Complainant is Charged Media, LLC, United States of America (“United States”), represented by Eisenberg Lehman, PLLC, United States.
Respondent is Daniel Holsinger, United States, represented by Aaron Hall, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 18, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Respondent sent informal email communications to the Center on September 25, 2019 and September 26, 2019. The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2019. The Response was filed with the Center on October 25, 2019. On October 28, 2019, Complainant requested the suspension of the proceedings, which was objected by Respondent. On the same date, the Parties submitted supplemental filings to the Center. On November 4, 2019, Complainant submitted another supplemental filing. On November 5, 2019 and November 12, 2019, the Parties filed additional supplemental filings. Further supplemental filings were filed by the Parties on November 15, 2019. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 15, 2019. 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. On November 18 and 19, 2019, Complainant submitted additional supplemental filings. Further supplemental filings were filed by the Parties on November 20, 2019, November 26, 2019, and November 27, 2019. On November 29, 2019, the Panel issued a procedural order making it clear that no further supplemental filings should be made by either party in this matter unless specifically requested by the Panel. 4. Factual Background Complainant, Charged Media, LLC, is an operator of gay themed adult websites under such names as “ChargedCash”, “FamilyDick”, “Latinleche” and “Youngperps”. Complainant was formed in or about December 2016 by two entities, Metaventures LLC and Mayhem Media LLC. At that time, Metaventures LLC was owned by Respondent Daniel Holsinger and three other individuals; Mayhem Media LLC was owned by two individuals. Upon the creation of Complainant, Respondent Daniel Holsinger obtained some interest in Complainant, assumed a management role in Complainant, and focused his time on product and content development for the adult themed websites to be operated by Complainant. In or about December 2017, a dispute arose between the individuals who had formed Complainant. On August 21, 2018, the Parties entered into a settlement agreement in which Respondent and another individual, inter alia, resigned from and relinquished their rights in Complainant and specifically undertook to “immediately transfer to [Complainant (referred to as “CM”)] all access codes, passwords, user names, and other administrative log in information to all CM systems, databases, programs and related processes and agree to take all actions necessary to accomplish this purpose.” In furtherance of this transfer, the Parties included a list of items in a schedule. The schedule made reference to a list of domain names that would be supplied by Respondent, including “a list of all domains purchased by CM to date.” No specific domain names were identified in the schedule. Respondent registered or acquired the disputed domain names at various times, as follows: The disputed domain names have been used and continue to be used in connection with the gay themed adult websites operated by Complainant. Complainant filed the Complaint in this proceeding on September 17, 2019. On or around October 2, 2019, Complainant filed a Request for Mediation with the JAMS Arbitration and Mediation Center (the JAMS Mediation). The JAMS Mediation is currently pending. 5. Parties’ Contentions A. Complainant Complainant argues that it owns common law trademark rights in the names ChargedCash, FamilyDick, Latinleche and Youngperps, which are contained in the disputed domain names that have been used with Complainant’s adult themed websites for an extended period of time. Complainant asserts that the disputed domain names are identical or confusingly similar to Complainant’s common law trademarks. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names as (i) Complainant has been the owner the of the disputed domain names at all relevant times, (ii) Respondent has never been known by the disputed domain names, (iii) Respondent agreed to relinquish control over Complainant’s intellectual property, including the disputed domain names, pursuant to the Parties’ August 21, 2018 settlement agreement, and (iii) Respondent, notwithstanding its obligations under the August 21, 2018 settlement agreement has obtained and retained control of the disputed domain names. Lastly, Complainant asserts that Respondent has acted in bad faith by maintaining control of the disputed domain names in order to disrupt Complainant’s business. B. Respondent Respondent rejects Complainant’s contentions. Respondent maintains that it acquired the disputed domain names for himself and that he registered them under his own name and his personal Google account and not a business account. Respondent maintains that he is the owner of the disputed domain names and orally licensed them to Complainant while Respondent was an owner of Complainant. In that regard, Respondent asserts that Complainant has provided no evidence that the disputed domain names were ever registered or owned by Complainant. Respondent also contends that the August 21, 2018 settlement agreement makes no mention of the disputed domains further establishing that Respondent was at all relevant times the owner of the disputed domain names. Respondent argues that Complainant has not established that it owns any rights in trademarks that are identical or confusingly similar to the disputed domain names given that (i) the disputed domain names are owned by Respondent and were orally licensed to Complainant, and, as such, any trademark rights that arose would be owned by Respondent, (ii) the disputed domain names are based on generic terms and thus Complainant can have no trademark rights in such, and (iii) even if the disputed domain names are based on merely descriptive names, Complainant has failed to establish that the names have acquired secondary meaning as trademarks owned by Complainant. Respondent maintains that it has rights to and legitimate interests in the disputed domain names as Respondent is the owner of the disputed domain names and only orally licensed them to Complainant. Respondent also contends that he originally registered the disputed domain name for his own benefit to use such with websites featuring pornographic content and that the adult industry regularly references the disputed domain names in relation to Respondent’s many recorded performances and as a leading representative and spokesperson associated with the disputed domain names. Lastly, Respondent contends that he has not registered or used the disputed domain names in bad faith given that he registered the disputed domain names for their generic meaning, never attempted to sell or transfer the disputed domain names, and acquired the disputed domain names prior to Complainant using the disputed domains pursuant to the oral license granted by Respondent. Respondent requests that the Panel make a finding that Complainant has engaged in reverse domain name hijacking by bringing a Complaint in bad faith or to harass Respondent. 