WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SBO Pictures, Inc., dba WICKED PICTURES ® dba WICKED ® v. Tech-Media, Ltd.l
Case No. D2003-0969
1. The Parties
The Complainant is SBO Pictures, Inc., dba WICKED PICTURES ® dba WICKED ®, of Canoga Park, California, United States of America, represented by Sughrue Mion, PLLC of Washington DC, United States of America.
The Respondent is Tech-Media, Ltd., of Christchurch, Canterbury, New Zealand. The Respondent is not represented.
2. The Domain Names and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2003. On December 9, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name in issue. On February 13, 2004, a search of eNom�s WhoIs database revealed that Tech-Media Ltd., was the listed domain name registrant.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 13, 2004. This was described by the Complainant as the "Revised Complaint." The Panel has relied upon this document rather than the original Complaint.
The Center has verified that the Revised Complaint ("the Complaint") satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on March 9, 2004. There has been no communication since from the Respondent.
The Center appointed Mr Clive Duncan Thorne as the Sole Panelist in this matter on March 16, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
There have been no further procedural stages and no orders issued by the Panel. The language of the proceedings is English.
4. Factual Background
The Complainant, SBO Pictures, Inc., is a Californian corporation doing business as (dba) WICKED PICTURES ® and also as WICKED ®.
The Complainant is an adult entertainment company and is engaged in the business of marketing adult entertainment goods and services throughout the world.
The Complainant began its business offering pre-recorded video cassettes, DVDs and CD-Roms. It has also since introduced a Wicked Pictures magazine that features articles and pictorials about the Complainant and the Complainant�s star actors. The Complainant commenced use of the designations of WICKED PICTURES and WICKED in 1993. Although the Complainant is incorporated under the name SBO Pictures Inc., it does business under the name WICKED PICTURES so that according to the Complainant the brand name WICKED PICTURES has become associated with SBO Pictures Inc. The Complainant is also commonly referred to as WICKED in the industry.
The Complainant continues to expand its business and since as early as March 1, 1996, has offered on-line services featuring the sale of adult entertainment and novelty items, photographs and movies. In addition to these items the Complainant currently offers e-clothing items and newsletters. The Complainant submits that it is recognised as one of the top five adult entertainment movie studios in the world. At Appendix A to the Complainant are exhibited evidence of use of WICKED and WICKED PICTURES in respect of what appears to be the cover of a DVD or video entitled "Jenna Jameson�s Anthology Volume 1," Wicked Pictures. The text also describes it as "the first compilation that Wicked has ever released" and it is no coincidence that it features Jenna Jameson, arguably the biggest female name in "adult" entertainment.
At Exhibit B to the Complaint, is a list of movie titles in which the Complainant uses the mark WICKED.
The Complainant is also the owner of a large number of trademark and service mark registrations and applications for trademark registrations worldwide in respect of the mark WICKED alone or in combination with other words, designs or logos. At Exhibit C, are copies of registrations and applications for registrations in the US Patent and Trademark office together with a summary of these. Thus, for example, the Complainant has a registration dated August 22, 2000, in respect of the mark WICKED for "audio, visual and motion picture goods" (number 75620784). It also has a registration for the mark WICKED registered on July 31, 2001, for "personal vibrators and sexual aids etc" (registration number 2473950). In total, it is currently the owner of 15 US trademark and service mark registrations.
Additionally, at Exhibit D to the Complaint, the Complainant sets out a schedule of trademark and service mark applications and registrations for the term WICKED either alone and/or a combination with another word, design or logo in Hong Kong, SAR of China, Argentina, the Czech Republic, the European Union, Mexico, Australia, Brazil, Canada, Russian Federation and Japan. The Complainant markets its good and services throughout the world and apparently always uses its trade name and trademark WICKED PICTURES in such promotion.
The Complainant also owns a large number of domain names incorporating the word WICKED such as and . The Whois information for these two domain names are exhibited as Exhibit E to the Complaint.
The Complainant asserts that it has expended millions of dollars in advertising, customer services and research in an effort to establish itself as a leader in the adult entertainment industry. It apparently spends thousands of dollars annually advertising the goods and services in national print media and at trade shows and exhibitions. It asserts that as a result of its advertising expenditure and promotional activities the marks using the word WICKED have become one of the most recognised brands in the adult entertainment industry worldwide. As evidence of the recognition that the Complainant has received it has won a number of awards for its movies, details of which are set out at Exhibit F to the Complaint.
