WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Norbert A. Aleman v. C / Vertical Axis, Inc Case No. D2008-1252 1. The Parties
The Complainant is Norbert A. Aleman, Las Vegas, United States of America, represented by T.C. Johnston, United States of America.
The Respondent is / Vertical Axis, Inc, Christ Church, of Barbados, represented by ESQ Law Firm, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Nameview Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 15, 2008, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On August 21, 2008, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on August 26, 2008. The Center verified that the Amended 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 Amended Complaint, and the proceedings commenced August 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2008. The Response was filed with the Center September 17, 2008.
The Center appointed David J.A. Cairns, Richard W. Page and David E. Sorkin as Panelists in this matter on October 16, 2008. The Panel finds that it was properly constituted. Each member of 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
The Complainant is the owner of United States Patent and Trademark Office (“USPTO”) registration Nº 2508564 for the word mark CRAZY GIRLS, registered on November 20, 2001, for services of a live stage show, and based on a first use in commerce of August 1986. The Complainant has used the CRAZY GIRLS trademark since August 1986 to brand a stage show and review running in Las Vegas.
The Respondent first registered the disputed domain name on August 8, 2001.
The disputed domain name leads to a generic landing page containing automatically generated links. These links predominately relate to dating, but there are also links to other topics such as entertainment, education or jobs. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to the Complainant's trademark CRAZY GIRLS.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) there is no evidence of the Respondent's use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (ii) there is no evidence that the Respondent has been commonly known by the disputed domain name; and (iii) there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. The Complainant further alleges that it appears that the Respondent is intentionally using the disputed domain name with intent of commercial gain through misleadingly diverting consumers or through tarnishing the service mark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent purchased and is using the disputed domain name for the purpose of running advertising and profiting from it; (ii) the registration information of the disputed domain name was hidden; and (iii) the Respondent did not answer to the Complainant's request ‘to obtain the domain, and lack of response in indicative of bad-faith in a big way'. B. Respondent
The Respondent contends that there is no basis for transferring the disputed domain name to the Complainant as he has failed to meet its burden of proof under the Policy.
The Respondent contends that the Complainant has no enforceable rights to a trademark identical or confusingly similar to the disputed domain name.
The Respondent contends that it has a legitimate interest in the disputed domain name because: (i) the registration of descriptive domain names such as the disputed domain name ipso facto establishes the Respondent's legitimate interest provided the domain name was not registered with a trademark in mind; (ii) the Respondent had no knowledge of the Complainant, its trademark or business when it registered the disputed domain name and, therefore, it did not register it to profit from it; (iii) the descriptive nature of ‘crazy girls' is underscored by substantial third party use; (iv) the Respondent has registered dozens of other descriptive domain names incorporating the word ‘crazy'; and (v) the Respondent uses the web site to provide per-per-click advertising links unrelated to the Las Vegas girls show which the Complainant operates.
The Respondent contends that there is no evidence that it registered the disputed domain name in bad faith because: (i) the Respondent's reason for registration of the disputed domain name was because it incorporated descriptive terms and became available for anyone to register when its previous registration expired; (ii) the Respondent had no knowledge of the Complainant, its trademark or business when it registered the disputed domain name; (iii) the term ‘crazy girls' is descriptive and subject to wide third-party use, which negates the likelihood that the Respondent was aware of the Complainant's trademark; (iv) there is no evidence that the use of the privacy Whois service constitutes bad faith; (v) the Respondent's failure to respond to a cease and desist letter is no evidence of bad faith; (vi) the Complainant has waited over seven years from the date of registration of the disputed domain name to initiate this Complaint; and (vii) the Respondent's use of the disputed domain name to display pay-per-click advertisements constitutes a use in connection with a bona fide offering of goods and services.
The Respondent submitted a declaration by its manager as evidence in support of its assertions. 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns the USPTO registration for the word mark CRAZY GIRLS referred to above.
In determining whether a disputed domain name is identical or confusingly similar to the Complainant's trademark the relevant comparison involves the second-level portion of the domain name only (here, “crazygirls”). Clearly a trademark does not usually include a URL prefix (here, “www”), or a top-level domain name suffix (here, “.com”) that are functional elements of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and it is well-established that they should not be considered in making this determination (see Sidestep, Inc. v. Anna Valdieri/Marco Ferro, WIPO Case No. D2007-0212; Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods,WIPO Case No. D2006-1431). Further, the elimination of the spaces between the words ‘crazy' and ‘girls' is of no significance in determining confusing similarity (see Red Bull GmbH v. Emory Virgil, WIPO Case No. D2005-0381).
On this basis, the Panel finds that the disputed domain name is identical to the Complainant's CRAZY GIRLS trademark. Accordingly, the first element required by the Policy is satisfied. B. Rights or Legitimate Interests
While the overall burden of proof that the Respondent lacks rights or legitimate interests in the disputed domain name rests with the Complainant, panels have recognized that this can involve proving a negative. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
The Panel notes in relation to rights or legitimate interests of the Respondent in the disputed domain name that there is no evidence of any of the following circumstances: (i) that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding to the disputed domain name; (ii) that the Respondent is authorized or licensed by the Complainant to use the CRAZY GIRLS trademark or to register and use the disputed domain name; (iii) that the Respondent has been commonly known by the disputed domain name.
