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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alpine Entertainment Group, Inc. v. Daniel Griffin, Kimberly Hall (a.k.a Kimberly Litvak) c/o Alpha Marketing Group, LLC

Case No. D2007-0034

 

1. The Parties

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

The Respondents are Daniel Griffin and Kimberly Hall (a.k.a Kimberly Litvak), c/o Alpha Marketing Group, LLC, of Littleton, Colorado, United States of America, represented by Martin & Henson, P.C., United States of America.

2. The Domain Names and Registrar

The disputed domain names <realspankingcouple.com> and <realspankingscouple.com> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2007. On January 12, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue, and Network Solutions, LLC transmitted by email to the Center its verification response confirming that 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 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 Respondent of the Complaint, and the proceedings commenced on January 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2007. The Response was filed with the Center on February 8, 2007.

The Center appointed Richard G. Lyon as the sole panelist in this matter on February 23, 2007. The Panel finds that it was properly constituted and has jurisdiction to decide this dispute. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On February 14, 2007, Complainant lodged a Supplemental Filing with the Center, and the parties subsequently exchanged correspondence with the Center about the proposed Supplemental Filing. Following my customary practice, the Panel reviewed Complainant’s proposed Supplemental Filing and the related correspondence. Based upon that review, the Panel denies Complainant’s request. Nothing in the filing or related correspondence justifies departure from the limitation in the Rules to a single filing per party. In deciding this preceding the Panel will not consider anything in the proposed Supplemental Filing.

 

4. Factual Background

Complainant operates an on-line adult entertainment site featuring dominance, in particular spanking. Complainant or its predecessor companies have continuously operated this business at “www.realspankings.com” since 1997. Complainant has submitted a declaration of one of its principal officers testifying to substantial investments in this website and revenues from it; a declaration of a journalist who publishes a newsletter in this field to the effect that the public who are interested in this form of dominance associate the phrase “realspankings” with Complainant and its website and business; and numerous Alexa statistics showing a substantial volume of visitors to Complainant’s website.

On July 6, 2006, Complainant filed an application with the United States Patent & Trademark Office (“USPTO”) to register REAL SPANKINGS in international class 41 for specified entertainment services. This application, which claims a first use in commerce of 1997, has been published for opposition and is currently pending. On October 31, 2006, Complainant obtained a trademark registration for REAL SPANKINGS from the State of Colorado.

Respondents are former employees of Complainant, as models in photographs and performers in videos used on Complainant’s website. In early 2006, after an ownership or management change at Complainant, Complainant advised Respondents that their services might no longer be needed. On July 25, 2006, Respondents presented a proposal to Complainant for a new program in which they would participate as featured performers. The proposal (which is attached as an exhibit to the Complaint) indicates that this program would be carried out on the Internet at “www.realspankingscouples.com” if the project was done jointly by Complainant and Respondents or at “www.realspankingcouple.com” if not. The proposal notes that Respondents had registered both disputed domain names; this occurred earlier in July 2006.

Discussions about the project continued for some period of time but ended on October 18, 2006, when an officer of Complainant sent an email to Respondents’ objecting to their registration and use of the disputed domain names because of their similarity to Complainant’s business name. The following day, October 19, 2006, Complainant discharged Respondents from its employ.

Complainant’s counsel sent Respondents a formal cease-and-desist letter on November 30, 2006. Respondents’ counsel replied on December 8, 2006, noting that neither of the disputed domain names was being used, questioning the validity of Complainant’s trademark rights on the ground that the phrase “real spankings” was “highly descriptive, if not generic” and proposing a negotiated resolution. Respondents’ counsel suggested two alternatives: Either Respondents would keep the disputed domain names subject to appropriate disclaimers; or the Complainant would acquire them from Respondents from $20,000 to $25,000, which amount represented Respondents’ estimated costs “to change their [domain] name”.

Respondents have never activated a website at either of the disputed domain names, but a preview blog indicated their intent to use one or both for a site offering services comparable to those marketed by Complainant. Respondents have acknowledged that they intend to compete with Complainant.

 

5. Parties’ Contentions

A. Complainant. Complainant contends as follows:

Confusingly similar to a mark in which Complaint has rights. Complainant has rights in its REAL SPANKINGS mark by virtue of its pending federal trademark application, its Colorado trademark registration, and common law rights accruing from its use of the mark in commerce continuously for ten years. The disputed domain names are confusingly similar to Complainant’s mark, differing only by the addition of the word “couple” and, in one case, by using the singular rather than the plural.

No rights or legitimate interest. Respondents have never been known by the disputed domain names, and Complainant has never authorized Respondents to use its mark. As Respondents were well aware of Complainant’s business and business name at the time they registered the disputed domain names, their proposed use of the disputed domain names for commercial purposes cannot be legitimate for purposes of paragraph 4(a)(ii) of the Policy. The fact that the Respondents have not yet used the disputed domain names for commercial purposes does not render their registration or use of them bona fide or legitimate; to the contrary, their preview blog reveals that they intend to use them to compete directly with Complainant.

Bad faith. Respondents’ registration as part of a business proposal that would make use of the goodwill associated with Complainant’s mark indicates bad faith in both registration and use. Respondents’ subsequent offer to sell the disputed domain names to Complainant for an amount far in excess of their costs of registration is further evidence of registration and use in bad faith. Respondents’ furnishing false contact information with the registrar is further evidence of bad faith.