The Complainant also draws attention to the fact that adult entertainment companies operate in a manner similar to that of the old Hollywood movie studios in that they often hire movie stars on a contract basis. These actors appear exclusively in the films produced by the particular movie house. In the case of the Complainant, this means that its female actors are known as "Wicked Girls." The most famous of these Wicked Girls is apparently Jenna Jameson. She became a "Wicked Girl" in 1995 and remained so for approximately six years until 2000. Wicked Pictures has produced 25 movies featuring Jenna Jameson, most of which had WICKED in the title. Evidence is set out at Exhibit G and also at Exhibit H to the Complaint which refers to "Jenna Jameson�s Wicked Anthology 1: 1995." There is also details of "Wicked Weapon" in which she apparently appeared in 1997 and "The Wicked One" in 1995.
The Complainant adduces evidence that since 1995 it has attended the Cannes Film Festival. At Exhibit K to the Complaint is a press release detailing its attendance at the Cannes Film Festival for 2001 by reference to WICKED PICTURES and the suggestion that WICKED PICTURES dominates the Cannes Film Festival.
In summary, the Complainant submits that by virtue of extensive use, advertising, promotion and sale of its goods and services throughout the United States and the World it�s WICKED marks have become well known and famous in the United States and abroad, in the adult entertainment industry as an indicia of origin for the Complainant�s goods and services.
In the absence of any submissions by the Respondent and any evidence submitted on behalf of the Respondent, the Panel accepts the evidence set out above as to the Complainant�s trademark rights and accepts its submission to the effect that the WICKED marks have become well known and famous in the adult entertainment industry as an indicia of origin for the Complainant�s goods and services throughout the world.
According to the Complainant, the current dispute arose as a result of evidence of confusion arising between the Respondent�s use of the domain name and the trading name of the Complainant. In particular, the Complainant relies upon the evidence set out at Exhibits Q and R to the Complaint. At Exhibit Q, a Mr. Orenstein of Apic Worldwide forwarded an email to the Complainant, implying by the use of questionmarks, his confusion in respect of the domain name . The Complainant noted that Apic Worldwide was a copyright infringement agent representing many adult entertainment producers and copyright owners. The content of the email which he forwarded was headed i.e. the domain name in dispute and refers to "Wicked Movies � Free daily updated movies." The content is generally pornographic in character. By way of example, it refers to a "spunk mouth free amateur movie preview" which "may go down as an amateur porn classic."
In February 2002, the Complainant apparently received an email from a consumer who emailed the Complainant�s employee to ask if belonged to the Complainant. The consumer, called Lara, wrote in the email:
"Dear Wicked Pictures
Is this your site?
Regards
Lara."
She forwarded part of a website entitled "www." which was described as containing "sexually explicit site descriptions and content that some may find offensive."
On November 1, 2003, a representative from apparently contacted Wicked Pictures regarding "www.." This is referred to at Exhibit S to the Complaint and would appear to show confusion by the representative from the between and WICKED PICTURES.
The Complainant had previously contacted the Respondent as well as the prior registrant to advise that the Complainant believed the use of the domain name infringed the Complainant�s rights. The first instance of this is set out in Exhibit T to the Complaint which is a copy of an email dated October 13, 1999, from a legal assistant of the Complainant to the owner of the domain name at that time. The Complainant requested that he assign the domain name to the Complainant and that the Complainant will reimburse him for his registration expenses. There was no response to this email and the domain name was later transferred to the Respondent.
On June 27, 2002, the Complainant, through its attorney, contacted the Respondent in an email which is exhibited at Exhibit U to the Complaint. In it, the Complainant stated that;
"As a result of my client�s long prior use of promotional adult entertainment products and services under the Wicked® designation, SBO Pictures Wicked® has become synonymous with goods and services emanating from and has become an extremely valuable asset of SBO Pictures."
The Complainant suggests an amicable resolution including a transfer of the domain name to the Complainant. There was no response to this email. A chaser was sent on July 16, 2002, (Exhibit V to the Complaint) but again there was apparently no response.
On October 9, 2002, a further email was sent by the Complainant referring to the Complainant�s rights, requesting immediate agreement to assign the domain name and for the Respondent to cease and desist the use of the domain name . The Complainant reserved the right to file a UDRP proceeding. Again, no response was received.
A further email was sent to the main server hosting "www." who apparently claimed that the email was forwarded to the Respondent. The Respondent did in fact reply by email on September 11, 2003, (Exhibit Y) in which the Respondent stated:
"if u want my domain name you guys can make an offer on it, i mean come on its been 3 years your not getting it, I will die before you get it man!"
The response was signed by "mike."
5. Parties� Contentions
A. Complainant
The Complainant submits:
(i) that the Respondent�s domain name, , is confusingly similar to the Complainant�s marks WICKED.
(ii) that the Respondent has no rights or legitimate interests in the domain name as a result of the Complainant�s continuous and exclusive use of WICKED as a trademark in the United States and elsewhere.
(iii) the Respondent is merely attempting to trade on the Complainant�s notoriety in the adult entertainment industry.