‘Crazy girls' is a compound of two common words, and the Respondent has demonstrated that the use of these two words in combination is widespread. However, a combination of two common words does not automatically result in a descriptive expression, and the Panel does not accept the Respondent's submissions based on the alleged descriptiveness of this compound. The expression ‘crazy girls' is capable of a number of distinct meanings, including, as the Respondent notes, ‘intensely enthusiastic or passionately excited females', but also the quite different meaning of ‘mentally deranged or demented females'.
The disputed domain name is identical to the Complainant's trademark. The Respondent also uses the term ‘crazy girls', in its website with a dating emphasis, in a very similar sense to its trademarked use in respect of a live stage show i.e. to suggest girls with a dynamic and appealing quality. The use of the exact trademark in the same sense, or in other words the lack of independence of the trademark and domain name usages, mitigates against any legitimate interest on the part of the Respondent.
The Respondent also argues that the pay-per-click (‘PPC') advertising links appearing on the web site constitute a bona fide offering of goods and services as long as there is no intention to profit from another's trademark. This argument fails because of the Respondent's use of the disputed domain name in a trademark sense. “It is by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii).” See Ustream.TV, Inc. v. Vertical Axis, Inc, WIPOCase No. D2008-0598.
For these reasons the Panel finds that the Complainant has demonstrated that the Respondent prima facie has no rights or legitimate interests in the disputed domain name, and that the Respondent has failed to establish that such rights or legitimate interests exist. Accordingly, the second element of the Policy is satisfied. C. Registered and Used in Bad Faith
The Complainant alleges that the R espondent's use of a privacy shield to conceal the registration information of the disputed domain name, the use of the disputed domain name to host PPC advertising, and the Respondent's failure to answer to the Complainant's demand letter are indicative of bad faith. The Respondent denies that these facts demonstrate registration and use in bad faith.
The facts relied on by the Complainant do not by themselves establish registration and use in bad faith. There may be legitimate reasons for using a privacy shield although, as stated by the Panel in Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598 “a proper balance between privacy, on the one hand, and the need for accountability and cybersquatting prevention, on the other hand, must be struck. Thus, while the Respondent's use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences in appropriate cases.” Whether the use of the disputed domain name for PPC advertising is indicative of bad faith depends on the circumstances, and particularly the Respondent's knowledge of the Complainant's trademark, and the nature of the automated links. Similarly, the failure to reply to a ‘cease and desist' letter may in some circumstances be relevant to the assessment of whether a domain name was registered and is being used in bad faith, but is not sufficient in itself to support a finding of bad faith (Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc,WIPO Case No. D2007-0795).
The Respondent first registered the disputed domain name on August 8, 2001, which was before the registration of the Complainant's CRAZY GIRLS trademark on November 20, 2001. The Respondent has submitted a declaration by its manager, stating that it had no knowledge of the Complainant, its website, its business name or its trademark when the domain name was registered and that there was no intention to confuse customers seeking to find the Complainant's website. The declaration states that the Respondent purchased the disputed domain name after it had been abandoned, and has registered a number of domain name incorporating the word ‘crazy'. Apart from the identity of the disputed domain name with the CRAZY GIRLS trademark, the Complainant has not adduced any evidence that contradicts or casts doubt on the Respondent's account of its registration of the disputed domain name or its denial of knowledge of the Complainant's trademark.
In particular there is no evidence of any actual or constructive notice at the time of registration of the disputed domain name, which occurred before the registration of the Complainant's trademark. Further, the Complainant has not identified any source of actual confusion between the Respondent's use of the disputed domain name and the Complainant's trademark, such as links within the Respondent's website to the Complainant's show, or shows of its competitors.
The Complainant states that it has continuously used the CRAZY GIRLS trademark since August 1986 to brand a stage show and review running in Las Vegas, and has owned the trademark registration since 2001. It has not provided any evidence of the extent of the goodwill or reputation of its trademark beyond Las Vegas, such as its own Internet use of its trademark, that might assist the Panel in inferring that the Respondent knew of or intended to profit from the CRAZY GIRLS trademark. The Complainant does not explain when it first learnt of the Respondent's registration of the disputed domain name, or explain its inaction in defending its trademark during the period of nearly seven years since the Respondent's registration.
The Complainant's evidence is not sufficient in the present proceedings to establish any of the grounds of bad faith set out in paragraph 4(b) of the Policy, or to establish bad faith on other grounds.
For these reasons, the Panel finds that the Complainant has failed to prove that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
David J.A. Cairns
Presiding Panelist
Richard W. Page
Panelist
David E. Sorkin
Panelist
Dated: October 29, 2008
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