The Complainant is Tiger Media, Inc. of Saskatchewan, Canada represented by Randazza Legal Group, United States of America (USA).
The Respondent is Leconte Pierre of France. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2011. On April 15, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 17, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name is registered with it;
(b) the Respondent is listed as the registrant;
(c) the address details for the Respondent were correct;
(d) English is the language of the registration agreement; and
(e) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the registration.
The Center verified that the Complaint satisfied the formal requirements of 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 April 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2011.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 16, 2011. 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
The Complainant operates an online business from relating to the purchase and placement of online advertising within the adult entertainment market.
The Website which “www.” resolves to acts as a portal promoting the Complainant’s services and through which those purchasing the Complainant’s services access their accounts and use those services. The Complainant registered the domain name on January 19, 2006 and launched its Website by April 2006.
When it first launched, the Complainant’s website featured a prominent “banner” bearing the words:
juicyads
ADVERTISING BROKER
www.JUICYADS.COM
(The first line in the banner being much larger than the others.)
By August 2006, the Complainant had adopted its present logo. This features the words “juicy ads” juxtaposed to a sliced orange and “www.”.
In both forms, the words “juicy ads” are presented in a slightly stylized script. At least in the current form of logo, the Website URL is prominently presented as a strapline.
The Complainant applied for registration of its logo form of the mark in the USA on January 3, 2011. It was published for opposition on March 29, 2011.
According to the information supplied by the Registrar, the disputed domain name was first registered on February 27, 2010. It is not clear from the Complaint if the Respondent registered the disputed domain name at that time or subsequently.
On January 4, 2011, the Complainant through its lawyers sent a cease and desist letter to the Respondent at the addresses given in the whois record. As well as the physical address, these addresses included an email address.
When the cease and desist letter was sent, the disputed domain name resolved to a webpage featuring advertising links. The home page also included a nearly exact reproduction of the Complainant’s logo, the subject of its trademark application in the USA.
The Complainant did not receive any response to its cease and desist letter. However, the website to which the disputed domain name resolved was amended to delete the Complainant’s logo. Following these developments, the Complainant initiated this Complaint. 5. Discussion and Findings
The disputed domain name is registered in the “.info” gTLD. The registry for the “.info” gTLD has adopted the Policy for the resolution of disputes about domain names registered in the “.info” gTLD which is now effective, after the expiry of the Sunrise period.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the domain name, the Complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic co-ordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant relies first on its pending trademark application in the USA. In support of this reliance, the Complainant relies on a number of previous decisions in which pending trademark applications were considered sufficient to constitute trademark rights for the purposes of the Policy: The David J. Joseph Company v. Richard F.Barry, WIPO Case No. D2000-1418; Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi,WIPO Case No. D2000-0040; La Francaise des Jeux v. L. Weslr,WIPO Case No. D2002-0305. The Complainant also points that, if no opposition is filed within 30 days from May 3, 2011, the trademark will issue to grant.
As the Complainant acknowledges, the 30 day period has not yet expired. Nor has the trademark application proceeded to grant. While there have been decisions (including those noted above) which have been prepared to treat pending applications as sufficient for the purposes of the Policy, there are many which have taken the opposite view. Indeed, one commentator has pointed out that this is the preponderant view.1 That observation accords with the Panel’s own experience. Ultimately, it is not a question of whether or not, or how likely, someone does in the end oppose the Complainant’s trademark application. It is simply the fact that the rights have not been granted.
The Complainant also relies on its common law rights in “JuicyAds” as a trademark. As noted above, the logo form, which includes as a strapline the URL “www.”, has been in use continuously since August 2006. The Complainant’s website claims that it currently services more than 13,000 websites and more than 11,000 clients. It would appear that the number of daily impressions for advertisements placed using its service has risen from 24 million daily impressions in 2008, to 166 million in 2009 and 512 million in 2010. Although figures are not given, growth in advertising sales in similar proportions is claimed.
