NP Factory Werbeagentur GmbH and Nastroje P. GmbH & Co. KG v. Demurrelt Enterprises Limited
Case No. D2007-1858
1. The Parties
The Complainant is NP Factory Werbeagentur GmbH and Nastroje P. GmbH & Co. KG, VS-Schwenningen, Germany, represented by Zenk Rechtsanwälte, Hamburg, Germany.
The Respondent is Demurrelt Enterprises Limited, Lakatamia, Cyprus, represented by Piccionelli & Sarno, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pussydeluxe.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2007. On December 17, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On December 17, 2007, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 December 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2008. The Response was filed with the Center on January 10, 2008.
The Center appointed John Swinson as the sole panelist in this matter on January 24, 2008. 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.
On January 22, 2008, the Complainant filed a Supplemental Filing with the Center. In the Rules, no express provision is made for Supplemental Filings. However, the Panel has reviewed the Supplemental Filings (which comprise English translations of the Complainant’s registered trademark certificates) and decided that the Supplemental Filings have no bearing on this decision.
4. Factual Background
The Complainant is a German-based company which sells, among other things, clothing, bags and cosmetics. The Complainant uses “Pussy Deluxe” as a brand for a particular range of its goods. The Complainant operates a website which offers these goods for sale from “www.pussydeluxe.de”.
The Complainant has applied for several trademarks relating to PUSSY DELUXE, including a Community Trademark application (No. 006400774) for the words “Pussy Deluxe”, which was filed on October 17, 2007. The Complainant owns German trademark registrations for PUSSY DELUXE word and image, where the earliest registration date is February 8, 2001.
The Respondent operates an adult entertainment business. It currently uses the disputed domain name for an adult-oriented pornographic website.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
The Complainant has various word and device trademarks over PUSSY DELUXE (for example EM5036793, DE30354142, DE30101238, DE30248189, EM04608221 and IR00803405). These trademarks have been used for several years, and from as early as 2001.
The Complainant uses the PUSSY DELUXE trademark in relation to women’s clothing, bags and cosmetic goods. The PUSSY DELUXE trademark is well-known in German speaking countries, particularly amongst young women. The Complainant does not want its good or services (which have a good reputation) to be confused with pornographic services (which are offered by the Respondent from the disputed domain name).
The Complainant has a website at “www.pussydeluxe.de”.
Because women appearing on the Respondent’s website wear make-up and underwear, consumers are likely to think that the Respondent’s goods and services and the same as or related to the Complainant’s goods and services.
The Respondent does not have any trademark, or company name, related to “Pussy Deluxe”. The Respondent is using the Complainant’s well-known trademark to mislead customers into using the Respondent’s pornographic website.
By coloring the website bright pink, the Respondent is copying the colors of the Complainant’s website and creating further likelihood of confusion.
There is no reason why the Respondent should be allowed to offer pornographic services by using the Complainant’s trademarks.
The Respondent is intentionally attempting to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks.
B. Respondent
The Respondent makes the following contentions:
The trademark registration details provided by the Complainant are un-translated versions and not certified. There is no evidence that these marks are valid and subsisting and the Complainant has not provided evidence relating to its reputation in these marks, or the lengths it has gone to advertise them. Any reputation the Complainant has is limited to German speaking countries, so the Respondent’s use of the disputed domain name should not affect this market.
The Complainant’s contentions that its trademarks are used on certain goods and in advertisements has not been supported (by way of evidence contained in the complaint).
The disputed domain name was first registered around May 20, 2000, and was transferred to a related affiliate of the Respondent in June 2002.
The Respondent’s use of the disputed domain name has been consistent and constant since registration - it has always been used for the purpose of adult entertainment.
The Complainant primarily uses the term “Pussy Deluxe” in association with a cat image, and the word “deluxe” is four times larger than the word “pussy”. In comparison, the Respondent uses “PUSSY DELUXE” on its website in capital letters, of the same font and size, with no other images or designs.
It is clear to consumers on entering the website that the disputed domain name offers services related to adult entertainment, and they would not believe that this website is associated or connected with the Complainant’s trademarks. The Respondent (or its affiliate) has used the website for adult entertainment purposes consistently since May 2000, and it is clearly not used for the sale of clothes, cosmetics or any other goods (even if women appear on the website in underwear or makeup).
The Respondent’s website and the Complainant’s website have co-existed without any consumer confusion, so any similarity between the disputed domain name and the Complainant’s trademark has no effect in the marketplace.
The Complainant’s true motivation in bringing this action is to acquire the “.com” domain of its trademark, as this is the domain name that receives the most Internet traffic. Evidence suggests that the Complainant created its “www.pussydeluxe.de” website on April 9, 2002, which is two years after the disputed domain name was registered.
