WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.
Case No. D2004-0843
1. The Parties
The Complainants are Private Media Group, Inc., Cinecraft Ltd., European Headquarters, c/o Milcap Media Group, SL, Barcelona, Spain; represented by Kulik, Gottesman, Mouton & Siegel, United States of America.
The Respondent is DHL Virtual Networks Inc., Montreal, Canada, represented by Me Frédéric Letendre, Canada.
2. The Domain Name and Registrar
The disputed domain name <privatefeeds.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2004. On October 15, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 15, 2004, Tucows 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 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 October 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2004. Because the Response was sent on November 10, 2004, at the location of the Respondent, it was not treated as a late Response and an Acknowledgement of Receipt of Response was sent to the Respondent on November 11, 2004.
The Center appointed Jonas Gulliksson, Antonio Millé and Alain Strowel as panelists in this matter on December 1, 2004. 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.
4. Factual Background
This dispute concerns the domain name <privatefeeds.com>, registered by Respondent on August 14, 2000. In addition to ownership of the marks attached as Annex A to the Complaint, Complainants registered, own, and have used for adult entertainment services the following domain names, all of which were registered before <privatefeeds.com> was registered:
Name Registrant Date
<private.com> CineCraft Ltd. Ferbruary 27, 1997;
<privatechannels.com> CineCraft Ltd. January 18, 1999;
<privatespeed.com> CineCraft Ltd. September 9, 1999;
<privatelive.com> CineCraft Ltd. October 17, 1997;
<privatestars.com> CineCraft Ltd. January 26, 1999;
<privateathome.com> CineCraft Ltd. October 8, 1999.
5. Parties’ Contentions
A. Complainant
The Complaint is based on the following grounds:
The Complainants in this administrative proceeding are Private Media Group, Inc. (“PMG”) and its subsidiary, CineCraft Ltd. (collectively “Private” or “Complainants”). The principal places of business for Complainants is listed in the caption of this Complaint and incorporated by reference here.
Since 1965, PMG has been a leading global adult entertainment company that, among other things, distributes adult entertainment products via a wide range of media platforms, including narrow and broadband Internet, DVD and video, magazines, and broadcasting and wireless technologies. Since 1965, PMG has used the “Private” mark in connection with adult entertainment products and services throughout the world. E.g., Private Media Group, Inc. v. Darjan Popic, National Arbitration Forum Decision FA104000097084 (2001) (attached as Annex G) (hereinafter “PMG v. Popic”). PMG owns the worldwide rights to the largest archive of high quality adult content in the world, which it physically distributes in over 40 countries.
Since 1997, PMG has expanded its presence in emerging electronic markets for adult entertainment, including by launching its first Internet website, “www.private.com”. In 1999, PMG became the first adult entertainment company to be listed on the Nasdaq National Market in the United States.
PMG’s brand name, “Private” thus enjoys worldwide notoriety and strong brand recognition in the adult entertainment industry, including distributors, producers, and consumers. PMG has over 200 registered trademarks throughout the world, which protect its goods and services. A listing of those registered marks is attached as Annex A.
A. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
As shown, PMG is one of the best known and most well-established adult entertainment companies, with a long and well established presence on the Internet. It has numerous trademarks and domain names that use the name “Private” or derivations thereof. The “Private” name is very well known in the adult entertainment online industry. Attached as Annex E is some information about PMG from the website at “www.private.com”.
The domain name at issue, <privatefeeds.com>, is confusingly similar to Private’s marks and domain names, under both the objective and subjective tests that have been employed by UDRP Panels, and pursuant to analogous prior decisions. According to the Complainant the Respondent competes with Private and has intentionally attempted to attract, for commercial gain, internet users to the <privatefeeds.com> domain name by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the infringing domain name.
In Wal-Mart Stores, Inc. v. Richard MacLeod, WIPO Case No. D2000-0662, Complainant Wal-Mart Stores, Inc. successfully prosecuted a WIPO Complaint against the owner of <walmartsucks.com>. The Panel noted in that opinion:
“This Panel has also held that incorporating a distinctive mark in its entirety creates sufficient similarity between the mark and the domain name to render it confusingly similar.” (Emph. added.)
