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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alpine Entertainment Group, Inc. v. Walter Alvarez

Case No. D2006-1392

 

1. The Parties

The Complainant is Alpine Entertainment Group Inc., Denver Colorado, United States of America, represented by Weston, Garrou, DeWitt & Walters, United States of America.

The Respondent is Walter Alvarez, Malmo, Sweden, represented by Renova, Ltd., Spain.

 

2. The Domain Name and Registrar

The disputed domain name <realspanking.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2006. On November 1, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 3, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing contact details for the administrative, billing and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient the Complainant filed an amendment to the Complaint on November 6, 2006. 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”), 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 November 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2006. The Response was filed with the Center on November 24, 2006.

The Center appointed Clive Duncan Thorne, Anna Carabelli and Diane Cabell as panelists in this matter on December 20, 2006. The Panel finds that it was properly constituted. Each member of 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.

There have been a large number of supplemental filings in the dispute as follows:

(i) Complainant’s supplemental filing dated November 29, 2006;

(ii) Reply to Complainant’s supplemental filing dated December 10, 2006;

(iii) Complainant’s second supplemental filing dated December 13, 2006;

(iv) Complainant’s third supplemental filing dated December 18, 2006;

(v) Respondent’s formal objection to the supplemental filings dated December 18, 2006;

(vi) Reply to the Complainant’s third supplement filing dated December 19, 2006;

(vii) Complainant’s fourth supplemental filing dated January 3, 2007.

In addition further emails were received from the parties dated January 8, 2007.

The Panel has considered all of these supplemental filings. Having considered the supplemental filings the Panel has decided that it will proceed to decide the Complaint on the basis of the Amended Complaint and the Response only. The Panel has reached this conclusion for the following reasons:

(i) The Panel considers that the dispute can be adequately dealt with on the basis of the Amended Complaint and the Response;

(ii) The volume and nature of the supplemental filings is such that they cannot effectively be considered and dealt with by the Panel under the Rules;

(iii) The Panel considers that additional submissions are inappropriate except in exceptional circumstances such as the existence of new pertinent facts that did not arise until after the submission of the Complaint or Response. Support for this view is given by previous UDRP decisions including Top Driver, Inc v. Benefits Benefits, WIPO Case No. D2002-0972 and Radan Corporation v. Rabazzini Winery, WIPO Case No. D2003-0353. The Panel considers that exceptional circumstances do not arise in this case particularly when the Panel considers that it is competent to decide the dispute on the basis of the Amended Complaint and Response.

One of the consequences of the supplemental filings is that they have considerably increased the level of documents produced in the dispute and required to be considered by the Panel. This has necessitated the Panel of its own volition requesting extensions of time until January 22, 2007, for the decision. Extensions of time have been granted by the Center as requested.

 

4. Factual Background

According to the Amended Complaint the domain name <realspankings.com> is and has always been owned by the Complainant. This is evidenced by the Whois search results exhibited as Exhibit C to the Amended Complaint. This domain name has apparently been used by the Complainant in connection with its adult oriented website continuously since its registration in 1998. The date of registration was December 29, 1998.

The Complainant is in the adult oriented entertainment business.

The Complainant relies upon a trademark application for “Real Spankings” in the United States of America, a printout of which is exhibited at Exhibit D to the Amended Complaint. The filing date is shown as July 6, 2006.

At Exhibit E to the Amended Complaint is a copy of a “Colorado trademark” for “Real Spankings” in Class 41 registered on October 31, 2006.

The Complainant also asserts that it is the owner of common law trademark rights in the mark “Real Spankings” allegedly established by continuous use on the internet commencing in 1997.

The domain name in dispute was first registered in December 1998. The Respondent acquired the domain name using the escrow services, Escrow.com. The disputed domain name resolves to a website directing users to content and information relative to adult entertainment and specifically to photos related to spankings.

