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CIS Internet Limited t/a Faceparty.com v. Rob Jones [2005] GENDND 226 (23 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CIS Internet Limited t/a Faceparty.com v. Rob Jones

Case No. D2005-0103

1. The Parties

The Complainant is CIS Internet Limited t/a Faceparty.com, Great Bardfield, Braintree, Essex of United Kingdom of Great Britain and Northern Ireland, represented by Lawdit Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Rob Jones, Shippon, Abingdon of United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <faceparty.org> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2005. On January 31, 2005, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On February 2, 2005, Melbourne IT trading as Internet Name Worldwide 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 on February 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2005.

The Center appointed Dawn Osborne as the sole panelist in this matter on March 9, 2005. 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

The Complainant is a provider of Internet communication services and has registered trademarks for FACEPARTY in the UK, the European Community and the US.

The Respondent registered the disputed domain name on June 24, 2004.

5. Parties’ Contentions

A. Complainant

1. The Complainant has offered Internet Communications Services since 2001 and its current membership amounts to 3,857,873 people. The Complainant’s website was ranked within the top five in respect of ‘Computers and Internet – Net Communities and Chat’ sites and reached No. 1 in July. The website has been ranked No. 1 by visits in the ‘Computers and Internet – Net Communities and Chat’ online industry from April to July 2004 inclusive with a market share of 7.91%. The website was ranked No. 1 by page impressions in the ‘Computers and Internet – Net Communities and Chat’ online industry from April to July 2004 inclusive with a market share of 21.81% . The Complainant’s website also remained ranked 23^rd most visited site for UK Internet users during the same period. The website recorded 30,339,077 average daily page impressions for the period 1 – March 31, 2004, and a total of 940,511,373 for the same period. In January 2004 the website was ranked No. 9 by International Google Zeitgeist in the UK for popular queries. The website was ranked no. 1 and recorded 151.7 million page impressions through the periods January 2003; March 2003; and May 2003. The website was ranked within the top twenty in respect of ‘Computers and Internet – Net Communities and Chat’ sites and reached No. 11 in December 2002. The website recorded 4,894,868 average daily page impressions for the period 1 – August 31, 2002 and a total of 151,740,914 for the same period .

2. The Complainant advertises its services through various mediums which include amongst other things, advertising within RUSH! (a student guide published tri-annually and distributed to major universities in London, UK), qx International magazine and other marketing activities including:

i) Organisation of high profile and unique festivals including:

a) the Official Launch of the Faceparty brand on July 20, 2002, staged at 3 Mills Film Studios in London, UK.

b) The ‘Festival of Dreams’ on September 6, 2003, at the Old Billingsgate Market in London, UK.

c) ‘The Big Gay Out’ on July 3, 2004. This official ‘Gay Pride’ charity event was sponsored and organised by the Complainant in Finsbury Park in London.

3. The Complainant’s annual advertising expenditure for the year 2004 is in excess of £360,000. The Complainant has used and continues to use its registered trademarks and/or “FACEPARTY” (word only) in advertising literature at all times.

4. The Complainant has registered the following trademarks (the ‘Complainant’s trademarks’):

i) The stylised word mark “FACEPARTY” under UK certificate no. 2330204 in class 41 in respect of operating chat rooms. The trademark was registered on March 5, 2004 with a filing date of April 24, 2003;

ii) The stylised word mark “FACEPARTY” under UK certificate no. 2364009 in classes 16 (printed matter; printed publications; books; posters; stickers), 25 (articles of clothing; headgear), 38 (short message service and text messaging and message receiving, sending and forwarding) and 41 (operating chat rooms). The trademark was registered on October 29, 2004 with a filing date of May 22, 2004;

iii) The stylised word mark “FACEPARTY” under European Community trademark registration certificate no. 003066611 in classes 16 (printed matter; stationery), 35 (advertising services provided via the Internet) and 41 (organisation of meetings via telecommunications or the Internet. The trademark was registered on June 14, 2004, with a filing date of February 24, 2003; and

iv) The stylised word mark “FACEPARTY” under US certificate no. 2840248 in class 38 in respect of providing on-line chat rooms for transmission of messages among computer users concerning social and entertainment subject matter. The trademark was registered on May 11, 2004, with a filing date of March 19, 2003.

5. The Complainant’s trading name is FACEPARTY. This name is used and has been used at all times on stationery such as company letter head, business cards and other forms of communication including telephone and e-mail communications.

6. Accordingly, the Complainant has unregistered trademark rights in <faceparty.com> and <faceparty.co.uk> and registered and unregistered trademark rights in “FACEPARTY”.

7. The domain in dispute is identical for the purposes of the Policy to <faceparty.com>. For this purpose the gTLD is disregarded.

B. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

1. The Respondent does not own a pending or registered trademark or any other intellectual property right corresponding with the offending domain. There are no applications or registrations in the name of the Respondent for any mark incorporating the element “faceparty” or anything similar thereto.

2. The Respondent is an individual who is the Registrant of the disputed domain name <faceparty.org>, whose place of residence is 7 Rookery Close, Abingdon, Oxon OX13 6LY, United Kingdom.

3. On or around November 1, 2004, the Complainant’s authorised representative wrote to the Respondent in respect of the domain. At the material time the domain purported to offer Internet chat room services more particularly for the adult market. Pictures of naked individuals and those involved in sexual acts were published on the website. Users of the website were able to search the website database using keywords such as “men”, “women”, “couples”, “real profiles”, “real photos” and “casual sex” and were able to access material of an adult nature by creating a user profile and then searching under a particular genre.

4. On or around November 10, 2004, the Respondent removed the content from the website. On or around November 11, 2004, the Respondent wrote to the Complainant’s authorised representative asking for further time to respond. On or around November 12, 2004, the Complainant’s authorised representative wrote to the Respondent by e-mail on November 12, 2004, to extend the time frame in which to allow the Respondent to provide his response. No response has been received.

5. On or around November 25, 2004, the client’s authorised representative wrote to the Respondent in respect of the domain and requested for it to either transfer or enable for the Complainant to make arrangements for the transfer of the domain on its behalf. No reply has been received. On or around December 10, 2004, the Complainant’s authorised representative wrote to the Respondent by letter dated December 10, 2004, requesting that the domain be transferred. The Respondent has failed to reply to the Complainant or its representatives.

6. On or around January 10, 2005, the Respondent placed photographs of a cat entitled ‘THE WORLD’S PRETTIEST PUSSY CAT’ and has made use of the directory “http://www.freesexcommunity.com/faceparty.org/”. Further investigation has determined that the Respondent is the registrant of the domain <freesexcommunity.com> and is in control of the sub-directory “http://www.freesexcommunity.com/faceparty.org”.

7. The Respondent has made no lawful use of the domain and there exists a real risk of the Respondent using the domain in the future to disrupt the legitimate services of the Complainant and adversely affecting the Complainant’s reputation in the market place.

8. The Respondent has not at any time sought permission from the Complainant to use its mark.

9. The Respondent’s actions and failure to respond to reasonable requests made of him indicate that he has no wish to resolve the aforementioned domain dispute amicably.

C. The domain name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

1. The particular facts and circumstances surrounding this complaint indicate that the Respondent’s registration and use of the offending domain was and is in bad faith within the meaning of Policy 4 (a)(iii).

2. The factual circumstances clearly indicate that the Respondent acted in bad faith when it registered the offending domain because it knew or should have known of the Complainant’s registered and unregistered rights. It is inconceivable to conclude otherwise as the Respondent was aware of the Complainant’s business activities due to the initial use made of the domain and related webpages. An indication of bad faith in §4(b)(iii) of the Policy is the Respondent has sought to disrupt or threats to disrupt the Complainant’s business by using an indication that is identical to the Complainant’s trademarks.

3. The Respondent’s current use of the domain and domain sub-directory continues to both block the Complainant from securing a domain which reflects its trademarks and adversely affects the reputation of its trademarks respectively. The use now made of the domain remains inconsistent with the Respondent’s first use of the domain and continues to frustrate and hinder the Complainant from making a bona fide registration for the domain. It is inconceivable that the Respondent now wishes to make bona fide use of the domain. This is compounded by the fact of the use made of the sub-directory <freesexcommunity.com> in connection with the domain. The offering of similar services to that of the Complainant risks the relevant consumer confusing the services offered via the domain as those services offered by the Complainant as a direct service offered by the Complainant and /or as services offered by way of licence or sanctioned by the Complainant.

4. The use made of the domain by the Respondent was identical to the Complainant’s trademarks in order to benefit from the goodwill and reputation of those trademarks in respect of services that were similar to that which the Complainant’s trademarks had established well known consumer recognition and understanding. The use of the domain was clearly used by the Respondent in an effort to ‘free-ride’ off the goodwill and reputation of the Complainant’s trademarks. There exists substantial value in the Complainant’s trademarks and it is without doubt that the Respondent recognised such value and sought to exploit this value, without licence or consent, to the detriment of the Complainant’s distinctive nature of its registered trademarks.