Respondent here has done just that. It has incorporated the distinctive mark PRIVATE into privatefeeds. In Wal-Mart Stores case, the Panel further stated: “the Panel understands the phrase ‘identical or confusingly similar’ to be greater than the sum of its parts. . . . Thus, the Panel concludes that a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name. In other words, the issue under the first factor . . . [is] whether the mark and domain name, when directly compared, have confusing similarity.” In this action, <privatefeeds.com> includes the trademark PRIVATE and is, on its face, confusingly similar to <private.com> and the other domain names owned by Private. See, PMG v. Popic, supra (<privategold.net> domain name is confusingly similar to [PMG’s] family of marks because it incorporates the PRIVATE mark of [PMG] with a generic word and ordering transfer of infringing name); Cine Craft Limited v. Garrido, WIPO Case No. D2002-1151 (domain name <privatecastings.com> confusingly similar to PRIVATE and related PMG marks; CineCraft obtained transfer of infringing domain name).
Similarly, in Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, the domain name <chanelpurfumes.com> was held to be confusingly similar to the mark CHANEL. “The addition of the generic term, ‘perfumes’ is not a distinguishing feature and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.” The same is true here. The addition of the term “feeds” to the mark PRIVATE is not a distinguishing feature (including because, as shown, Private owns several websites that incorporate other terms into the PRIVATE mark) and in this case would also actually increase the likelihood of confusion because it too is an apt term for Private’s adult entertainment internet business. Accord, PMG v. Popic, supra (“confusing similarity is further exacerbated by the fact that Respondent if offering competing adult entertainment services”). Thus, Private meets the objective test1.
The subjective test was used in Red or Dead Limited v. Kid Pty Ltd. (aka Kid Enterprises Pty Ltd.), WIPO Case No. D2000-0280. Under the subjective test, the Panel seeks to determine whether an Internet user confronted with the domain name at issue would likely be confused as to the source or sponsorship of the website to which the domain name resolves or the services offered. Here, Private is an uber-giant in the adult entertainment industry, has numerous trademarks and adult entertainment web- sites using the word “Private” and derivations thereof, and a consumer of internet adult entertainment would most surely consider “www.privatefeeds.com” as a site with which Private is involved.
B. The Respondent has no rights or legitimate interests in respect of the domain name. (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
Respondent has never been known by or affiliated with Private. There is no evidence that Respondent intended to use the domain name in connection with any bona fide offering of services tied to such name, except to attract confused consumers to its site. By choosing the domain name <privatefeeds.com>, Respondent obviously intended to capitalize on complainants’ well established good name and reputation in the adult entertainment industry and thus cannot show legitimate interests or rights in <privatefeeds.com>. E.g., Policy, section 4(c); Anheuser-Busch Inc v. Dot Com Internet Solutions, WIPO Case No. D2001-0500 (respondent did not have rights or legitimate interests in domain name which infringed trademarks where respondent was not affiliated with respondent); Amphenol Corporation v. Applied Interconnect, Inc. WIPO Case No. D2001-0296 (“use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services”).
In Playboy Enterprises International Inc. v. Federico Concas, WIPO Case No. D2001-0745, the complainant registered the domain name <playboy-photographer.com>. The Panel found the respondent did not have legitimate interests in the domain name because complainant did not authorize the respondent to use its trademark (“PLAYBOYplayboy”) nor register the disputed name. Moreover, respondent’s name did not include any part of the disputed domain name and the respondent could not have been unaware of the renown of the PLAYBOY mark when he registered the disputed name. As such, the Panel found the site was designed to attract Internet users based on the Playboy name and that respondent was trading on Playboy’s good name, and thus that the respondent did not have legitimate interests in the use of the domain name2. Again, according to the Complainants, all of these factors are present here.
Private has not authorized Respondent here to use its mark PRIVATE or any derivation thereof. Respondent’s name (DHL Virtual Networks) does not include any part of the disputed domain name. Finally, Respondent could not have been unaware of the renown of the “Private” name and mark in the adult entertainment industry when it registered the mark. See PMG v. Popic, supra (finding that respondent’s registration and use of the <privategold.net> domain name for a site that “offers the same adult entertainment services as [PMG], does not evidence a bona fide offering of services when Respondent misleads users by utilizing a domain name which is confusingly similar to that of [PMG’s]” and further noting “the fame of ... [the] PRIVATE mark, with respect to adult entertainment services”).
