate interests in the disputed domain name, as per Policy ¶¶ 4(a)(ii).
While it is not necessary to go through the other arguments in this dispute, given our findings with respect to rights and legitimate interests, as per Policy ¶¶ 4(a)(ii), the Panelist will address the issue of bad faith.
Paragraph 4(a)(iii) of the Policy requires the Panelist to address the issue of whether Respondent’s registration of the <video4sale.com> domain name predates Complainant’s first claimed rights in CLIPS4SALE.COM and, particularly, the VIDEOS4SALE domain name and trademark.
As per the evidence presented, Respondent registered the disputed domain name prior to Complainant registering the VIDEOS4SALE mark or establishing any common-law or trademark rights over the <video4sale.com> domain name. In fact, the Complainant is a well-known adult video company, and a platform for independent content producers to sell amateur downloadable video, prominently doing business on a worldwide basis as “CLIPS4SALE”, not “VIDEOS4SALE”. See https://en.wikipedia.org/wiki/Clips4Sale (visited on July 16, 2018).
Therefore, the Panelist concludes that Respondent did not register the disputed domain name to target Complainant, or in bad faith. Complainant was unable to prove bad faith, as per Policy ¶ 4(a)(iii), since Respondent registered the domain name prior to Complainant establishing any rights over the trademark VIDEOS4SALE. Respondent registered the domain name in 2009, while Complainant registered the VIDEOS4SALE mark in 2018. See Resp. Ex. 1..
Also, the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent also argues that the terms of the <video4sale.com> domain name are common and generic/descriptive, and thereforeIf the Panel agrees with Respondent, the Panel may find 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 (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 (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).
The Panelist finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Doctrine of Laches
In consideration of the complexity of the case, the Panelist addresses the additional issues raised by the Respondent.
Respondent claims that if Complainant truly believed that the at-issue domain name was being used in conflict with its trademark rights, it would have acted long ago. Respondent points to the nine year delay in bringing legal proceedings. Therefore, the Panel may consider the doctrine of laches as additional evidence towards Respondent. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and engaged in the practice known as “reverse domain name hijacking” (“RDNH”) by initiating this dispute.
Since Complainant has satisfied Policy ¶ 4(a)(i), or any of the elements of Policy ¶ 4(a), the Panel understands that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
The Complainant and Respondent are regular users of the UDRP system and both not only have outstanding legal advisors, but also are familiar with the uniqueness and aggressiveness which involve certain domain name disputes. See Starmail Distributors Inc. v. Xedoc Holding SA aka domain admin. FA 1296166 (Forum Dec. 14, 2009) and Wiluna Holdings, LLC v. Jordan Levinson / Domain Manager FA 1784381 (Forum May 04, 2018). Simply having a weak Complaint does not constitute evidence of RDNH, and the Panelist understands that there is no strong evidence that the Complainant filed this Complaint in bad faith, which would trigger a finding of RDNH against Complainant.
Having NOT established all three elements required under the ICANN Policy, the Panelist conclude that relief shall be DENIED.
Accordingly, it is Ordered that the <video4sale.com> domain name REMAIN WITH Respondent.
Eduardo Machado, Panelist
Dated: July 16, 2018
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