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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sunlane Media, d/b/a Literotica Free Adult Community v. Lucien de Cassan
Case No. D2002-0093
1. The Parties
The Complainant is Sunlane Media, which does business as Literotica Free Adult Community, with a postal address at PO Box 231789, Encinitas, California 92024, USA.
The Respondent is Lucien de Cassan of 36 Place des Sophoras, Lunel Viel, France 3400, France.
2. The Domain Names and Registrar
The domain names in dispute are:
<literotick.com> is registered with DomainPeople Inc of Suite 1440 Harbour Center, 555 West Hastings Street, Vancouver, BC, Canada V6B 4N6. <literoticka.net>, <literotica-usa.com>, <literoticus.com>, <iterotickus.com>, <literoticum.com> and <literotica-us.com> are registered with Gandi of 38 Rue Notre-Dame de Nazareth, F-75003, Paris, France.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also adopted by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2002 (by email), and January 31, 2002 (hardcopy). Following verification of the registration of the domain name and other details with the respective Registrars (Domain People and Gandi) on February 6, 2002, the Center completed its compliance checklist and then notified the Respondent of the Complaint and the commencement of administrative proceedings, together with a copy of the Complaint, on February 7, 2002. This was done in accordance with paragraph 2(a) of the Rules by email, facsimile communication and post/courier, addressed to the domain name registrant, administrative, technical and billing contact, and hard copy was also forwarded by post/courier to the Respondent’s authorized representative. In accordance with the Rules and Supplementary Rules, the Respondent was given until February 27, 2002, in which to file a Response.
3.3 On February 19, 2002, the Notification of the Complaint sent to the Respondent’s Legal Representative was returned to the Center, with the notification "Adresse incomplete – retour a l’envoyeur".
3.4 On March 1, 2002, the Center issued a Notification of Respondent Default to the Respondent by email and post/courier, but, after this had been done, on the same day received a Response in hard copy from the Respondent. This was dated February 27, 2002. This comprised a number of attachments in the French language.
3.5 On March 4, 2002, the Center acknowledged receipt of the Response by email, advising that, as it had been received after the issuance of the Notice of Respondent Default, it would be a matter for the discretion of the appointed Administrative Panel to determine whether or not to receive and consider the Response in rendering its decision. An objection to this from the Respondent (Lucien de Cassan-Floyrac) was received by email on the same day, but this seems to have proceeded on the mistaken assumption that the date for lodging of the Response was March 27, 2002, not February 27, 2002.
3.6 On March 6, 2002, the parties were notified of the appointment of the administrative Panel to be composed of Staniforth Ricketson (as sole member) and the projected decision date of March 20, 2002.
3.7 On March 6, 2002, the Panel advised the Center (for communication to the parties) that, in the interests of fairness, it was prepared to accept and consider the Response. An objection to this and a request for the opportunity to lodge a reply was received from the Complainant’s legal representative in an email dated March 7, 2002, but was rejected by the Panel in an email dated March 8, 2002. In the same communication, the Panel stated that it reserved its right, under rule 12 of the Rules, to request further statements from the parties if this became appropriate in the course of determining the dispute. At this stage, the Panel was in receipt of an electronic version of the Response but without the attachments as these were being translated into English by the Respondent.
3.8 On March 18, 2002, the Panel was advised by the Center that the latter was forwarding English translations of certain of the attachments of the Response that had not been previously sent to the Panel. By email dated March 20, 2002, the Panel advised that it was prepared to defer its decision until March 27, 2002, in order that it could receive the translated documents from the Center. At the same time, the Panel requested certain further information from the Applicant concerning the details of the sole licence of the registered word mark LITEROTICA and this information was received by the Panel in a facsimile transmission on March 25, 2002.
3.9 In light of the above, the Panel finds that:
- The Complaint was filed in accordance with the requirements of the Rules and the WIPO Supplemental Rules.
- The Respondent was properly notified of the Complaint, in accordance with paragraph 2 of the Rules.
- Although the Respondent was in default of the deadline for lodging its Response, the Panel has exercised its discretion to waive this default and to receive this document as well as the translated attachments.
- The Panel has received a further statement concerning the licence of the registered trademark from the Complainant.
- The Panel was correctly constituted.
3.10 The Panel now proceeds to determine the dispute on the basis of the Complaint, the Response and the further statement from the Complainant received on March 25, 2002.