C. The domain name was registered and is being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Respondent sought to capitalize on the goodwill of the Private marks by registering and using a strikingly similar domain name to sell adult entertainment services (the same as those offered by Private), thereby cashing in on Private’s good name and goodwill in the adult entertainment industry. Respondent chose and began to use the domain name in August, 2000, years after many of the Private marks and domain names were in use. Under the Policy, section 4(b), registration and use in bad faith is established where the respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or a service offered there. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (complainant’s numerous trademark registrations for, and its wide reputation in the word “Telstra” demonstrated that respondent registered <telstra.org> in bad faith and was evidence of usage in bad faith by respondent); Societe Generale and Fimat International Banque v. Lebanon Index, WIPO Case No. D2002-0760 (“any use of the domain names in dispute would attract Internet users to the web- sites by creating a likelihood of confusion for commercial gain with Complainants’ trademarks as to source, affiliation or endorsement of the websites” which is evidence of bad faith); Anheuser-Busch, supra (registration of domain name while knowing of complainant’s trademark is evidence of bad faith); Pivotal Corporation, supra (use of confusingly similar domain name by someone with no connection with holder of the trademark supports a finding of “opportunistic bad faith,” fact that respondent was aware of complainant at the time the name was registered is “additional support” for finding bad faith); Amphenol Corp., supra (bad faith appears where respondent registered and used domain name to trade on the recognition of the complainant’s mark); PMG v. Popic, supra (similarity of names and services offered constitutes bad faith).
In accordance with Paragraph 4(i) of the Policy, for the reasons described in Section V above, Complainants request the Panel appointed in this administrative proceeding issue a decision that the contested domain name be transferred to Complainant PMG or alternatively be cancelled.
B. Respondent
Response to Statements and Allegations Made in Complaint. (Policy, paragraphs 4(a), (b), (c); Rules, paragraph 5)
The Respondent hereby responds to the statements and allegations in the Complaint and respectfully requests the Panel to deny the remedies requested by the Complainants.
A. Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i))
For all the reasons contained herein, there is no confusion nor likelihood of confusion between the Complainants’ domain names described in paragraph 8 of their Complaint (the “Complainants’ domain names”) and the Respondent’s domain name <privatefeeds.com> (the “Respondent’s domain name”).
Respondent does not offer wares and services similar to those of Complainants; Respondent is not a direct competitor of Complainants. Respondent has not intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s domain name by creating a confusion or a likelihood of confusion with Complainants’ domain names and trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s domain name.
Web narrowcasting technologies solutions - Since April 2000, Respondent operates a web narrowcasting technologies solutions enterprise. Respondent owns, exploits and licenses an original and unique software together with other technological solutions (a.k.a. Privatefeeds V1.1– see, for an example, a License Agreement executed on November 26, 2001, between the Respondent and a third party annexed herewith as Schedule A) allowing video narrowcasting of a live private performance by a model from the model’s computer to the computer of a third party (i.e. the Internet user) through a portal over the Internet using the Respondent’s domain name, simultaneously with phone and/or chat communication. Respondent also provides web services featuring the same such said live private performances [at “www.privatefeeds.com”] (collectively, the “Services”).
Distinction of services - Respondent, through its domain name, provides solely and exclusively the Services, and no wares. To be more specific, it does not provide nor produce any picture, video, movie, photograph, magazine, adult erotic apparels and so on. Consequently, it does not offer the same or similar wares and services as the Complainants which offer numerous contents picked up mainly from their other media platforms (e.g. videos and DVD’s, magazines,…). In fact, Complainants’ web activities are identical to thousands of other adult entertainment websites such as, but not limited to, “www.playboy.com”, “www.hustler.com”, “www.penthouse.com”. The Respondent offers strictly the specialized Services namely, private and semi private live audio and video communication between a model and a consumer.
