WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
James Good o/a P v. Mark Anderson
Case No. D2004-0391
1. The Parties
The Complainant is James Good o/a P, Puslinch, Ontario, Canada (“the�Complainant”) represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Mark Anderson, Pittsburgh, Pennsylvania, United States of America (“the Respondent”).
2. The Domain Name and Registrar
The disputed domain name,
(“the Domain Name”), is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on May�27,�2004. On May�27,�2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 June�3,�2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June�23,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June�24,�2004.
The Center appointed Tony Willoughby as the sole panelist in this matter on June�30,�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.
4. Factual Background
Until the events complained of the Complainant traded under the name P. It registered the Domain Name in May�2001, and connected it to an active website in or before August�2001. Through this website the Complainant provided reviews of adult websites while also linking it to other reviews on other websites. The unrefuted evidence of the Complainant is that his website generated significant revenue through banner and linking advertisements. He claims that the revenues have steadily risen since the launch of the website in 2001. He claims to have generated approximately US$2000 a month for the first three months of 2004. Over that three month period he claims that his site averaged 2000 visitors a day.
On April�2,�2003, the Complainant renewed the Domain Name for an additional five year period expiring on May�29,�2008.
In late March�2004, the Complainant wished to update his website but when he attempted to access his domain name account, he was blocked access. The Complainant reviewed the registrant information for the Domain Name and found that the Domain Name was registered in the name of the Respondent. He found that the Respondent had apparently taken over the Domain Name on March�31,�2004, and had on the same date ‘migrated’ it to a new registrar, the Registrar. ’A changed post and e-mail address was given.
On April�6,�2004, the Complainant’s representatives wrote to the Respondent requesting transfer of the Domain Name back to the Complainant. The demand letter was subsequently returned as undeliverable on the basis that the address did not exist.
On or around April�20,�2004, the Complainant visited the Registrar’s Whois database for the Domain Name and noted that while the registrant and administrative email address remained the same, the address of record was now in New York. The Domain Name remained pointed to a website that was substantially identical to the Complainant’s website.
Later that same day the Complainant re-visited the Whois database and found that the registrant was now noted as Domains By Proxy, Inc. which is a service used to assist registrants in concealing their identity.
The Complainant contacted Domains By Proxy and explained the circumstances under which he had lost the Domain Name registration. Domains By Proxy contacted the registrant requesting that he respond to the Complainant’s allegations. The registrant did not respond and on May�26,�2004, Domains By Proxy revealed the identity of the registrant. The registrant proved to be the Respondent and the address on record was once again an address in Pittsburgh, albeit a slightly different address, namely with a different street number.
Further attempts were made to contact the Respondent but without success.
5. Parties’ Contentions
A. Complainant
The Complainant claims to have common law rights in the trade or service marks PORNREPORTS.COM and PORN REPORTS. The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s marks.
The Complainant refers to the circumstances under which the Respondent acquired the Domain Name and contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent must have in some way unauthorisedly accessed the Complainant’s registrar’s Whois database and changed the ownership and contact details for the Domain Name. The Complainant contends that this constitutes bad faith acquisition of the Domain Name registration and contends that the Respondent’s use of it, namely a continuing use of the Complainant’s original website (subject to deletion of the Complainant’s name) constitutes an abusive use of the Domain Name.
The Complainant contends that he has been unfairly deprived of the ability to derive income by reference to the Domain Name and contends further that Internet users will have been deceived into believing that they are continuing to have the benefit of the Complainant’s services when in fact they are now the Respondent’s services.
The Complainant contends that the Domain Name has been registered in bad faith and is being used in bad faith and seeks transfer of the Domain Name back to the Complainant.
The Complainant also prays in aid the fact that for a time the Respondent’s address details were inaccurate.
B. Respondent
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that
(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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name is clearly identical or confusingly similar to the names, PORNREPORTS.COM and PORN REPORTS, names in which the Complainant claims trademark or service mark rights.
Two questions need to be answered; is a name such as PORN REPORTS capable of being the subject of trademark or service mark rights? If the answer is in the affirmative, does the Complainant own any such rights in the name?