4. Factual Background
4.1 The Complainant provides an "on-line computer database in the field of adult entertainment featuring adult fiction in audio and printed form". It is the sole licensee of the US registered trade mark LITEROTICA (No 2401909) which is registered in the name of Mollie Lee Ehn in respect of "providing an on-line computer database in the field of adult entertainment featuring adult fiction in audio and printed form; entertainment services, namely providing an on-line computer game" (TESS search, Complaint, Exhibit 3).
4.2 The Complainant alleges that it began using this mark in relation to the provision of an "on-line database in the field of adult entertainment featuring adult fiction in audio and printed form" from November 21, 1998, and that in addition it has maintained the mark to designate a number of other services ranging from "an on-line retail store services via a global computer network featuring adult toys, novelties, lingerie, clothing, CDs, DVDs, videos, cassette tapes, books, magazines, games, condoms, and gourmet and speciality food items; has provided live and pre-recorded audio and video adult oriented messages, stories, chat, hyper-links, personal ads, articles, and pictures by way of telephone, television and/or global computer network; and has published a series of books featuring erotic stories" (some evidence of these matters is provided in Complaint, Exhibit 5).
4.3 The Complainant has also registered its primary domain name <literotica.com> (since November 21, 1998), together with a number of variations of this name and registrations in other top level domains that were effected between May 28, 1999, and November 15, 2001. These are summarized as follows in paragraph 5.4 of the Complaint, with the relevant registration details in the attached exhibits: <literotica.net> on May 28, 1999 (see EXHIBIT 7), <literotica.org> on September 6, 1999 (see EXHIBIT 8), <literotica.info> on July 31, 2001 (see EXHIBIT 9), <literotic.com> on September 25, 1999 (see EXHIBIT 10), <literotic.biz> on November 7, 2001 (see EXHIBIT 11), <literotic.net> on November 5, 2001 (see EXHIBIT 12), <literotic.org> on November 5, 2001 (see EXHIBIT 13), <literotick.org> on November 6, 2001 (see EXHIBIT 14), <literotick.net> on November 6, 2001 (see EXHIBIT 15), <iteroticka.com> on November 15, 2001 (see EXHIBIT 16). It is stated further at paragraph 5.5 of the Complaint that all the above domains point to or are linked with or redirected to the primary <literotica.com> domain.
4.4 The Complainant asserts that it has invested substantial sums of money into promoting the LITEROTICA name and trademark: Complaint, par 5.6. However, the only specific evidence on the use of the name that is provided is an extract from "Sex Tracker Universe: Page Ranks" (Exhibit 17), which appears to be a ranking of adult pages web sites according to the number of daily "visits". In this survey, "Literotica Free Sex Stories and Audio is ranked 40th, with 172,723 visits as of January 4, 2002. Without further explanation, it is difficult to assess the significance of this information (see further below).
4.5 On May 18, 2001, the Respondent registered the domain name <literotick.com> (Registrar: DomainPeople Inc) (Complaint, Exhibit 18) and has subsequently registered variants of the word LITEROTICK on November 22, 2001, with Gandi. These names are <literoticka.net>, <literotica-usa.com>, <literoticus.com>, <literotickus.com>, <literoticum.com>, and <literotica-us.com> (Complaint, Exhibit 19), and, together with the initial <literotick.com> registration, form the basis of the present Complaint.
4.6 It appears that the Complainant first objected to the use of the domain name <literotick.com> by an email to the Respondent dated November 2, 2001, (Complaint, Exhibit 20). At this stage, it does not appear that there was a working website attached to the domain name, although it resolved to "coming soon" page on the site (Complaint, paragraph 5.11).
4.7 The Respondent’s authorized representative responded to the Complainant in an email on November 7, 2001, denying that the Respondent’s domain was similar to those of the Complainant and making certain other assertions. The message concluded with the apparent suggestion that the Respondent might nonetheless be interested in selling the domain to the Complainant (Complaint, Exhibit 22).
4.8 On November 6, 2001 (presumably the earlier date for this email is because of the time differences between California and France), the Complainant communicated an offer to purchase the name for $1,000 in order to avoid litigation (Complaint, Exhibit 23). This offer was refused by the Respondent’s representative in an email dated November 18, 2001, with an apparent counter-offer to sell the domain for $1 million (Complaint, Exhibit 24).