Complainants’ Web activities carried on under Complainants’ domain names are not distinctive and predominant - Complainants submit (without any specific and detailed evidence) to be well known for their adult hard copy content (e.g. magazines, movies,…). No detailed and satisfactory evidence is produced with respect to their Web activities. For example, a simple research on the popular search engine Google with the keyword «private» (annexed as Schedule B) places the Complainants’ corporate website “www.prvt.com” almost in the 40th position. The Complainants’ domain names corresponding to their web operations (“www.private.com” and so on) are not even in the top 50. On the other hand, the same searches for three important Complainants websites competitors, namely Playboy (key word “Playboy”), Penthouse (key word “Penthouse”) and Hustler (key word “Hustler”), show the distinctiveness of the competitors’ sites with positions in the top 4 data (1st for Playboy, 1st for Penthouse and 4th for Hustler) (annexed as Schedule B). According to the Complainants, this means that the Complainants’ domain names are not distinctive and predominant.
Trademarks of Complainants - Complainants in their Complaint refer to trademarks registrations in various countries of the world, notably in the USA (e.g. its USPTO registration numbers 1,014,957 and 2,443,667 Complainants’ Exhibit F). Such said registrations cover “magazines, newspapers, books, photographs (1,014,957) and adult erotic apparel, namely, lingerie and dresses made of rubber, latex or leather, sold through erotic on-line internet sites, erotic retail stores and erotic mail order catalogs (2,443,667)” used in association with the word “private”. In Canada, the country where Respondent is established, there is no registration for the word «private» alone. The Canadian trademarks registrations under numbers TMA491602 and TMA495654 are issued strictly for the word in stylized form (e.g. Error! Unknown switch argument.) used in association with the following wares: “Sound recordings, prerecorded motion picture films and prerecorded video tapes and discs; magazines, periodically issued printed publications, namely calendars; books, photographs” (TMA495654) and “Erotically and sexually stimulating mechanical and electrical means, namely vibrators for human body parts and suction pumps; artificial limbs and bodies in the form of dummies; massage apparatus, condoms” (TMA491602) (see Canadian trademarks registrations numbers TMA491602 and TMA495654 annexed as Schedule F). Such said American and Canadian registrations are for wares included in the International Classes 016 and 025.
How do such wares can interfere with the Respondent’s business of video narrow casting services of a live private performance by a model from the model’s computer to the computer of a third party through a portal over the Internet included in the International Class 041? Complainants’ trademarks do not cover the Service offered by Respondent’s domain name. It is important to point out once again that Respondent is not producing nor exploiting a business of “magazines, newspapers, books, photographs, adult erotic apparel, namely, lingerie and dresses made of rubber, latex or leather, sold through erotic on-line internet sites, erotic retail stores and erotic mail order catalogs”. Consequently, no consumer or Internet user will type the Respondent’s domain name to have access to such wares. Respondent does not endeavour to lure away from Complainants such consumer or Internet user.
Respondent’s Privatefeeds is a legitimate registered business name and domain name - As we will see later in more details, the Respondent is using the term “privatefeeds” as a legitimate registered business name and domain name.
The term “privatefeeds” was chosen by the Respondent because of its specific Services of transmitting private audio and video data from a provider (the model) to a consumer. When the Respondent started its operations and registered its domain name <privatefeeds.com>, the Respondent ignored the existence of the Complainants and their domain names.
In the telecommunication business the term “feed” refers “to supply something to a person or thing, or put something into a machine or system, especially in a regular or continuous way”3. In order to complete its business concept, the Respondent needed to add one or more prefixes and/or suffixes to the term “feeds” which represents the individuality or the intimacy of the communication. The word “private”, which might be defined as: “intended for or restricted to the use of a particular person, group, or class “a private park” b : belonging to or concerning an individual person, company, or interest ‘a private house’”4, was considered among others to complete the name of the concept. Considering the fact that the Services of the Respondent are to provide the technology solutions supporting the transmission of data to one computer to another, it was logical to use together such said terms.
Administrative Panel Decisions - Numerous cases cited by the Complainants5 in the first part of its argumentation (Section A. The domain name is confusingly (…)) referred to situations extremely different from the one at issue in the present case:
absence of response, PGM v. Popic, Garrido and Red or Dead;
use the site for the purpose of selling it, Wall-Mart Stores, Inc., Chanel and Red or Dead;
domain names not yet been used, Wall-Mart Stores, Inc., Chanel and Red or Dead;
intent to attract consumers, Chanel and Garrido.