B. Respondent. Respondents contend as follows:

Confusingly similar to a mark in which Complainant has rights. The disputed domain names are not similar to Complainant’s mark because the former are verbs (“because [they] describe[] an ACTION”) and the latter either a noun (“because it describes a person, place or thing”) or an adjective (“because it is describing something said, person, place, or thing”). Respondents also incorporate by reference the assertion in their counsel’s response to the cease-and-desist letter that the phrase REAL SPANKINGS is “highly descriptive . . ., if not generic” while the disputed domain names are “of an entirely different concept, a couple that spanks for real”.

Rights or legitimate interest. Respondents registered the disputed domain names prior to any knowledge of Complainant’s trademark application or the Colorado trademark registration. Complainant raised no objection to Respondents’ registration of the disputed domain names for several months, during which time Respondents spent considerable amounts of money to develop their proposed website. Respondents never tried to hide their registration of the disputed domain names from Complainant, and indeed included it in their proposal for the joint project.

Bad Faith. Respondents registered the disputed domain names through the registrar’s private registration service; there was no false information and no bad faith in so doing. Respondents registered the disputed domain name for a perfectly legitimate business purpose and presented that business purpose to Complainant for its possible participation. Requiring Respondents to change the configuration and content of their website in order to use a different domain name would cost at least $20,000 to $25,000, the amount for which they offered to sell the disputed domain names to Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must establish each of

the following:

(1) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants has rights; and

(2) that the Respondents have no rights or legitimate interest in respect to the disputed domain names; and

(3) that the disputed domain names have been registered and are being used in bad faith.

Complainant bears the burden of proof on each element.

A. Identical or Confusingly Similar to a Mark in which Complainant has Rights. The Panel notes that in another case involving this Complainant, Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2006-1392, the panel was not prepared to find for the complainant. In that case, for a number of reasons, the panel could not take into account certain apparently voluminous supplemental filings from the complainant in relation to its trademark position. In the present case, however, the filed Complaint includes not only sufficient evidence of common law trademark rights in the phrase REAL SPANKINGS but also undeniable evidence that Respondents knew of Complainant's use of it for commercial purposes. As common law rights suffice to invoke the Policy, the Panel need not consider – and expressly does not consider – whether Complainant’s pending USPTO application or Colorado registration establishes such rights. Respondents’ assertion that Complainant’s mark is “descriptive” or “generic” is irrelevant, as Complainant has proven by competent evidence that the target audience of both parties associates the phrase with Complainant and Complainant’s business.

A simple reading of the disputed domain names shows clearly that they are confusingly similar to Complainant’s mark. Under a long line of cases changing the plural to the singular or adding an additional word or phrase when the dominant feature of the disputed domain names is complainant’s mark does not obviate any confusion. E.g., Adobe Systems Incorporated v. Jeff Bluff, Online RX Sales LLC, WIPO Case No. D2006-1475.

B. Rights or Legitimate Interests. As former employees of and prospective partners with Complainant, Respondents cannot deny knowledge of Complainant’s use of the “real spankings” phrase for its business. What Respondents apparently deny is that this use gives Complainant a right to invoke the Policy to resolve this dispute; as stated in the preceding section, the Panel rejects that position. Given Respondents’ clear knowledge of Complainant’s business name, their use of it in the disputed domain names cannot be bona fide or legitimate absent one of the circumstances in paragraph 4(c) of the Policy or Complainant’s consent to such use by Respondents. None of the circumstances in paragraph 4(c)(ii) obtains, and Complainant clearly has not expressly consented to Respondents’ use. The only issue is whether Complainant’s three-month (from late July through late October 2006) “delay” in voicing a formal objection to Respondents’ use of Complainant’s mark can be construed as tacit consent.

Such implied consent is in the nature of an estoppel defense under United States trademark law. Panels under the Policy have almost uniformly rejected the availability of such a defense in a Policy proceeding. Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 (“[T]here is no room in the Policy for the stand-alone application of a defence such as laches.”). Nevertheless, in a few instances facts that if established in a lawsuit might make out an estoppel defense have been grounds for finding a legitimate interest by a respondent. See, e.g., Primus Telecommunications Group, Inc., Primus Telecommunications (Australia) Pty Ltd v. SullivanFamilyTrust, WIPO Case No. D2006-1165; National Futures Association v. John L. Person, WIPO Case No. D2005-0690. The record in this proceeding, however, does not approach anything justifying such a finding. Three months is a relatively short period of time, and there is little indication in the record that could reasonably be called Complainant’s encouragement of or consent to Respondents’ use of Complainant’s trademark in Respondents’ domain names. Complainant acted reasonably promptly in objecting, and it objected in no uncertain terms. Respondents’ use of Complainant’s mark was not consented to and is not legitimate under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

These same facts establish that, for purposes of the Policy, Respondents registered and have used the disputed domain name in bad faith. They did not register the disputed domain names incorporated in their proposal at Complainant’s request or with Complainant’s knowledge; this was done entirely on their own authority, without Complainant’s consent, before presenting their proposal to Complainant. Respondents’ proposed use of the disputed domain names for a site that would if pursued independently compete directly with Complainant’s business falls directly within paragraph 4(b)(iv) of the Policy, as it is “using the domain name, . . . intentionally . . . to attract, for commercial gain, internet users to [Respondents’] website . . ., by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement”. Such conduct establishes bad faith in registration and use.

 

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 names <realspankingcouple.com> and <realspankingscouple.com> be transferred to the Complainant.

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Richard G. Lyon
Sole Panelist

Dated: March 7, 2007