 

5. Parties’ Contentions

A. The Complainant

The Complainant contends:

1. The substance of the Respondent’s domain name in dispute and the substance of the Complainant’s trademarks are identical except for the omission in the Respondent’s domain name of the letter “s” that appears in the trademark, making the former singular and the latter plural.

2. There are no facts that could lead a reasonable person to the conclusion that the Respondent has any rights or legitimate interest in the domain name in dispute. In particular the Respondent’s disputed domain name resolves to a website that offers various links to commercial third party websites that are unrelated to the Complainant.

3. The Complainant “presumes” that the Respondent receives “click through fees” in exchange for diverting Internet users to other websites including those of the Complainant’s competitors. Therefore, the Respondent’s domain name “includes the Complainant’s “which” includes the Complainant’s trademark”. Internet users may mistakenly believe that the resulting websites are affiliated with the Complainant. Use of the domain name to take advantage of such confusion constitutes bad faith under the Policy.

B. Respondent

The Respondent contends:

1. The Complainant has no registered trademark rights and has not presented any evidence of a common law right.

2. The term “Real Spankings” is generic or at most merely descriptive and the Complainant does not use the phrase as a mark.

3. The domain name in dispute was first registered in December 1998 and has been continually used since that time and acquired by the Respondent in an arm’s length transaction.

4. The Complainant has provided no evidence contradicting the Respondent’s rights in the domain name in dispute and the Respondent therefore has a legitimate interest in the domain name.

5. The Respondent is the most recent owner of the domain name in dispute in a chain beginning in 1998 and its use is entirely consistent with the historical use of the domain name and the descriptive definition of “Real Spanking”.

6. There is no evidence of bad faith. The Complainant has “obviously” known of the domain name in dispute since at least 1998 and raised no objection.

7. The Respondent did not register the domain name in dispute to disrupt the Complainant’s business.

8. The Respondent had no intention to register the domain name in dispute in order to sell it to the Complainant or its competitors.

9. The Complaint was brought in bad faith and the Panel should make a finding of reverse domain name hijacking.

 

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proof in showing:

(1) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

The Panel proceeds to deal with each of these elements in turn.

A Identical or confusingly similar

The Panel has considered carefully the evidence of trademark rights contained in the Amended Complaint. The evidence is essentially as follows:

(i) The Complainant has used the domain name <realspankings.com> in connection with its website since its registration in 1998.

(ii) The Complainant relies upon the trademark application filed in the US Trademark and Patent Office (Exhibit D). The Panel notes that this was filed as recently as July 6, 2006, i.e. approximately 8 years after the registration of the domain name in dispute. Similarly the Colorado registration relied upon was apparently first filed on October 31, 2006.

(iii) The Complainant asserts common law trademark rights. It adduces very limited evidence beyond the assertion that the Complainant has spent considerable economic resources in order to market goods under the trademark. It relies upon the review which is exhibited at Exhibit F.

In the Panel’s view this evidence is insufficient to show that the Complainant has proved trademark rights. The Panel notes that it is well-established that a trademark application alone is not sufficient evidence to establish complainant rights in a mark for the purposes of the Policy. See, e.g., First Tuesday Limited v. The Startup Generator and Christopher Stammer, WIPO Case No. D2000-1732; or Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300.

In the present case, in addition to asserting common law rights, the Complainant states that it has recently applied for registered trademark rights before the USPTO, as well as before the Colorado Secretary of State. The evidence provided indicates that the Complainant filed a USPTO application for the word mark “Real Spankings” on July 6, 2006, and that it has not been registered. The evidence in relation to the status of the Complainant’s Colorado State application for the word mark “Real Spankings” is less clear. The certificate provided with the Complaint is stamped with the following: “20061445869 M $125.00 Secretary of State 10-31-2006 12:56:49”. Whether this refers to the date on which the application was filed, or to the date on which the mark was officially registered is unclear. The date of first use by the applicant of the mark “anywhere” is stated on the certificate as being “01/01/1997”.