4.9 Shortly after the initial exchange of emails between the parties, and in any event no later than November 15, 2001, a website was put up on <literotick.com>. Extracts from the website, dated November 15, 2001, are contained in Complaint, Exhibit 21. As noted above in par 4.5, on November 22, 2001, the Respondent effected a number of other registrations of LITEROTICK and variations thereon in ".com" and other top-level domains.
5. Parties’ Contentions
The Complainant seeks transfer to it of the disputed domain names <literotick.com>, <literoticka.net>, <literotica-usa.com>, <literoticus.com>, <literotickus.com>, <literoticum.com> and <literotica-us.com> (Complaint, paragraph 8.1). In support of such contention, it is necessary for a Complainant under the UDRP to address each of the elements described in paragraph 4(a) of the Policy. This has not been done explicitly by the Complainant and there is also some repetition of material throughout different sections of the Complaint. In substance, however, the Complainant’s submissions are as follows.
- With respect to the elements described in paragraph 4(a)(i), the Complainant submits that the disputed domain names are confusingly similar to the registered trademark LITEROTICA. In support of this, it makes certain allegations relating to the fame of the said mark and the likelihood of consumer confusion (Complaint, paragraphs 5.15-5.18), but provides no evidence of these matters. There is no argument directed to a comparison of the mark and the disputed domain names, apart from the assertion in par 5.19 that previous Panels have repeatedly found that the addition of a generic top level domain name is insignificant. In the absence of any specific legal submission on this or any other aspect of confusing similarity, the present Panel will resolve this question (see below) in accordance with general principles, and will treat the mater referred to in par 5.19 as a submission from the Complainant that, in reaching its decision, the Panel should ignore the ".com", ".net", ".org", etc, suffixes. The Panel also notes that the Complaint did not directly address that part of paragraph 4(a)(i) of the policy that requires the Complainant to show that it has "rights" in the trade mark on which the Complaint was based, apart from the assertion that the Complainant was the "sole licensee" of the LITEROTICA mark. This matter was addressed in the further statement provided by the Complainant, at the request of the Panel, in which the details of the sole licence are referred to.
- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the disputed domain names. It states that the Respondent is not a licensee of the Complainant’s mark and has not been authorized in any way to use the same. It asserts further that the Respondent has made no legitimate non-commercial or fair use of the domain names.
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the Respondent has registered and used the domain names in bad faith, and refers in particular to the circumstances outlined in paragraph 4(b)(iv). It asserts that, as the LITEROTICA mark is "an internationally recognized designator for adult stories and literature", the Respondent has sought to capitalize on that fame and reputation by using this mark in his domain <literotick.com> that redirect users to that site (Complaint, paragraphs 6.9. 6.10). The Complainant submits further that, even in the future, if the Respondent continued to hold these domains "passively", this would still amount to bad faith use in accordance with Panel decision in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No D2000-0003 (Complaint, paragraph 6.1). Finally, it alleges that bad faith use and registration is to be found in the offer by the Respondent to sell the disputed domain name for $1 million (Complaint, paragraphs 6.12-6.16, referring here, presumably, to paragraph 4(b)((i) of the Policy).
The Respondent addresses the various elements referred to in paragraph 4(a) of the Policy out of sequence, and for the sake of uniformity the following summary follows the sequence given in that paragraph.
- With respect to the elements described in paragraph 4(a)(i), the Respondent submits that the words LITEROTICA and LITEROTICK are not "phonetically identical" as the first has five syllables and the second four (Response, page 2). Furthermore, the Respondent submits that the words are not even "confusingly similar" and points to the different pronunciations of these words as between English and French. The Respondent also points to the dissimilarities between the webpages of the different sites (Response, Exhibit 8) and alludes to the existence of another similar domain name <literotica-erotic-sex-stories.com> which it appears has never been activated (Exhibit 9).
- With respect to the element described in paragraph 4(a)(ii), the Respondent does not assert that he has any rights or legitimate interests in six domain names that it registered on November 22, 2001 (see paragraph 4.5 above). However, with respect to <literotick.com> he claims rights based on the deposit on November 26, 2001, of the French trademark LITEROTICK (trademark deposited with colours). Among other things, protected uses under this deposit include "such goods and services as publishing of books and periodicals, access through Internet, Email, phonographic and video production, network transmission and broadcasting of sounds, images, videos, data by cable, satellite, computers, and especially internet and/or intranet" (Response, page 3). No information is given in the Response as to the effect of trademark deposit in France, although the Respondent states the mark here was "granted" to the Respondent on November 26, 2001. The Respondent also asserts that his "rights" to the domain name are set out in the charter of his French corporation "3w Editions" (S.A.R.L. de presse au capital de 320). In article 2 of this document (dated June 22, 2001), the purpose or "objet social") of the corporation is described as including "exploitation via Internet of the domain name <literotick.com>" (English translation in Exhibit 11, French original in Exhibit 4). He alleges further that his rights and legitimate interests are based on the fact that "we bought the domain in good faith, created a company, received a trade mark and invested time, money and energy in developing the product under that name" (Response, page 4).