The cases PGM v. Popic, Garrido and Red or Dead are not proper precedents because the respondents never responded. Obviously, the complainants’ allegations were never contested. Moreover, in all those five cases, the respondents specifically and intentionally used the domain names in such a manner to create confusion and force the legitimate owner whether to buy the domain names or to proceed with legal procedures. Therefore, as we demonstrated hereinabove, none of the situations described in these cases shall apply to this case because, inter alia, of the weak distinctiveness of the generic name “private” (the names Wall-Mart, Chanel and Red or Dead are not generic), the impossibility for a consumer or Internet user to be mislead between the Complainants’ and Respondent’s websites, the overuse and the dilution of the word “private” in association with the adult entertainment business on the Internet.
According to the Respondent, the case Cream Holdings Limited v. National Internet Source, Inc. (WIPO Case No. D2001-0964) (“Cream”) should be followed. On the confusion aspect, the Panel states:
Identity or confusing similarity
The Complainant’s registered trademark, as distinct from its trade name, appears on the material before the Panel to be the combination of the word and the propellor device.
It should be noted that the word CREAM appears in stylized form, the application in the UK in 1995, to register the word CREAM standing alone in text form having been abandoned.
Although essential or virtual identity is sufficient for the purposes of the Policy, [14] the Panel finds the disputed domain name is not identical to the Complainant’s trademark.
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark [15]. In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (WIPO Case No. D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainant’s mark and the mark being strong and immediately recognizable.
Here the most prominent feature of the trademark is the logo, the word CREAM being commonly used as a descriptive word. Despite the presence of that word, in stylized form, as part of the trademark, the Panel finds the disputed domain name is not confusingly similar to the trademark.
In Canada, the Respondent’s business place, the Complainants’ trademark “PRIVATE & Design” is registered in stylized form (see Schedule F). In applying the Cream case test to our case, we have no other choice to consider the Complainants’ trademark Error! Unknown switch argument. not confusingly similar to the Respondent’s registered business name “privatefeeds”.
Considering the foregoing, the Respondent has difficulties to imagine that consumers or Internet users might be mislead with both Complainants’ and Respondent’s domain names and websites.
B. Whether the Respondent has rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii))
As explained hereinabove, the Respondent’s domain name comes from the combination of the two generic words “private” and “feeds” in order to express the kind of Services provided by the Respondent. We also demonstrated that such combination is itself a generic term in this specific industry (e.g. semi-private or private (e.g. one-on-one) audio and video live chat between a model and a consumer).
Respondent attached the original copy of the official “Certificat de conformité” (Certificate of Conformity) dated November 4, 2004, issued by the Registraire des enterprises, Gouvernement du Québec (Quebec Enterprise Registrar) (annexed as Schedule I). On its page 5, said Certificate of Conformity confirms that Respondent registered its use as of November 3, 2000, of four business names, including “privatefeeds” and “www.privatefeeds.com”.
No one refuted the registration of the Respondent registered trade names.
Moreover, the various snapshots of the Respondent’s domain name home pages between the years 2000 and 2004, taken from “www.web.archive.org” (Schedule G) together with the Certificate of Conformity (Schedule H) prove the Respondent’s use of the Respondent’s domain name or a name corresponding to the domain name in connection with a bona fide offering of Services at least 48 months before the Respondent received any notice of the dispute.
In the case MYOB Technology Pty Ltd. v. MustardSeed eCommerce, Inc. (WIPO Case No. DBIZ2002-00282) (“MYOB”), the respondent used the domain name <myob.biz> and the complainant used <myob.ca> and <myob.com>. The complainant also owned the registered trademark “MYOB”. The Panel decided that a registered trade name is a legitimate interest to a domain name. Consequently, the Respondent, namely because of its registered business name, had a legitimate interest to the domain name <privatefeeds.com>.