In any case, giving the Complainant the benefit of the doubt in relation to this registration, in cases of claims based on descriptive marks asserted under state law, previous UDRP Panels have required evidence that the name has become a distinctive identifier associated with the complainant or its goods and services trademark. See, e.g., One Creative Place, LLC v. Kevin Scott, WIPO Case No. D2006-0518. Evidence of a protectible secondary meaning might include the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition trademark. See, e.g., Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083.

In the present case, while the Complainant has asserted common law rights, it has provided almost no evidence of distinctiveness or protectable secondary meaning to support this.

The Respondent also relies upon a submission that the mark “Real Spankings” is generic and at best descriptive. It asserts that as a generic mark it is invalid per se. As a descriptive mark, the Complainant is not entitled to any rights or protection absent a strong showing of secondary meaning. The Panel considers that the mark is prima facie descriptive particularly given the fact that there are no trademark registrations preceding the Respondent’s acquisition of the domain name. Long use and the establishment of common law unregistered trademark rights might be sufficient to defeat an allegation of descriptiveness. However, there is insufficient evidence produced by the Complainant to show this.

The submission of an article referring the website accessed by the Complainant’s domain name as being a popular one simply refers to the material provided at that particular domain address. Indeed it is arguable that because the site gets a lot of traffic or is well known that the mark is descriptive. Browsers looking for “spanking material” may well use the same or similar words to search for such content. This would contribute to the Complainant’s notoriety rather than add to any goodwill in the Complainant’s mark.

The Complainant asserts that it has spent considerable economic resources in order to market goods under the trademark. It would have been open to the Complainant to submit evidence of this in the Complaint itself so as to establish evidence of trading goodwill using the mark and establish unregistered common law trademark rights. The Complainant failed to do so.

The Complainant having not established that it owns trademark rights it follows that it is unable to succeed in respect of this element and therefore fails to prove the Complaint. It is therefore unnecessary for the Panel to consider the issue of identity or confusing similarity, rights or legitimate interests to the domain name and bad faith.

It is however necessary for the Panel, having reached this finding, to consider the issue of reverse domain name hijacking as raised by the Respondent.

B. Reverse Domain Name Hijacking

The Respondent submits that the Panel should make an order finding reverse domain name hijacking under paragraph 15E since the Complainant is “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

In order to succeed on such a claim the Respondent must show that the Complainant knew of either the Respondent’s unassailable right or legitimate interest in the disputed domain name or a clear lack of bad faith registration and use but nevertheless brought the Complaint in bad faith. The Respondent relies upon a number of authorities referred to in the Amended Complaint including Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case No. D2000-1224.

The Respondent also submits that when determining whether the Complainant brought the Complaint in bad faith the Panel should consider both “malicious intent and recklessness” in bringing the Complaint. In this regard it relies upon Goldline International Inc. v. Gold Line, WIPO Case No. D2000-1151.

In particular the Respondent relies upon the fact that the Complainant asserts trademark rights but does not provide evidence supporting its claim. Therefore, in the Respondent’s view, the Complainant does not present a good faith assertion of its legal position.

Having considered these submissions carefully the Panel has reached the conclusion that it is not prepared to make a finding of reverse domain name hijacking. The Panel does not consider that the Complainant’s submissions and evidence demonstrate the necessary “malicious intent or recklessness”. In particular the Panel takes into account the Complainant’s submission that it has unregistered or common law rights. The Complainant has failed to adduce sufficient evidence to support such rights. This is not a case where the Complainant appears to have proceeded in a cavalier fashion with no evidence to support its submission as to the existence of trademark rights but rather a case where its evidence is inadequate and insufficient to support its submission.

The Panel is therefore not prepared to make a finding of reverse domain name hijacking.

 

7. Decision

For the above reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel finds that the Complainant has failed to prove its Complaint and also finds that there is no reverse domain name hijacking on the part of the Complainant.

Clive Duncan Thorne Presiding Panelist
Diane Cabell Panelist	Anna Carabelli Panelist

Dated: January 22, 2007