5. Furthermore, an indication of bad faith in §4(b)(iv) of the Policy is the Respondent intentionally attempted to attract, for commercial gain, Internet users to his domain by using an indication that is identical to the Complainant’s trademarks. Furthermore there is no need for the Respondent to use a domain name which he knows is causing confusion. The Respondent could clearly secure domain names which reflect the nature of his website content or a similar and /or suitable alternative. The Respondent’s initial use of the domain detailed in this Complaint clearly illustrates that the Respondent’s initial intentions for securing the domain was in bad faith.

6. Moreover it is likely that consumers would associate the domain with the Complainant as it is not uncommon for businesses to secure the .org domain to reflect their business name.

7. Moreover, offering similar services of a pornographic nature is likely to tarnish the goodwill attached to the Complainant’s trademarks where the average consumer in the relevant market will likely associate the FACEPARTY trademarks with pornography and indecent pictures. The Complainant does allow pictures of an adult nature to be uploaded to its website however such material is provided under a secure adult verification system which prevents those website users under the age of 18 access to this material.

8. The Respondent’s change in use of the domain is as a direct result of the undisputed contents of the Complainant’s authorised representative’s letter dated November 1, 2004. To allow the Respondent to continue its current non-commercial use ignores the use of the domain in bad faith as set out in this Complaint. The Respondent’s use of the domain has not been bona fide, fair or legitimate. The domain was registered by the Respondent who was fully aware of the Complainant’s business activity. It is submitted that the domain was chosen and registered on account of its identical nature to that of the Complainant’s trademarks.

9. There exists a significant risk that should the domain remain registered to the Respondent it will either be used in a misleading manner, sold and transferred to another for unlawful use and /or for purposes inconsistent with the Policy, or sold to the Complainant for an amount prohibited in §4 (b)(i) of the Policy.

10. Failure to transfer the domain will result in the Complainant expending unnecessary resources to constantly monitor the domain for abuses and /or other illegitimate purposes and /or the sale and /or transfer of the domain to another who may be like-minded to conduct activities and /or otherwise unlawfully disrupt the Complainant’s business activities. Based on the evidence and use made of the domain by the Respondent to date, the risk of continuing frustration and /or damage to the Complainant’s trademarks and reputation thereof and confusion in the market place, is significant and real.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Apart from the generic top level part of the Domain Name .org, which can be ignored for the purposes of the Policy, the Domain Name is identical to the Complainant’s registered trademark FACEPARTY. As such the Panelist finds that the Domain Name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint. It has used the Domain Name for adult Internet chat services similar to the Internet chat services provided by the Complainant for which the Complainant has a registered trademark and prior reputation and therefore cannot be said to have used the site for a bona fide offering of goods and services. The Respondent does not appear to have any trademark rights in the FACEPARTY name. There is no evidence that the Respondent has been commonly known by the FACEPARTY name. The Complainant has not given the Respondent any consent for use of the FACEPARTY name. Whilst the Domain Name is currently linked to photographs of two cats, this use commenced after complaint was made of the commercial use being made of the name by the Respondent. As such this non commercial use is not genuine, legitimate or fair. The Panelist finds that the Respondent has no right or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:

(i) the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct: or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Respondent has not offered to sell the Domain Name to the Complainant.

There does not appear to be any evidence that the Respondent has engaged in a pattern of activity relating to blocking trademark owners from registering their trademarks as domain names.

However, the Respondent does appear to have been engaged in competing services to that of the Complainant. Whilst it is no longer doing so on the site attached to the Domain Name, its ownership of the <freesexcommunity.com> name and use of the <faceparty.org> subdirectory does suggest an ongoing interest in the business area of Internet communications services and the Panelist believes that due to Respondent being involved in this area and the distinctive nature of the FACEPARTY name the Respondent must have been aware of the Complainant’s activities at the time of registration of the Domain Name. Further the posting of pornographic images on the site and the subsequent linking of a Domain Name consisting of the Complainant’s trademark to a picture of two cats with no obvious reason for this or link to the FACEPARTY name does appear to be intentionally disruptive. As such the Panelist is prepared to accept that the Respondent intended to disrupt the business of the Complainant.

The fact that the Respondent chose a domain name directly reflecting the Complainant’s trademark and used it for business services similar to those of the Complainant also suggests that the Respondent intended to divert traffic intended for the Complainant’s site to his own. Members of the public looking for the Complainant’s site searching against FACEPARTY may arrive at the Respondent’s site instead by mistake. The Respondent could have chosen a domain name which on face value would not be thought to be owned by the Complainant and would not have been likely to disrupt and divert the Complainant’s business. As such the Panelist holds that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

Accordingly the panelist is of the view that the Respondent has registered and used the name in bad faith.

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 name <faceparty.org> be transferred to the Complainant.

Dawn Osborne
Sole Panelist

Date: March 23, 2005