Instead of referring to the MYOB case, the Complainants referred to the Playboy case6. In that case, the respondent registered the domain name <playboy-photographer.com>. The Panel insisted on the fact that the word “photographer” is “associated with the complainant and its renowned activities”. How can, in this present case, Complainants argue that the word “feeds” is associated with them and their activities (International Classes 016 and 025)? Finally, in the Playboy case, the respondent made sure to create a “look and feel” confusingly similar between the websites in order to try to negotiate with Playboy the sale of its domain name for a substantial sum of money. This case Playboy has nothing to do with the present case.
Therefore, for the last 4 years, Respondent is legally and legitimately using the registered business names “privatefeeds” and “www.privatefeeds.com” and doing business under such said names.
Respondent has demonstrated hereinabove its legitimate interests in its domain name and met the criteria of the paragraph 4(c) of the Policy. On the other hand, Complainants only speculated about the Respondent interests and did not prove any illegal or illegitimate interest in respect of the Respondent’s domain name by virtue of the paragraph 4(a)(ii) of the Policy.
C. Whether the domain name has been registered and is being used in bad faith; (Policy, paragraph 4(a)(iii));
The case Cream may guide us again. In the Discussions and Findings Section, the Panel concluded that “they cannot be of any assistance to a Complainant where, as here, the Respondent is able to demonstrate a genuine, independent reason for having selected the domain name, independent in the sense that it owed nothing to the Complainant’s trademark and irrespective of how well known that trademark might be”.
Considering the explanations contained in the previous subsections A. and B., it is clear the Respondent uses, used and registered its domain name <privatefeeds.com> in good faith.
The paragraph 4(b) of the Policy identifies several examples of circumstances that an Administrative Panel could consider as constituting bad faith. Here, none of them apply to the Respondent’s use of its domain name <privatefeeds.com>. Complainants again speculated and did not prove any bad faith registration nor use of the Respondent’s domain name pursuant to the paragraph 4(a)(iii) of the Policy.”
D. Panel Decisions; (Rules, paragraph 15(e));
Reverse domain name hijacking - Because of the allegations contained herein notably, but not limited to, the significant diminutions of the Complainant, Private Media Group, Inc., net sales on Internet (-38% since 2001) together with the proliferation of competitors and the overuse and the dilution of the generic term “private” in the adult entertainment business on Internet, Complainants seem to face major difficulties with their Internet activities. Such difficulties can not and shall not be a reason to prosecute a legitimate company which exploits a completely different business, even if it is in similar field (e.g. adult entertainment business). Complainants knew or should have known that (1) the generic term “private” is overused and diluted on the Internet (2) its trademark registrations cover wares in International Classes 016 and 025 and the services provided by the Respondent are included in the International Class 041, and (3) the Respondent was legally and legitimately using its domain name <privatefeeds.com>. “The Policy was adopted to prevent the extortionate behavior commonly known as “cybersquatting”, in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners7.” The Respondent’s behavior cannot be assimilated to cybersqatting. Therefore, we respectfully submit that, in the opinion of our client, this complaint constitutes an attempt to realize Reverse Domain Name Hijacking or was brought primarily to harass the Respondent, which, indeed, constitutes an abuse of the administrative proceeding by virtue of paragraph 15(e) of the Rules.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to the Complainants the PRIVATE mark has been used in connection with adult entertainment products and services throughout the world since 1965. The Complainants have further shown that it is the proprietor of over 200 registered trademarks covering the word “Private” throughout the world. The Complainants have inter alia registered its trademark PRIVATE on the Principal Register of the United States Patent and Trademark Office as registration no. 1,014,957 as early as July 1, 1975. The Complainants are also the proprietor of the US trademark registration no. 2,443,667 PRIVATE, which was registered on the Principal Register on April 17, 2001.
The Respondent has argued that the word “private” is a generic term and is being used in the adult entertainment business to the extent that it should be considered as diluted on the Internet. Therefore, the Complainants cannot claim the exclusive right to this term in relation with adult entertainment websites. However, the fact that the Complainants’ trademark has been registered i. a. on the Principal Register of the United States Patent and Trademark Office as a word mark shows that the trademark has been found sufficiently distinctive for registration. This means that the Complainants have proven ownership of a proprietary trademark right in the PRIVATE mark. The Panel is of the opinion that the PRIVATE mark has been used by the Complainants in relation to magazines, newspapers and books containing adult entertainment materials. Therefore, it is the Panel’s opinion that the trademark PRIVATE is probably a distinctive and valid mark, at least in relation to inter alia magazines, newspapers and books containing adult entertainment materials.
