1. The Parties

The Complainant is VS Media Inc. of Calabasas, California, United States of America, represented by Kulik, Gottesman, Mouton & Siegel, LLP of Sherman Oaks, California, United States of America.

The Respondent is Internet Domains of Huntington Beach, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <flirtfree.com> is registered with eNom Inc.

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2004, and hard copies of the Complaint were received by the Center on April 14, 2004. On April 13, 2004, the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the domain name at issue. On the same date, the Registrar submitted a partial Verification Response and the Center made a WHOIS printout on April 19, 2004, which showed that the disputed Domain Name was registered with eNom Inc., and that Respondent, Internet Domains, was the current registrant of the disputed Domain Name. 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 on April 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2004. The Response was filed with the Center on May 10, 2004.

The Center appointed M. Scott Donahey as the sole panelist in this matter on May 24, 2004. 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

Complainant is the owner of a service mark registration with the United States Patent and Trademark Office for the mark FLIRT4FREE. The registration issued on February 4, 2003, and shows a first use in commerce on February 10, 1999. Complaint, Annex E. Complainant registered the domain name <flirt4free.com> on February 10, 1999, and allegedly began using it to resolve to a web site on the date of registration.¹

Complainant uses the domain name to resolve to a web site that provides “adult entertainment” in the form of streaming videos of men and women in various stages of undress who engage in live video chat with audio. Complaint, Annex D.

Complainant alleges that it is “one of the most well-known and well established” companies in the adult entertainment industry. However, Complainant offers no information as to the number of registered users it has, nor does it allege its total revenues for any particular period.

Respondent registered the domain name at issue on March 2, 1999. Complaint, Annex A. Respondent allegedly began preparations for use of the domain name at issue for the creation of an online chat hosting service and allegedly “committed thousands of hours and dollars to the development of our chat hosting software.” Respondent is currently still working on the creation of an online chat hosting service which is, according to the web site to which the domain name at issue resolves, “under development.” Complaint, Annex G. As of at least February 20, 2004, Respondent was using the domain name at issue to resolve to an “adult” web site at which live video chat and streaming were offered by a competitor of Complainant. Complaint, Annex F. When, in February 2004, Complainant complained to Respondent, Respondent redirected the domain name at issue to a generic search page. Id.

On February 26, 2004, Complainant sent an email to Respondent inquiring whether Respondent would sell the domain name at issue to Complainant. Id. On February 29, 2004, Respondent replied by email that they were completing development soon, and that they had plans for the use of the name. Respondent was not interested in selling it cheap, but if Complainant were to offer something in the low five figures, Respondent “might reconsider.” Id.

The filing of this matter followed.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is confusingly similar to Complainant’s service mark FLIRT4FREE, that Respondent has no rights or legitimate interests in the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent contends that the domain name at issue, <flirtfree.com>, is not confusingly similar to Respondent’s service mark, that Respondent has rights and legitimate interests in respect of the domain name because it is a combination of common English words, and that Respondent did not register the domain name at issue in bad faith, since Respondent registered the domain name only one month after Complainant registered the domain name <flirt4free.com> and allegedly began using it, that Respondent had no knowledge of the Complainant’s use of the domain name <flirt4free.com> at the time of registration of the domain name at issue, and that the domain name at issue was registered one year before Complainant filed for the service mark on which its claim is based and four years prior to the issuance of the registration.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these 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 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.

A. Identical or Confusingly Similar

Panels have been of two views as to what constitutes “confusing similarity.” Some panels favor a subjective test, seeking 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 web site to which the domain name resolves or to the goods or services offered at that web site. See Red or Dead Limited v. Kid Pty Ltd. (aka Kid Enterprises Pty Ltd.), WIPO Case No. D2000-0280). Other panels follow the objective test, which holds that a domain name which includes the mark or a confusingly similar approximation thereof is confusingly similar, regardless of the other terms in the domain name. This test is perhaps best enunciated in the case of Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

It is the Panel’s view that the better view is the application of the objective test and if a domain name includes the registered mark within the domain name, then the domain name at issue is confusingly similar to the registered mark. In the present case, a confusingly similar approximation of the mark FLIRT4FREE is contained in the domain name at issue, and the Panel finds that the domain name at issue is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

The primary rule in relation to domain name registrations is “first come, first served.” The UDRP provides a narrow exception. “It is not a per se breach of the UDRP to register the trademark of another as a domain name where the trademark is a generic word.” Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc., WIPO Case No. D2002-0658. In this case Respondent registered the domain name at issue almost one year before the Complainant applied for a trademark and almost four years before the registration issued. Moreover, Respondent registered its domain name less than three weeks after Complainant registered the domain name <flirt4free.com> and began using it. Given these facts, and the fact that Respondent’s domain name combines two common English words, the Panel finds that Respondent has rights and legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

Although it is not necessary to decide this issue, the Panel charitably believes that both sides have engaged in hyperbole in their presentations. On the basis of facts set out in Section 6.B. above, the Panel finds that Complainant has failed to prove bad faith registration and use.

D. Bad Faith Reverse Domain Name Hijacking

The Panel declines to find bad faith reverse domain name hijacking in this case.

7. Decision

For all the foregoing reasons, the Complaint is denied.

M. Scott Donahey
Sole Panelist

Dated: May 28, 2004

¹ Even assuming that on the same day the registrar received the domain name registration request that the registrar processed the request and transmitted the domain name to the A root server, the root server would not be updated until some time after midnight. Therefore, the claim that the domain name was "in use in commerce" on the date of registration is extremely dubious.