The Complainant is Georg Streit, of Vienna, Austria, represented by Höhne, In der Maur & Partner Rechtsanwälte GmbH, Austria.
The Respondent is Tu Nguyen of Melbourne, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with 101domain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. On February 8, 2012, the Center transmitted by email to 101domain, Inc a request for registrar verification in connection with the disputed domain name. On February 8, 2012, 101domain, Inc. 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 disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 15, 2012.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2012.
While the domain name was on Client Hold, the Respondent did modify the registrant contact data in the WhoIs database on March 13, 2012. The Registrar corrected the information in the WhoIs database to its previous state on March 13, 2012.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 23, 2012. 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 has submitted evidence that it is the owner of international trademark FEMJOY (word) with Registration No. 869550 in class 9, 16, 25, 38 and 41, registered on October 6, 2005.
The disputed domain name was registered on December 6, 2011. 5. Parties’ Contentions A. Complainant
The Complainant is using the FEMJOY trademark primarily in connection with the domain name for downloadable electronic publications such as magazines and periodicals featuring photographs and images of landscapes and human bodies. Furthermore, the Complainant uses the trademark for entertainment services, namely presentation and performance of exhibitions of fine and performing arts for cultural or teaching purposes. The Complainant’s trademark FEMJOY is very well known in the field of erotic content websites.
The disputed domain name is identical with the Complainant’s registered trademark FEMJOY, creating a likelihood of confusion.
Albeit the disputed domain name does not resolve to any active website, the Respondent is, at least since February 7, 2012, offering the disputed domain name for sale. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name for commercial purposes by offering the domain name for sale. The Respondent is not commonly known by the disputed domain name.
The Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of licensees of the Complainant in excess of the respondent’s out-of-pocket costs directly related to the domain name. Furthermore, the Respondent registered the disputed domain name for the purpose of disrupting the business of the holder of the domain name which is a licensee of the Complainant. The Respondent obviously intends to offer services and content of a similar nature as provided at due to the fact that the top level domain (TLD) “.xxx” clearly refers to a particular sort of content.
The Complainant contacted the Respondent on December 21, 2011. The Complainant informed the Respondent about the FEMJOY trademark registration and offered to pay AUD 1,500 for the domain name. The Respondent did not reply. The Respondent is disrupting the Complainant’s business since it is not able to offer its content under the TLD “.xxx”, which is specifically designed for adult website content. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark FEMJOY. The disputed domain name incorporates the Complainant’s trademark FEMJOY in its entirety without any additions. The top level domain, here “.xxx” may be disregarded for purposes of this comparison under the Policy.
Having the above in mind, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registration for FEMJOY predates the Respondent’s registration of the disputed domain name . The Complainant has not licensed, approved or in any way consented to the Respondent’s use of the trademark FEMJOY in the disputed domain name.
In addition to the above, it has been argued by the Complainant that the Respondent is not making a legitimate use of the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Complainant contends that the Respondent is not commonly known by the disputed domain name .
Although given the opportunity, the Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to any of the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the record that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
The Complainant has argued that the Respondent offered the disputed domain name for sale on the Registrar’s website and has submitted screenshots from the Registrar’s website as evidence. The information on the Registrar’s website, to which the Complainant refers, states: “Error: There is already an open order for FEMJOY.XXX”. After examining the submitted material, the Panel cannot find any evidence indicating that the Respondent did offer the disputed domain name for sale on the Registrar’s website, as described by the Complainant.
As mentioned above, the Complainant’s registered trademark FEMJOY predates the registration of the identical disputed domain name . The Complainant has not licensed or in any way consented to the Respondent’s use of the trademark in the disputed domain name. It has been argued by the Complainant that the Respondent registered the disputed domain name for the purpose of disrupting the business of the Complainant and in order to prevent the Complainant from reflecting its’ trademark FEMJOY in a corresponding domain name within the sTLD (sponsored Top Level Domain) “.xxx”, primarily intended for the adult entertainment industry. Considering that the disputed domain name is registered in a TLD intended for the same type of products and services for which the trademark is registered and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered the disputed domain name.
Evidence submitted by the Complainant indicates that the disputed domain name does not resolve to any active website and that the Respondent has not made any legitimate use of the disputed domain name. As stated in the decision in Telstra Corporation Limited. v. Nuclear Marshmellows,WIPO Case No. D2000-0003, and confirmed in subsequent decisions, "being used in bad faith" is not limited only to positive action as inaction is within the concept. Furthermore, as expressed in paragraph 3.2 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), passive holding as such does not prevent a finding of bad faith. Based on the circumstances above and the evidence in this particular case, the Panel finds that the Respondent’s passive holding of the disputed domain name indicates bad faith.
In addition to the above, the Respondent’s attempt to modify the registrant information in the WhoIs database by transferring the disputed domain name to a new holder after the Commencement of the Administrative Proceeding is a further indication of bad faith.
There is no evidence in the record that refute the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith. 7. 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.
Johan Sjöbeck
Sole Panelist
Dated: April 2, 2012
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