The only reasons why the Panel might have concluded that PORN REPORTS is not capable of being the subject of trademark or service mark rights are:-
(i) if it was such an offensive name that it would be repugnant to the Panel to afford it any form of protection; or
(ii) if it is so inherently descriptive a name as to be incapable of acquiring such rights.
The Panel does not disqualify the name from protection on either ground. As to the first, the Panel is prepared to accept that the Complainant, while in possession of the Domain Name, provided a service under and by reference to the Domain Name for which there is a legitimate market. As to the second, while the Panel suspects that the ambit of any protection will be very narrow, there is no reason in principle why a name such as PORN REPORTS cannot by use acquire common law rights.
Does the Complainant in fact own any such rights in the name? The Panel could find no substantial evidence in the Complaint of any use of the names PORN REPORTS or PORNREPORTS as such. The predominant use that the Complainant has made of the name has been as part of the name ‘PORNREPORTS.COM’, which appeared prominently at the head of many of the pages on the Complainant’s website.
The evidence in support of the Complainant having acquired common law rights in the name PORNREPORTS.COM comprises:-
(i) the results of a Google search identifying a variety of adult sites which linked to the Complainant’s site;
(ii) printouts from two adult sites which feature the Complainant’s website as a review site;
(iii) the assertions in the Complaint that the Complainant:-
(a) has used the Domain Name by way of trade from at least August�2001, until March�2004, when it was taken away from him;
(b) derived income from his use of the Domain Name rising to US$2000 per month over the first three months of this year.
The evidence is sparse, but on balance the Panel is of the view that the Complainant has done just enough to establish that over the period from August�2001 to March�2004, he acquired common law rights in respect of the Domain Name. The Exhibits to the Complaint certainly appear to demonstrate a genuine commercial use of the Domain Name which has derived for the Complainant a small scale but nonetheless genuine commercial reputation and goodwill under and by reference to the Domain Name.
The Panel finds that the Domain Name is identical to PORNREPORTS.COM a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
On the evidence of the Complainant which is not contradicted by the Respondent, the Respondent acquired the Domain Name by underhand means, in some way accessing the Complainant’s registrar’s database and changing the ownership details or by contacting the Complainant’s registrar and inducing that registrar to make the relevant changes.
Moreover, it is clear that at the time of acquisition of the Domain Name the Respondent was not known by the name PORNREPORTS.COM and has not been licensed by the Complainant to use the name or indeed to reproduce/use the Complainant’s website format.
If the Complainant’s account is correct, the Respondent’s cannot form the basis for any rights or legitimate interests in respect of the Domain Name.
The exhibits to the Complaint bear out the various changes to the ownership details for the Domain Name which are set out above under the heading of “Factual Background”.
The Panel has considered how the Respondent might reasonably be said to have rights or legitimate interests in respect of the Domain Name. It is perhaps possible that the Complainant has made the whole story up and in fact transferred the Domain Name to the Respondent by agreement. However, that is an unlikely scenario. It is difficult to see why the Complainant should want to do it. It runs counter to everything that is in the Complaint and it is wholly inconsistent with the behaviour of the Complainant, which has been the sort of behaviour one would expect of a Complainant who has been unfairly deprived of his domain name. Moreover, one would have expected the Respondent to respond.
The Respondent has had the opportunity to refute the allegations but has failed to take up that opportunity. In other words there is a case to answer, but the Respondent has failed to provide an answer. In the circumstances the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of four examples of what constitutes registration and use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The first three examples involve acquisition or registration of a domain name with a view to in some way causing damage to the Complainant or his business. The fourth example involves use of a domain name for commercial gain with the intention of attracting Internet users to the respondent’s website by confusing Internet users.
Precisely how the Respondent obtained the Domain Name is not known but in the absence of an explanation from the Respondent, the Panel finds that the Complainant’s allegations have been made out.
On March�31,�2004, the Respondent acquired the Domain Name without permission, knowing that (a) it was a domain name of the Complainant (b) it was in use by the Complainant to connect to a commercial website (c) it ought to have remained with the Complainant and (d) the means of acquisition seems to have been reprehensible. He is now using the Domain Name for commercial gain in a manner calculated to lead Internet users to believe that the Complainant is still behind the site. He is depriving the Complainant of revenue which is rightly that of the Complainant.
In so doing the Respondent has registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: July�5,�2004
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