Kick Ass Pictures, Inc. v.
Ken Bramon
Claim Number: FA0701000881202
PARTIES
Complainant is Kick Ass Pictures, Inc. (“Complainant”), represented by Allan
B. Gelbard, of Law Offices of Allan B. Gelbard,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kickasspornstars.com> and <kickassgalleries.com>,
registered with Moniker Online Services, Inc.
PANEL
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.
Estella S. Gold as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 2, 2007; the
National Arbitration Forum received a hard copy of the Complaint on January 2, 2007.
On January 5, 2007, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <kickasspornstars.com> and <kickassgalleries.com>
domain names are registered with Moniker Online
Services, Inc. and that the Respondent is the current registrant of the
name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 January 9, 2007, Complainant submitted a First Amended Complaint to
the National Arbitration Forum. On January 10,
2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 30,
2007 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@kickasspornstars.com
and postmaster@kickassgalleries.com
by e-mail.
A timely Response was received and determined to be complete on January 29, 2007.
On January 30, 2007, a timely additional submission by Complainant was
received, in accordance with Supplemental Rule 7. On February 2, 2007, a timely
additional submission by Respondent was received, in accordance with
Supplemental Rule 7.
On February 7, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Estella S. Gold as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that it has legal rights in the names <kickasspornstars.com> and <kickassgalleries.com>
as follows:
a. Complainant, a producer and distributor
of adult oriented entertainment both through videogram product and on-line
services, is the holder of a federally registered trademark in the name Kick
Ass Pictures. Complainant first registered this mark with the U.S. Patent and
Trademark Office (“USPTO”) on September 9, 2002.
b. Complainant alleges that the domain names <kickasspornstars.com> and <kickassgalleries.com>
registered by the Respondent are confusingly identical in containing
Complainant’s registered mark cited above;
c. Complainant alleges that Respondent has
no right or legitimate interests in the domain names <kickasspornstars.com> and <kickassgalleries.com>
because: (i) prior to Complainant’s
notification to the domain names registrant, there is no evidence of the
registrant’s use of, or demonstrable preparations to use, the domain names in
connection with any bona fide offering of goods and/or services; (ii)
domain names are not for legitimate non-commercial or fair use.
d. Complainant alleges that <kickasspornstars.com> and <kickassgalleries.com>
are being used in bad faith because: (i) the domain names were registered
or acquired primarily for the purpose of selling, renting, or otherwise
transferring the domain name registrations to the owner of the trademark or
service mark, or to a competitor of that Complainant, for valuable
consideration in excess of the domain name registrant’s out-of-pocket costs;
(ii) the domain names are both presently active.
B. Respondent
Respondent alleges that Complainant’s UDRP Complaint is without merit
for the following reasons:
a. Kick Ass is a generic term, to which
Complainant does not have the exclusive right;
b. Although Complainant holds trademark
registrations for the term Kick Ass Pictures with the USPTO, there are numerous
third parties using the term Kick Ass, either singularly or in conjunction with
other terms, to identify their business, products, and services. More importantly, there are numerous
c. The domain names <kickasspornstars.com> and <kickassgalleries.com>
were registered in early 2003 and Respondent purchased them
from AJ Hall in June of 2005;
d. Respondent asserts that he uses <kickasspornstars.com> and <kickassgalleries.com>
as thumbnail gallery post (“TGP”)
websites, which provide internet users a sampling of pictures and videos
provided by other adult websites; The two TGP websites merely link to other
websites and they do not distribute adult-oriented materials or offer
subscriptions as a means to distribute adult oriented materials through on-line
services;
e. Respondent asserts that the domain
names <kickasspornstars.com> and <kickassgalleries.com> have been in operation actively since
2003 and have been generating revenues through commissions and they have never
been offered for sale;
C. Additional Submissions
Both Complainant and Respondent through their additional submissions
further clarify their positions but they do not present new facts or arguments.
FINDINGS
The Panelist finds the following facts:
1. The
domain names <kickasspornstars.com> and <kickassgalleries.com> were registered in early 2003 and Respondent purchased them from AJ Hall in June of 2005;
2. Complainant
first used its mark Kick Ass Pictures in July 2000 and filed a USPTO trademark
application on September 9, 2002;
3. Respondent
has been using <kickasspornstars.com> and <kickassgalleries.com> as TGP
websites, which merely link to other websites and they do not distribute
adult-oriented materials or offer subscriptions as a means to distribute adult
oriented materials through on-line services; the two websites have been in
operation since 2003 and have been generating revenues since that time;
4. Respondent has never offered the domain names at dispute for sale.
5. The term Kick Ass is a generic term.
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.
This Panel concludes that Respondent did not
register the <kickasspornstars.com> and <kickassgalleries.com> domain
names in bad faith for the following two reasons.
First, where the domain name is comprised of
a generic term, it is extremely difficult to conclude that there was a
deliberate attempt to confuse and therefore bad faith can be hardly found. See Vitello v. Castello, FA 159460 (Nat.
Arb. Forum July 1, 2003) (“As to both registration and use, the generic nature
of the disputed domain name itself rebuts any allegation by Complainant that
Respondent registered or used the disputed domain name in bad faith.”); see also Canned Foods, Inc. v. Ult. Search
Inc., FA 96320 (Nat. Arb. Forum February 13, 2001) (“[I]t is precisely
because generic words are incapable of distinguishing one provider from another
that trademark protection is denied them.”).
Second, where Respondent has neither action
nor intention to sell the domain name, the bad faith registration can hardly be
found. See PRIMEDIA Special Interest Publ’ns Inc. v. Treadway, D2000-0752
(WIPO August 21, 2000) (finding that the respondent did not register the domain
names in bad faith where there is no evidence that the respondent intended to
sell the domain names and actually refused several offers from third
parties). Here, Respondent has never
offered to sell the domain names and actually he has been able to generate
revenues from operating the two websites.
As above analyzed, since Complainant has
failed to satisfy the third element, this Panel will not further address the
remaining two elements. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum September 20, 2002) (finding that because
the complainant must prove all three elements under the Policy, the complainant’s
failure to prove one of the elements makes further inquiry into the remaining
element unnecessary).
DECISION
Having not established all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Estella S. Gold Panelist
Dated: February 20, 2007
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