6. Preliminary Considerations A. Complainant’s Request to Suspend the Proceeding Complainant has requested that this proceeding be suspended on account of the pending JAMS Mediation. Paragraph 18(a) of the Rules gives the Panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is also the subject of a concurrent proceeding. In general, appointed panels have been reluctant to suspend or terminate proceedings, except where exceptional circumstances have warranted such. See section 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The reluctance to grant a suspension is grounded in the potential that a suspension could result in a matter languishing for an indeterminate amount of time without there ever being a resolution. In the view of this Panel, suspending this proceeding simply based on the filing of the JAMS Mediation by Complainant after the filing of the Complaint, does not constitute an exceptional circumstance, particularly where, as here, Complainant could have sought to withdraw its complaint without prejudice in order to pursue other options. Complainant filed its request to suspend a day before Respondent’s Response was due and almost four weeks after Complainant had initiated the JAMS Mediation. At this point, Respondent has not consented to a suspension and has expended the time and effort in filing a Response. Consequently, the Panel denies Complainant’s Request to Suspend. B. The Parties’ Supplemental Filings Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions, and, under paragraph 12 of the Rules, to request further statements or documents from either party. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club Ltd. v. John Adem,WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai,WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter. In the instant case, and after reviewing the Complaint and Response, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of the numerous supplemental filings made by the parties, which based on a limited review essentially further reargue and expound on several points already made in the Complaint and Response. The Panel therefore declines to accept the Parties’ supplemental filings, with the exception of a copy of the Parties’ August 21, 2018 settlement agreement. Complainant has specifically referred to this settlement agreement in the Complaint and listed it as an annex to the Complaint, but appears to have inadvertently left it out of its submissions. For purposes of reaching a fair decision in this matter, the Panel hereby accepts the later submitted copy of this August 21, 2018 settlement agreement. 7. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names are registered and are being used in bad faith. A. Identical or Confusingly Similar In this proceeding, the primary issue comes down to who owns the disputed domain names, as both Complainant and Respondent have made claims to own them. Complainant maintains it has common law rights in the trademarks associated with the disputed domain names which are used with active websites that prominently feature the names “ChargedCash”, “FamilyDick”, “Latinleche” and “Youngperps”. Respondent maintains that these names are generic expressions or merely descriptive phrases that Complainant has failed to establish trademarks rights in. That being said, there is evidence before the panel that there has been some use of the names “ChargedCash”, “FamilyDick”, “Latinleche” and “Youngperps” by Complainant in connection with websites offering adult entertainment content. Thus for purposes of the first element only, Complainant has demonstrated that it has used the names “ChargedCash”, “FamilyDick”, “Latinleche” and “Youngperps”, and that some trademark rights developed in these names by the time Complainant filed its Complaint on September 17, 2019. WIPO Overview 3.0 at section 1.1.3. As the disputed domain names are identical to these names (disregarding the generic Top-Level Domain “.com”), the Panel finds that Complainant has satisfied the requirements of the first element. B. Rights or Legitimate Interests Given that Complainant has not established the third element of bad faith registration and use, as discussed below, the Panel does not need to address the issue of whether Respondent has rights or a legitimate interest in the disputed domain names. C. Registered and Used in Bad Faith Under Paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used a disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name. At the time that Respondent registered the disputed domain names, Complainant does not appear to have owned any trademark rights in the names “ChargedCash”, “FamilyDick”, “Latinleche” and “Youngperps”. Indeed, Complainant has provided no evidence that it owned any prior existing trademark rights in these names. Such lack of trademark rights at that time would suggest that Respondent was not acting in bad faith when the domain names were registered. WIPO Overview 3.0 at section 3.8.1. The remaining question, though, is whether Respondent was acting in bad faith to take advantage of any nascent trademark rights Complainant might have had in the names “ChargedCash”, “FamilyDick”, “Latinleche” and “Youngperps” when Respondent registered the disputed domain names in 2016 and 2017 while Respondent had an interest in Complainant and was actively involved in the management of Complainant. WIPO Overview 3.0 at section 3.8.2. Complainant argues that the disputed domain names were registered for the benefit of Complainant and that Respondent has acted in bad faith by assuming control of the disputed domain names and refusing to transfer them to Complainant. The evidence before the Panel shows that the disputed domain names were paid for by Complainant and that Respondent registered the disputed domain names using a