Path Media Holdings, LLC (“Complainant”) just suffered what appears to be its 1st loss on a UDRP on its Girls Gone Wild Trademark on the domain name girlsgonewild.name
And here’s the most amazing part, the domain holder did not even respond to the complaint.
At the end of the day, the domain name at issue was registered a year before the trademark was filed and the pre-registration of the domain to the trademark carried the day.
Here are the relevant facts and findings by the panel:
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its GIRLS GONE WILD mark (Reg. No. 4,010,741 filed June 18, 2007; registered August 16, 2011).
Respondent registered the girlsgonewild.name domain name on February 3, 2006.
The second question is whether Respondent’s girlsgonewild.name domain name is identical or confusingly similar to the GIRLS GONE WILD mark.
Respondent has chosen to take Complainant’s GIRLS GONE WILD trademark and to use it in his domain name, creating the likelihood that internet users would assume that it was an official domain name of Complainant and that , if used, it would lead to an official website of Complainant;
Complainant does not make any contentions regarding whether or not Respondent is commonly known by the girlsgonewild.name domain name.
As Respondent did not respond to this case, the Panel nevertheless notes that Respondent failed to submit evidence that he is commonly known by the disputed domain name and the inference must therefore be that he is not so known. As for the evidence in the record, the Panel notes that the WHOIS information lists “Jim durflo” as the registrant of the disputed domain name, which the Panel finds is not similar to the girlsgonewild.name domain name. Based on the WHOIS information, the Panel therefore finds that Respondent is not commonly known by the girlsgonewild.name domain name for the purposes of Policy ¶ 4(c) (ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the cigaraficionada.com domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
“The Panel finds that Complainant has not established that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
“Complainant’s entire case on the issue of bad faith is as follows: “By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
“No evidence has been submitted to show that this has happened or how it happened. ”
“As panels have said on many occasions, mere assertions are not enough to prove a case and any submissions must be supported by evidence.”
“It is certainly not enough merely to paraphrase provisions of the Policy. ”
If a panel were to accept a case without proper submissions and evidence it would make the Policy a very inadequate and unsatisfactory procedure and it would be unfair to the vast majority of parties who present complete cases with evidence and reasoned arguments and who go to a lot of trouble and expense to do so.”
“Secondly, to allow a case to succeed without proof would be contrary to the plain words of the Policy, which provide that “…the Complainant must prove that each of these three elements are present.”
“The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a) (iii) as it has not proved that the element now under consideration is present.”
“Thirdly and in particular, Complainant asserts that Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s affiliation with the disputed domain name.”
“But Complainant has not provided any evidence or arguments that support those allegations and it is impossible for the Panel to conclude whether they are true or not. ”
“Therefore, the Panel finds that Complainant failed to prove that Respondent registered and uses the girlsgonewild.name domain name under Policy ¶ 4(b) (iv).
“Fourthly, the Panel notes that Complainant’s rights in the GIRLS GONE WILD mark, according to the USPTO trademark registration, date back to June 18, 2007. The Panel notes that Respondent registered the girlsgonewild.name domain name on February 3, 2006. Thus, the Panel therefore concludes that Respondent’s registration of the disputed domain name predates Complainant’s rights in the GIRLS GONE WILD mark.”
” Consequently, the Panel holds, in keeping with established UDRP jurisprudence and practice and consistent with many UDRP decisions, that Respondent could not have registered the girlsgonewild.name domain name in bad faith under Policy ¶ 4(a) (iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).”
“Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.”
“Accordingly, it is Ordered that the girlsgonewild.name domain name REMAIN WITH Respondent.”
Article source: http://www.thedomains.com/2012/05/05/girlsgonewild-loses-its-1st-udrp-on-girlsgonewild-name-the-domain-holder-didnt-even-defend-it/. Creative Commons (CC)