In view of the above and in accordance with previous decisions in domain name disputes concerning the Complainants’ trademark, inter alia Private Media Group, Inc. v. Darjan Popic, National Arbitration Forum Decision FA104000097084 and Cine Craft Limited v. Garrido, WIPO Case No. D2002-1151, it is the Panel’s opinion that the domain name <privatefeeds.com> is confusingly similar to the Complainants’ PRIVATE mark. The Panel does not find that the mere addition of the term “feeds” precludes a finding of confusing similarity (see e. g. Experian Information Solutions, Inc. v. BPB Prumerica Travel, WIPO Case No. D2002-0367 – <experianautomotive.com>).
Accordingly, the Panel finds that the domain name at issue is confusingly similar to the trademarks in which the Complainants have rights.
The Complainants further claim that its trademark is well known due to the long-term and widespread use of the trademark PRIVATE for the goods and services in question. However, the Complainants have not submitted any specific or detailed evidence in support of this claim. Therefore, it is the Panel’s opinion that the Complainants have failed to prove that the trademark PRIVATE is well known or that the Complainants enjoy a right of user in their trademark.
The Respondent has alleged that the word “private” is generic in the field of adult entertainment. The Panel does not find the word “private” per se to be generic or descriptive in relation to adult magazines, books or films.
B. Rights or Legitimate Interests
Although the Panel has found that the trademark PRIVATE is distinctive in relation to the goods and services covered by the Complainants’ registrations it is the Panel’s opinion that the domain name in question, <privatefeeds.com>, can be seen as a descriptive or at least highly suggestive term in relation to the services provided by the Respondent. As described by the Respondent the term “feed” refers to “the supply of something to a person or thing, or to put something into a machine or system”. Consequently, the term “privatefeeds” could be seen as a mere description of the transmission of private audio and video data from one computer to another, despite the fact that the word “feed” would not be the first choice (the most obvious generic term would rather be “private transmission” or “private sessions”). Thus, it does indeed seem logical for the Respondent to use these words as a description of its services. Therefore, it is the Panel’s opinion that the Complainant cannot have an exclusive right to these words in relation to the services provided by the Respondent, which cover transmission or downloading of private sessions over the Internet.
Furthermore, the Respondent has shown that there are a number of registered domain names in the adult entertainment business, which include the word “private” and a generic suffix, such as <privategirl.com>, <privatefun.com> and <private-flirt.com>.
The Panel does not find the cases cited by the Complainants, i.e. Private Media Group, Inc. v. Darjan Popic, National Arbitration Forum Decision FA104000097084, Wal-Mart Stores, Inc. v. Richard MacLeod, WIPO Case No. D2000-0662, Cine Craft Limited v. Garrido, WIPO Case No. D2002-1151, Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, Red or Dead Limited v. Kid Pty Ltd. (aka Kid Enterprises Pty Ltd.), WIPO Case No. D2000-0280, applicable to this case, since the circumstances of these cases are different from the case at hand, as shown by the Respondent.
The Respondent has to its Response attached a Certificate of Conformity issued by the Quebec Enterprise Registrar showing that the Respondent in 2000, registered four business names, including “privatefeeds” and “www.privatefeeds.com”. The Respondent therefore claims that it is using the term “privatefeeds” as a legitimate registered business name. However, the Certificate does not show for which business activities the trade names are registered and therefore the Panel does not find that these rights alone prove a legitimate interest to use the disputed domain name.
However, in view of all the facts of the case, especially the fact that the domain name <privatefeeds.com> must be considered as a descriptive term for the services for which it is being used, it is the conclusion of the Panel that the Respondent does have a legitimate interest in the domain name in question in accordance with Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Since the Complainants have failed to prove that each of the prerequisites of Paragraph 4(a) of the Policy are present in this case the Panel does not find it necessary to investigate whether the domain name in question has been registered and used in bad faith.