company corporate card issued to Respondent under his name. Thereafter, the disputed domain names were then used in connection with adult themed websites operated by Complainant with content that looks to have been developed in conjunction with Respondent. On its face, it thus appears to the Panel that Respondent registered the disputed domain names with the implicit, if not explicit, consent or ratification from Complainant for purposes of the common business interest that the parties were pursuing. Consequently, it seems more likely than not that Respondent was not acting in bad faith when he registered the disputed domain names for use with websites that Respondent and other individuals affiliated with Complainant were creating as part of their business. Notably, Complainant does not explicitly argue that Respondent registered the disputed domain names in bad faith, but maintains that Respondent acted in bad faith by moving the disputed domain names from a business account that Respondent maintained while affiliated with Complainant to a personal account maintained by Respondent. Whether it was proper after the August 21, 2018 settlement agreement for Respondent to move the disputed domain names to an account that only Respondent controlled is unclear, and does not establish that Respondent originally registered the disputed domain names in bad faith. From the evidence before the Panel, it appears that Respondent with the knowledge of Complainant maintained an account that contained the disputed domain names. Whether it was a business account or a personal account does not really matter, although it seems that the email address used for the account and payments made for the domain names in that account related to Complainant. At that time, though, Respondent owned an interest in Complainant and the disputed domain names ultimately were used in connection with the business that Respondent and the other individuals who had an interest in Complainant were developing. Respondent claims that he registered the disputed domain names for his own benefit and then orally licensed them to Complainant. Complainant rejects that claim and contends that the disputed domains have always belonged to Complainant. However, neither party has submitted any evidence that proves either contention apart from making unilateral assertions in that regard. As a UDRP proceeding is a expedite proceeding, and there is no opportunity for examination or cross-examination of witnesses, in the absence of some clear evidence establishing the veracity of either of the unilateral contentions of the Parties it is difficult for the Panel to assess the validity of either Parties’ claim. If Respondent retained ownership of the disputed domain names, then there is no basis for Complainant’s claims. But if the disputed domain names have belonged to Complainant at all relevant times, as Complainant contends, then Respondent likely acted in bad faith by failing to transfer the disputed domain names over to Complainant. The problem here, is that the evidence before the Panel is inconclusive. There is nothing that specifically provides that Complainant owned the disputed domain names at the time they were registered, and there is nothing that corroborates Respondent’s claim that Respondent registered the disputed domain names for his own benefit and orally licensed them to Complainant. The only thing that is clear is that Respondent registered the disputed domain names while he was affiliated with Complainant and that the disputed domain names were then used for websites containing gay themed adult entertainment content. The August 21, 2018 settlement agreement does not clarify the issue. While the agreement contemplates a transfer of “access codes, passwords, user names and other administrative log in information,” the agreement contains no reference to the disputed domain names and is silent as to which domain names Complainant is to exert control over. The evidence provided by Complainant regarding payments for the disputed domain names also includes a number of other domain names that are not at issue in this proceeding. This is telling, as this suggests that control of some domain names went to Complainant, but that the disputed domain names might have been treated differently. Simply put, the August 21, 2018 settlement agreement and the evidence provided by the Parties is ambiguous and does not resolve the central ownership dispute between the Parties. Resolution of that dispute is better suited for a court action or an arbitration, where discovery is possible and where the credibility of a witness can be assessed through cross-examination, and not through a UDRP proceeding assessing whether cybersquatting has occurred. In sum, based on the evidence that is before the Panel, Complainant has failed to establish that it is more likely than not that Respondent registered the disputed domain names in bad faith. From what is before the Panel it appears that Respondent registered the disputed domain names with Complainant’s consent and for the mutual business interests that the parties had in 2016 and 2017 before their dispute arose in late 2017; the subsequent movement by Respondent to a different account complicates matters and affirms the Panel’s finding that this dispute is better suited for another venue. As such, Complainant has failed to establish the third element under the Policy and the Complaint must be dismissed. D. Reverse Domain Name Hijacking Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard: If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. In this case, there is a question of ownership regarding the disputed domain names. The Parties each claim to own the disputed domain names and have provided a basis for their claim of ownership. While the Panel has concluded that Complainant did not establish bad faith registration of the disputed domain names by Respondent, there are open questions regarding Respondent’s registration of the disputed domain names in an account he controlled at the time he was associated with Complainant. Moreover, it was not unreasonable for Complainant to make a claim if in fact the disputed domains had to be transferred to Complainant pursuant to the August 2018 settlement agreement. The request for a finding of reverse domain name hijacking is therefore denied. 8. Decision For the foregoing reasons, the Complaint is denied. Georges Nahitchevansky
Sole Panelist
Date: December 6, 2019
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