national arbitration forum

DECISION

Compelling Content Creators, Inc. v. Pavel Ushakov

Claim Number:  FA0410000346763

PARTIES

Complainant is Compelling Content Creators, Inc. (“Complainant”) represented by Thansai K. Preovolos of Preovolos & Associates, ALC, 401 B Street, Suite 1160, San Diego, CA 92101.  Respondent is Pavel Ushakov (“Respondent”), 3437 Rexway Road, Beachwood, OH 44122.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bubblegirls.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 19, 2004; the National Arbitration Forum received a hard copy of the Complaint October 22, 2004.

On October 19, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <bubblegirls.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bubblegirls.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name that Respondent registered, <bubblegirls.com>, is identical to Complainant’s BUBBLEGIRLS.COM mark.

2. Respondent has no rights to or legitimate interests in the <bubblegirls.com> domain name.

3. Respondent registered and used the <bubblegirls.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant originally registered the <bubblegirls.com> domain name March 20, 1999.  Complainant listed within the WHOIS information for the <bubblegirls.com> domain name the <c-c-c-inc.com> domain name, a domain name it owned at the time, and hostmaster@c-c-c-inc.com as the contact information for the <bubblegirls.com> domain name.   For five years Complainant used this domain name to direct Internet users to its website that provided access to and sales of adult-oriented videos.  The website sells memberships, videos and merchandise, and is Complainant’s primary source of income.  Complainant has filed for service mark protection with the United States Patent and Trademark Office (“USPTO”) for its BUBBLEGIRLS (Serial No. 78,493,313, filed October 1, 2004) and BUBBLEGIRLS.COM marks (Serial No. 78,493,317, filed October 1, 2004).

Complainant, believing the <c-c-c-inc.com> domain name no longer held any value, decided not to renew the <c-c-c-inc.com> domain name registration when its initial registration period expired.  Respondent then registered the <c-c-c-inc.com> domain name on September 17, 2004.  Respondent additionally set up the email address hostmaster@c-c-c-inc.com.  Shortly thereafter, Respondent transferred the <bubblegirls.com> domain name from Complainant to Respondent.  Respondent did this by taking advantage of the fact that Complainant used the <c-c-c-.inc.com> domain name and its email address as contact information when it initially registered <bubblegirls.com> with the Registrar.

Upon transferring ownership from Complainant to itself, Respondent contacted Complainant using a series of emails.  Respondent offered to return the <bubblegirls.com> domain name to Complainant in exchange for either five thousand dollars ($5000) or the right to publish the video content from Complainant’s website on his own competing adult website.  Respondent also threatened that if Complainant does not wish to accept Respondent’s offer, Respondent will sell the domain name to a third party.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

Identical to and/or Confusingly Similar

Registration of a mark with a governmental authority is unnecessary for a complainant to establish rights in a mark if a common law mark has been established. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant established by extrinsic proof in this proceeding that it has rights in the BUBBLEGIRLS.COM mark through ownership of a common law mark. A common law mark is established when a complainant’s mark becomes distinctive and acquires secondary meaning. Complainant established that through Complainant’s continuous use of the BUBBLEGIRLS.COM mark in commerce since 1999, Complainant’s mark has acquired secondary meaning and has become distinctive. Thus, Complainant has established secondary meaning in the BUBBLEGIRLS.COM mark through its continuous and exclusive use. Furthermore, Complainant’s pending trademark application for the BUBBLEGIRLS.COM mark further supports Complainant’s ownership of a common law mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum March 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982); see also American Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that Complainant held the domain name prior to Respondent’s registration, as well held a pending trademark application in the mark, evidences rights in the domain name and the mark therein contained).

The domain name that Respondent registered, <bubblegirls.com>, is identical to Complainant’s BUBBLEGIRL.COM mark; Complainant fulfilled its burden under Policy ¶ 4(a)(i).  See Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing similarity is to be resolved “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Nothing in the record establishes that Respondent is commonly known by the disputed domain name.  Moreover, Respondent is not licensed or authorized to register or use a domain name that incorporates Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

In addition, Respondent approached Complainant, offering to return the disputed domain name to the Complainant for $5000. or the rights to publish certain video material on Respondent’s own website.  Respondent’s offer to sell the domain name registration for profit is evidence that Respondent lacks rights and legitimate interest pursuant to Policy ¶ 4(a)(ii).  See Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Moreover, the fact that Complainant once held registration for the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent contacted Complainant shortly after Respondent’s acquisition of the disputed domain name, offering to sell the domain name for $5,000. or the right to use Complainant’s video material on Respondent’s own website.  The Panel finds that Respondent registered the domain name primarily for the purpose of selling it back to Complainant, which supports findings of bad faith registration and use under Policy ¶ 4(b)(i).  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”).

Additionally, the Panel finds that the evidence establishes that Respondent knew of Complainant’s rights in the BUBBLEGIRLS.COM mark, and the value of the disputed domain name to Complainant, at the time it registered the <bubblegirls.com> domain name. Registering Complainant’s active domain name for its own purposes is strong evidence that Respondent registered and used the disputed domain name in bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (inferring that Respondent had knowledge that the <tercent.com> domain name previously belonged to Complainant when Respondent registered said domain name the very same day Complainant’s registration lapsed).

Moreover, Respondent’s scheme to infiltrate and acquire the <bubblegirls.com> domain name and subsequent offer to sell the domain name back to Complainant indicates Respondent was on notice of Complainant’s rights in the BUBBLEGIRLS.COM mark.  Respondent’s registration and use of the disputed domain name despite actual or constructive knowledge of Complainant’s rights demonstrate Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (inferring that Respondent had knowledge that the <tercent.com> domain name, which previously belonged to Complainant, when Respondent registered said domain name the very same day Complainant’s registration lapsed); see also Savage Sys., Inc. v. Kang, FA 102480 (Nat. Arb. Forum Dec. 31, 2001) (inferring that Respondent had knowledge that the <savagearchery.com> domain name previously belonged to Complainant when Respondent registered said domain name the very same day Complainant’s registration lapsed).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <bubblegirls.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: December 17, 2004

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