7. Reverse Domain Name Hijacking
The Respondent has submitted that the Complaint constitutes an attempt to realize reverse domain name hijacking or was brought primarily to harass the Respondent. Paragraph(1) of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” See also Paragraph 15(e) of the Rules. To prevail on such a claim, Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., (WIPO Case No. D2000-1224); Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151); K2r Produkte AG v. Jeremie Trigano (WIPO Case No. D2000-0622) and Smart Design LLC v. Hughes, (WIPO Case No. D2000-0993).
In this case it may be argued that the Complainants should have been aware of the descriptive nature of the domain name in question and the fact that the word “private” together with different suffixes is commonly used in domain names in the adult entertainment business, considering the fact that the Complainants themselves are operating in this business. However, as has been stated above, the Complainants have proven ownership in the PRIVATE mark. Furthermore, the Complainants have previously filed Complaints against similar domain name registrations, in which cases the domain names in question have been transferred to the Complainants (see the above-mentioned decisions in Private Media Group, Inc. v. Darjan Popic, National Arbitration Forum Decision FA104000097084 and Cine Craft Limited v. Garrido, WIPO Case No. D2002-1151). In view of these decisions and the fact that the Respondent is also operating in the adult entertainment business, although not offering identical services as the Complainants, it does not seem unreasonable for the Complainants to file a Complaint in this case. Therefore, the Panel finds that the Respondent has failed to show that the Complainants knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use. Thus, the Panel finds that the Complaint has not been brought in bad faith and denies the request for a finding of reverse domain name hijacking.
8. Decision
In light of the findings set out above, namely that, notwithstanding that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainants have rights, the Complainants have failed to prove that the Respondent has no rights or legitimate interests in respect of the domain name, the Complaint is denied.
The request for a finding of reverse domain name hijacking is denied.
Jonas Gulliksson | |
Antonio Millé |
Alain Strowel |
Dated: December 14, 2004
1 See also, PepsiCo, Inc. v. Pepsi, SRL, WIPO Case No. D2003-0696 (“numerous ICANN UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”); Anheuser-Busch Inc, v. Dot Com Internet Solutions, WIPO Case No. D2001-0500 (domain name <budcommercials.com> was confusingly similar to registered marks BUD and BUDWEISER); Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648 (domain name <pivotalsoftware.com> is confusingly similar to mark “PRIVOTAL”); Amphenol Corporation v. Applied Interconnect Inc., WIPO Case No. D2001-0296 (domain name <amphenolcables.com> confusingly similar to AMPHENOL mark).
2 Accord, Pivotal Corporation, supra (respondent had no legitimate rights or interests in domain name where respondent was not licensee of complainant that had prior rights in confusingly similar mark and there was no evidence that respondent was commonly known by the domain name at issue or had licensed the name from complainant); PepsiCo, supra (there can be no bona fide offering of goods and services when respondent uses the trademark in its name without authorization and are not known by that name).
3 “Cambridge International Dictionary of English”, (http://dictionary.cambridge.org/define.asp?key=28346&dict=CALD); see also FEED : 11. broadcasting send broadcast: to provide a local television or radio broadcast to a larger audience by using a satellite or network (…) 5. broadcasting network signal: the signal a network broadcasts to local radio or television stations for broadcast, from “Encarta® World English Dictionary”, (http://encarta.msn.com/encnet/features/dictionary/DictionaryResults.aspx?refid=1861610850); and FEED : supply with material, power, water, etc.; from “Compact Oxford English Dictionary”, (www.askoxford.com/concise_oed/feed?view=uk).
4 “Merriam-Webster’s Online Dictionary” (http://www.m-w.com/cgi-bin/dictionary?book=Dictionary&va=private).
5 Private Media Group, Inc. v. Darjan Popic, National Arbitration Forum Decision FA104000097084 (2001) (Complainants’ Annex G), Wal-Mart Stores, Inc. v. Richard MacLeod, WIPO Case No. D2000-0662, Cine Craft Limited v. Garrido, WIPO Case No. D2002-1151, Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, Red or Dead Limited v. Kid Pty Ltd. (aka Kid Enterprises Pty Ltd.), WIPO Case No. D2000-0280.
6 Playboy Enterprises International Inc. v. Federico Concas, WIPO Case No. D2001-0745.
7 Wall-Mart Stores, Inc., op. cit footnote 12.