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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bret Kelly v. Web Ventures

Case No. D2003-0217

 

1. The Parties

The Complainant is Bret Kelly, 401-60 Gloucester Street, Toronto, ONT M4Y 1L7, Canada, represented by Jelinek, Thomas Law Firm of Canada.

The Respondent is Web Ventures, InternetInternet Trading Ltd., Suite 31 Don House, Gibraltar, Gibraltar 11111, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Namedomain name(s) and Registrar(s)

The disputed domain name <gayselfpic.com> (the "Domain Namedomain name") is registered with InnerWise, Inc., d/b/a itsyourdomain.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on March 19, 2003. On March 20, 2002, the Center transmitted by email to InnerWise, Inc. d/b/a itsyourdomain.com a request for registrar verification in connection with the

Domain Namedomain name. at issue. On March 25, 2003[date of registrar verification], InnerWise, Inc. d/b/a itsyourdomain.com 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Namedomain name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Namedomain name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Namedomain 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 March 26, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2003.

The Center appointed David Maher as the sole panelist in this matter on May 2, 2003. 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

Paragraph 14 (b) of the Rules provides:

"If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."

Pursuant to the provisions of Paragraph 14 (b), the Panel accepts Complainant’s characterization of the factual background contained in the Complaint, namely:

Complainant has used the trademark GAYSELFPICS in commerce since April 19, 1998, and the trademark GAYSELFPIX since December 20, 1999. The services in connection with which the trademarks are used are entertainment services, namely providing an online adult and entertainment content website catering primarily to the gay community. The trademarks on which the complaint is based, GAYSELFPICS and GAYSELFPIX, are registered respectively in the United States Patent and Trademark Office as U.S. Registration No. 2,642,331 and U.S. Registration No. 2,642,332. (Complaint, Annex D)

Complainant operates websites at <gayselfics.com> and <gayselfpix.com>. . (Complaint, Annex E) The Respondent’s website provides the same or similar services as the Complainant’s. . Both sites allow users to post and view amateur naked male photos and videos and to contact and meet other users. . (Complaint, Annex I)

The WHOIS data for this domain name indicates that Respondent registered the Domain Namedomain name on December 8, 2001.(Complaint, Annex A)

Complainant, through its counsel, sent an email message dated November 4, 2002, to Respondent requesting that it cease and desist from using the Domain Namedomain name. (Complaint, Annex J) Respondent did not respond to the message.

 

5. Parties’ Contentions

A. Complainant

Complainant contends the Domain Namedomain name is confusingly similar to Complainant’s trademarks on the grounds that the sole difference between Complainant’s trademark GAYSELFPICS and the Domain Namedomain name is the deletion of the letter "s", and the sole difference between Complainant’s trademark GAYSELFPIX and the Domain Namedomain name is the substitution of the letter "s" for the letter "x". . Complainant contends that these differences are trivial and do not affect the confusing nature of the Domain Namedomain name.

Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Namedomain name because Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainant’s trademarks.

Complainant contends that the Domain Namedomain name does not correspond to any trademarks owned by Respondent.

Complainant contends that the Domain Namedomain name was registered and is being used in bad faith because Respondent, prior, prior to registering the Domain Namedomain name, was "undoubtedly aware" that Complainant was using the domain names <gayselfpics.com> and <gayselfpix.com> and that Respondent owned the trademarks GAYSELFPICS and GAYSELFPIX . Complainant contends that Respondent had constructive knowledge of the Complainant’s marks because of their registration in the United States Patent and Trademark Office. . Complainant further contends that, since Respondent conducts business in the same industry as Complainant, it is highly likely that Respondent would have been aware of the existence of Complainant and the services he offers.

Finally, Complainant contends that the Domain Namedomain name was registered and is being used in bad faith because Respondent has intentionally attempted to attract for financial gain InternetInternet users to the Respondent’s web sitewebsite by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web sitewebsite.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant has trademark rights in GAYSELFPICS and GAYSELFPIX based on his use of the names and his trademark registrations. . The Panel finds that the Domain Namedomain name "is identical or confusingly similar to" GAYSELFPICS and GAYSELFPIX. . The Panel does not believe that the elimination of "s" or change of "cs" or "x" to "c" in the Domain Namedomain name has any bearing on the issue of confusion.

B. Rights or Legitimate Interests

There is nothing in the record in this case to show that Respondent has rights or legitimate interests in the Domain Namedomain name. . None of the circumstances enumerated in Paragraph 4 (c) of the Policy apply to Respondent. . Respondent may be making a bona fide offering of goods or services. . However, the use of the Domain Namedomain name, confusingly similar to Complainant’s trademarks, is evidence of an intent by Respondent to mislead customers into a belief that Respondent is affiliated with Complainant or authorized by Complainant to use its marks and thereby to divert customers from Complainant’s web sitewebsite. . There is no evidence that Respondent has been commonly known by the Domain Namedomain name, nor is there evidence that Respondent been making a legitimate noncommercial or fair use of the Domain Namedomain name.

The Panel finds that Respondent does not have rights or legitimate interests in respect of the Domain Namedomain name within the meaning of Paragraph 4 (a) (ii) of the Policy.

C. Registered and Used in Bad Faith

Further, the Panel finds that Respondent’s registration and use of the Domain Namedomain name is in bad faith within the meaning of Paragraph 4 (a) of the Policy. . The record shows that Respondent is using the Domain Namedomain name for a web sitewebsite. . Complainant’s allegation that Respondent had constructive notice of Complainant’s two registrations in the United States Patent and Trademark Office is not supported by the record in view of the fact that the Domain Namedomain name was registered prior to registration of Complainant’s trademarks. . With respect to the circumstances listed in Paragraph 4 (b) of the Policy as evidence of registration and use in bad faith, Respondent’s behavior falls within the purview of Paragraph 4 (b) (iv), in that Respondent, by using the domain name, has "…intentionally attempted to attract, for commercial gain, InternetInternet users to [Respondent’s] web sitewebsite …by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web sitewebsite…" The Panel finds that, on this record and in the absence of any showing of rights or legitimate interest by Respondent, Respondent’s registration and use of the Domain Namedomain name is in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Namedomain name, <gayselfpic.com> be transferred to Complainant.

 

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David Maher
Sole Panelist

Date: May 13, 2003