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Respondent’s submissions are contained in two parts of his Response, first under the heading "(1) Bad Faith" and, secondly, under the heading "(3) Rights and legitimate interests". For convenience, these submissions can be summarized as follows:
-- The Respondent states that it is a "startup father and son French-language publishing company" in France. In early 2001, they decided to put some of their erotic literature (much written by the father, Lucien de Cassan) on line. With this in mind, it acquired the domain <literotick.com> in good faith on May 18, 2001, incorporated their company (3w editions) on June 29, 2001, and established a team of computer professionals to develop the web site. This work went more slowly than they had hoped for, but the "coming up soon pages" appeared on their website for "more than five months [sic] 2001" (Response, p 1). Presumably, this is an assertion that the "coming up soon" page was visible for some time before the initial communication from the Complainant on November 2, 2001, but this is not clear from the extracts of the "coming soon" webpage that are extracted in Exhibit 4.
-- The Respondent states that it had not heard of ‘Sunlane Media", the Complainant, until the communication of November 2, 2001, but there is no statement that it had no knowledge of the domain <literotica.com> prior to this time.
-- The Respondent alleges that, following the communication of November 2, 2001, the Complainant purchased the domain names <literotick.net> and <literotick.org> on November 6, 2001, and that he (the Respondent) had no knowledge of these registrations. The Respondent asserts (Response, p 2) that these purchases indicate an element of bad faith on the part of the Complainant as these registrations were identical to its own and that this made them "very angry" when they discovered what the Complainant had done.
-- The Respondent admits that he subsequently "deliberately in perfect bad faith, tit for tat" and with "gleeful malice aforethought" registered the six other domain names on November 22, 2001. He states, however, that this was a ‘childish ploy" and he had never intended to use them, and is now prepared, as a mark of good faith, to renounce all its claims to those names (Response, page 2). He also states that an equal gesture of good faith on the part of the Complainant would be to renounce its own claims to the two names registered on November 6, 2001.
-- The Respondent makes certain allegations of bullying and intimidatory tactics against him and asserts that the Complainant now owns 61 domain names containing syllables denoting "literature" and "erotic" (Exhibit 12) and is seeking to prevent the Respondent from operating legitimately in the broad filed of erotic literature. He suggests that the two identical domains registered by the Complainant on November 6, 2001, may well infringe his own trade mark and that the Complainant has begun to use these domains to redirect traffics to their actual working site, <literotica.com> (Response, page 4).
-- As to the assertion by the Complainant that the Respondent sought to sell its domain names for "one million dollars", the Respondent asserts that this was merely done as a joke by way of a sarcastic response to their "ridiculous and insulting offer that we sell them our business and the ten months of labour we put into it for one thousand dollars ($1,000) or succumb to their bullying and threats" (Response, page 4 and see also Exhibit 15).
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements. Each of these must be shown in turn.
6.1 That the Complainant has rights in a trade or service mark with which the Respondent’s domain name is identical or confusingly similar
On the face of the Complaint as filed, the Complainant had not satisfied the first part of this requirement, namely that it has "rights in a trade or service mark". The mark cited is LITEROTICA, but this is registered in the name of another party (Mollie Lee Ehn) and it is asserted that the Complainant is "sole licensee" of the mark. Ordinarily, in the preparation of a Complaint of this kind, the Panel would expect the Complainant to provide evidence of such a licence, even if the scope and effect of this may be a matter for domestic US law. On the assumption that this was an oversight by the Complainant’s legal representative, the Panel accordingly requested a further statement from the Complainant concerning the details of the licence. This statement (received by the Panel on March 20, 2002), is far from satisfactory – no copy of the sole licence, for example, is attached. However, it does disclose that Mollie Lee Ehn owns and controls the entity Sunlane Media, which is the Complainant, and has a signed statement from Ms. Ehn to this effect. This provides some evidence from which the Panel can draw the inference that the Complainant has rights in a trade mark, i.e. LITEROTICA, but it should be emphasized that would have been far from sufficient evidence had this issue been challenged by the Respondent. These were matters fully within the Complainant’s power to provide, and should, indeed, have been provided.