The Complainant has also received significant coverage in industry publications and, at least in 2011, has sponsored seminars and events relevant to the adult entertainment industry, including the Phoenix Forum in April 2011 and the June 2011 YNOT Summit and the 2011 YNOT Grand Prix. The Internet archive has stored 121 records of the website which the Complainant’s domain name, resolves to. In December 2009, Xbiz announced that the Complainant had been nominated for the Traffic Service Company of the Year award that year. The Complainant was an Xbiz awards winner in 2011.
In these circumstances, the Panel finds that the Complainant has proved common law rights in at least its Juicy Ads logo.
The disputed domain name is confusingly similar to the Complainant’s logo which incorporates the words “Juicy Ads”. The “.info” gTLD component of the disputed domain name can be disregarded for the purposes of this inquiry as it is a functional element dictated by the domain name system. The disputed domain name does not, of course, include the figurative elements of the Complainant’s logo. The “Juicy Ads” verbal component of the logo, however, is the naturally identifying aspect of the logo. This is identical to the second level name component of the disputed domain name.
Accordingly, the Complainant has established this requirement under the Policy. B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.2
The plain inference from the Complaint is that the Complainant has not authorized the Respondent to register or use the disputed domain name and there is no association between them. The disputed domain name is obviously not derived from the Respondent’s own name. There is also no evidence available in the record to suggest that the Respondent was previously known by, or had used, “juicy ads” before registering the disputed domain name.
These allegations would usually be sufficient to raise a prima facie case against the Respondent having rights or legitimate interests giving rise to an obligation on the Respondent to support his entitlement.
By not filing a Response, the Respondent has not sought to rebut that inference. The Panel is aware that the disputed domain name does have some descriptive reference to the nature of the services being provided via the Respondent’s website. The verbal component of the Complainant’s trademark is at least arguably not wholly descriptive and has an allusive or suggestive character. Moreover, as the Complainant points out, any claim to good faith on the part of the Respondent can hardly be made out where he has adopted a very close, if not exact, copy of the Complainant’s logo on his website (until receipt of the cease and desist letter).
In these circumstances, the Panel finds that the Complainant has successfully established the second requirement under the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant claims that the Respondent has registered the disputed domain name three times since the disputed domain name was first registered in February 2010 with the most recent registration being on February 25, 2011, referring to the evidence in Annex W of the Complaint. Annex W is an extract from a Domain Tools search which lists 25 records for the disputed domain name between February 28, 2010 and March 14, 2011. All are colored the same background color. So it is not clear to the Panel how the claim of registration three times is arrived at. Ultimately, it is not necessary to resolve this issue.
The Complainant’s common law rights in its trademark were very well established by the time the disputed domain name was first registered in February 2010. The use of the Complainant’s logo on the Respondent’s website until shortly after dispatch of the cease and desist letter clearly betrays knowledge of the Complainant and its trademark. The position is even stronger if the date of registration is February 2011 as that is after dispatch of the cease and desist letter (which while not physically delivered was also sent by email and appears to have elicited a (belated) change in the design of the Respondent’s website).
The Respondent’s website was plainly trying to take advantage of the Complainant’s goodwill in “Juicy Ads” to derive traffic to his own advertising activities.
Further, as the Complainant points out, the Respondent has provided incomplete or inaccurate, if not false, address details. No street or post box number is provided, just the purported street name. No city, suburb or town name is provided, just the street name and the country. The provision of such false, inaccurate or incomplete details have been recognized indicators of bad faith since Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
It is noteworthy that the Respondent has not sought to dispute the Complainant’s allegations of both registration and use in bad faith.
In these circumstances, the Panel draws the inference that the disputed domain name was both registered and is being used in bad faith. 6. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: May 30, 2011
1 David Lindsay, International Domain Name Law: ICANN and the UDRP, (Hart Publishing, Oxford, 2007) at [5.14] citing e.g. F GmbH v. Mr. Chris Olic,WIPO Case No. D2005-0994 and Mk-Net-Work v. IVE Technologies,WIPO Case No. D2004-0302.
2 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.
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