(iv) the Respondent registered the domain name, , in bad faith:
(a) at the time of the Respondent�s registration, it had actual notice of the Complainant�s ownership of the WICKED marks. The Complainant is well known in the adult entertainment industry and the Respondent must have had notice of the Complainant�s use of the marks;
(b) the Respondent holds other domain names as set out in Exhibit N to the Complaint. There is no reason why the Respondent chose the confusingly similar domain name, , except to trade on the success of the Complainant;
(c) the Respondent is in competition with the Complainant and advertises itself as a low cost alternative to other adult entertainment so that it is using the domain name for commercial gain;
(d) the Respondent has selected the domain name, , in a "blatant attempt to trade off the Complainant�s success." The Complainant contends that the Respondent�s adult entertainment movies are of a lesser quality than those of the Complainant and that any confusion results in tarnishing the Complainant�s hard earned reputation;
(e) there has been evidence of actual confusion as referred to above.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and findings
In order to succeed in its Complaint, the Complainant has the burden of proof in showing that each element within the Policy is present:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name is registered and is being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these in turn.
A. Identical or Confusingly Similar
The Panel has already accepted the Complainant�s evidence that the Complainant has trademark rights in the mark WICKED and also has rights in the mark WICKED PICTURES. The Complainant contends that the domain name is confusingly similar to WICKED and WICKED PICTURES. The Respondent has merely added a descriptive term i.e. the word "movies" to the well known mark WICKED. The Panel accepts that this is so and particularly when the word chosen is synonymous in the English language to the word "pictures."
The Panel finds for the Complainant in respect of this element.
B. Rights or Legitimate Interests
The Respondent has, of course, adduced no evidence of right or legitimate interest in the domain name . The Complainant points out that the Respondent is not known by the name "Wicked Movies" which is, of course, correct. It asserts that the Respondent is merely attempting to trade on the Complainant�s notoriety of the adult entertainment industry and is not offering bona fide services. In the absence of such evidence of legitimate interest on the part of the Respondent and the fact that the Complainant is making use of the domain name in respect of similar services i.e. generally within the adult entertainment sphere to those of the Complainant the Panel finds for the Complainant in respect of this element.
C. Registered and Used in Bad Faith
The Panel has received Complainant�s submissions. It accepts that on the evidence the Complainant is well known in the adult entertainment industry and has been since at least 1993. It therefore seems to the Panel highly unlikely that the Respondent in using the domain name would have been unaware of the activities of the Complainant. The Complainant was using WICKED widely in the adult entertainment industry and as the evidence shows, was known both as WICKED and as WICKED PICTURES. The Respondent must also be deemed to have had notice of the Complainant�s registered rights.
The Complainant relies on the submission that there is no reason why the Respondent chose the domain name except to trade on the Complainant�s success. The Respondent has pointed out posted advertisements on its website for related goods. At Exhibit O to the Complaint are printouts from and . The Panel accepts that this is evidence adduced by the Complainant that the domain name is being used for commercial gain.
The Respondent not only uses the domain name in its activities, but it also uses the domain name as a mark within its site as is shown by Exhibit P and Exhibit O to the Complaint. The Complainant submits that the domain name was chosen in a vain attempt to trade off the Complainant�s success. The Panel accepts this submission given the evidence of confusion. It is undoubtedly true that consumers have been and no doubt will continue to be confused by the use of the domain name as trading on the Complainant�s marks WICKED and WICKED PICTURES.
The Panel takes into account particularly the �Complainant�s submission that the Respondent�s adult entertainment movies are of lesser quality than those of the Complainant. The Complainant does not wish to be associated with the lesser quality works and points out that any confusion that arises "tarnishes" the Complainant�s hard earned reputation. The Panel accepts this submission and takes into account particularly the extract from the Respondents website exhibited at Exhibit Q to the Complaint. In the Panel�s view this extract is clearly pornographic and indeed is apparently accepted as such by the Respondent, as is shown by the reference to the amateur movie as "an amateur porn classic" and the heading at the top of the print out which states "free xxx movies daily updated porn movies." It therefore seems to the Panel that there is a considerable risk of damage to the Complainant and its products by the Respondent using the domain name for a web-site displaying material that could be inferior to Complainant�s products.
The Panel also takes into account in considering bad faith the response of the Respondent of September 3, 2002, which is referred to above. This appears to be a demand for payment over and above the actual costs of transfer which the Complainant in its emails to the Respondent was prepared to offer.
It follows, having taken into account the evidence in support of the allegation of registration and use of the domain name in bad faith by the Respondent, that the Panel finds for the Complainant in respect of this element.
7. Decision
For all the foregoing reasons and in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant as is requested in the Complaint.
Clive Duncan Thorne
Sole Panelist
Dated: March 30, 2004
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