The other basis on which the Complainant could have asserted its rights in a trade mark was with evidence of use of the trade mark, apart from the fact of registration, and a consequential reputation in the mark such as might be protected by legal proceedings. In this regard, the Complainant provided very little evidence, apart from the extract from the Sex Tracker website (Complaint, Exhibit 17) and the evidence there of the number of daily visits to the <literotica.com> website. However, it is far from clear that the use of the domain name here was use as a trade mark, and no other evidence of such use was provided by the Complainant apart from repeated references to the fame and international reputation of the trade mark. Such assertions prove nothing, and are akin to the Complainant seeking to pull itself up by its bootstraps.
Accordingly, while the Panel is prepared to conclude that the Complainant has "rights in a trade mark", this is it is on the basis (a) of the US registration of the mark LITEROTICA, and (b) the evidence provided in the Complainant’s further statement concerning the connection between Mollie Lee Ehn and Sunlane Media. Any other suggestions that rights arise because of the wider fame and use of the trademark will be disregarded by the Panel.
The next question is whether the disputed domain names are identical or confusingly similar to the Complainant’s mark. In this regard, even if the top level suffixes ".com", etc are disregarded, it cannot be said that the domain names and the registered trade mark are identical, given that they contain the different syllables "TICK", "TICKA", "TICKA-US", "TICKUS" and "TICKUM". Are they nonetheless confusingly similar? The Respondent has pointed to matters of pronunciation and the different number of syllables, but these matters do not seem directly relevant in the context of Internet usage where the names will not usually be spoken. On a purely visual basis, the dominant and distinctive component of the registered trade mark is "LITEROT" and this comes first and is repeated in each of the disputed domain names, giving rise to overwhelming impression that the domain names are linked in some way to the registered trade mark. The Panel is therefore satisfied that each of the disputed domain names is confusingly similar to the registered trademark in which the Complainant has "rights". In this regard, the Panel refers, with approval, to the statement of principles governing the question of confusing similarity that were made by the Panel in Jordan Grand Prix Ltd v. Garry Sweeney, WIPO Case No D2000-0233.
6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the present proceeding, there is evidence that the Respondent has made preparations to use the domain name <literotick.com> in relation to a bona offering of services, and that these preparations began as early as mid-2001, some four months at least before the Complainant’s communication of November 2, 2001. No evidence to contradict this has been presented by the Complainant, and accordingly the Panel concludes that the Respondent had rights and/or legitimate interests in the domain name <literotick.com> pursuant to paragraph 4(a)(ii) of the Policy. In view of the Respondent’s admissions referred to at paragraph 5B above, the Panel concludes that the Respondent had no such rights or legitimate interests in any of the other remaining domain names that are in dispute.
6.3 That the Respondent registered and is using the Domain Name in bad faith
In view of the finding under par 6.2 above, it is unnecessary for the Panel to make any findings in relation to the registration and use of the domain name <literotick.com>, including the question of whether the offer to sell the domain names by the Respondent for $US1m was seriously intended or not. However, the question of bad faith registration and use arises in relation to the remaining domain names that are in dispute. Without going in detail into the requirements of paragraph 4(b) of the Policy with respect to bad faith and the submissions of the Complainant on this matter, it is sufficient for the Panel to refer here to the admissions of the Respondent that its registrations of these names were "deliberately in perfect bad faith, tit for tat" and were made with "gleeful malice aforethought" (Response, page 2). The mere passive holding of these names would also constitute use in bad faith under the principles enunciated by the Panel in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No D2000-0003.
The Panel finds that the Complainant has not established its case with respect to each of the elements stated in paragraph 4(a) of the Policy with respect to the domain name <literotick.com>, but that these elements are satisfied with respect to each of the remaining disputed domain names.
The Panel accordingly directs that the registration of the following domain names should be transferred to the Complainant:
This means that the Respondent will remain the registrant of the domain name <literotick.com>.
The Respondent has requested certain relief of its own, including the transfer to it of the domain names <literotick.net> and <literotick.org>. It is not possible for the Panel to make these orders in the present proceeding: any application for such relief will need to be the subject of a separate Complaint by the Respondent.
Dated: March 27, 2002