At the time the disputed domain name was first registered, the Respondent (or its predecessor) were not aware of the Complainant, or any of their trademark rights. The Respondent has used the disputed domain name in connection with a bona fide offering of services, before any notice of this dispute. The Respondent’s use of the name has been legitimate and not for the purpose of diverting customers from the Complainant, or to capitalize on the Complainant’s goodwill.
The Respondent did not intentionally copy the colour of the Complainant’s website. According to an website archive, the Complainant’s website was red until April 2006, and pink is a natural colour choice for an adult entertainment site. The Respondent has not provided evidence that consumers associate the colour pink with the Complainant’s website.
The term “pussy” in the disputed domain name is descriptive of the services offered.
The Respondent has never offered the domain name for sale or licensing to the Complainant. As the Respondent had no knowledge of the Complainant, the Respondent did not register the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Complainant has failed to show any bad faith use or registration by the Respondent. The Respondent (or its affiliate) registered the disputed domain name prior to the alleged first use of the Complainant’s trademark.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant has registered PUSSY DELUXE as a word and device trademark in Germany (see for example registered trademarks 30354142, 30101238 and 30248189).
The Respondent contends that as the Complainant’s trademark is primarily used in Germany, it will not be adversely affected by the Respondent’s use of the disputed domain name, given the geographical difference between the two entities.
However, the location of the trademark registration is irrelevant in determining whether the Complainant owns registered trademark rights in PUSSY DELUXE (see for example Uniroyal Engineered Products, Inc. v. Nauga Network Services,
WIPO Case No. D2000-0503). The German trademark registration system requires examination of trademarks. The Panel finds that the Complainant’s registrations are valid registrations under the UDRP for the purpose of this decision.
The disputed domain name is identical to the word component of the Complainant’s registered trademarks.
It is well established that the suffix “.com” is an irrelevant distinction that does not change the likelihood for confusion. There is no doubt that the disputed domain name is identical to the Complainant’s registered trademark.
There is no requirement under paragraph 4(a)(i) of the Policy in these instances to prove reputation or use of the trademark, or to provide certified registration certificates.
Accordingly, the Panel finds that the first element has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Complainant contends that the Respondent has no trademark application or company name which is connected with the term “Pussy Deluxe”, and appears to rely on paragraph 4(c)(iii) of the Rules to show that the Respondent lacks rights or legitimate interests.
In response, the Respondent states that the Respondent have been using the disputed domain name in connection with adult entertainment since at least June 2002 and its predecessor affiliate since May 2000. (The Respondent has not provided any details of its predecessor, or the entity who first registered the disputed domain name in May 2000 and so the Panel will not consider use of the disputed domain name by the predecessor to be use by the Respondent). The Respondent asserts that this constitutes a legitimate interest because the Respondent was not aware of the Complainant or their trademark rights, and was making a bona fide offering of services prior to any notice of the dispute.
The Respondent also notes that the disputed domain name is merely descriptive of the services it provides. It has previously been held that a respondent can have a legitimate interest where it uses a generic word to describe the services or business, and to profit from those services, without any intention to take advantage of the Complainant’s trademark rights (see for example Allocation Network GmbH v. Steve Gregory,
WIPO Case No. D2000-0016). The term “pussy” is a common term used in the domain names of pornographic websites, and is defined in the Microsoft Encarta dictionary to have the following as a meaning “an offensive term for women regarded as a source of sexual pleasure”. The term “pussy” when used in a Google search, is filtered out when the Google SafeSearch option is activated. When combined with the term “deluxe” (which means of superior quality), “pussy” could plausibly describe a high quality website where pornographic pictures of females can be found. The Respondent is using the disputed domain name to offer services directly related to pornography, and profit from those services.
The Respondent first acquired the disputed domain name in June 2002. The Respondent has been operating in the adult entertainment industry for some time, and the disputed domain name has been used to offer adult entertainment services for the entire time the Respondent has controlled it. The Complainant’s earliest trademark registration is February 8, 2001, however this is the only mark that was registered before the Respondent acquired the disputed domain name.
The Complainant has not provided any evidence which might indicate that Respondent knew or should have known of the Complainant’s trade name or trademark registrations, such as a wide reputation of or extensive publicity in connection with Complainant’s trademarks. The Complainant states that its trademarks are well known in German speaking countries, and therefore it is not unreasonable to conclude that the Respondent may well have had no knowledge of the Complainant’s trademarks when it obtained the disputed domain name.
From the lack of evidence provided by the Complainant relating to its reputation, and the fact that the disputed domain name has a generic meaning which corresponds with the content on the website, the Panel is unable to conclude that the Respondent had or should have had knowledge of the Complainant or its trademark at the time it registered the disputed domain name. The Panel also notes that prior to any notice of this dispute the Respondent used the domain name in connection with a seemingly bona fide offering of services, in accordance with paragraph 4(c)(i) of the Policy.
The Panel is satisfied on balance that Respondent registered the disputed domain name with the intention of offering adult services, and accordingly chose the name based on its generic meaning. The Respondent has apparently used the disputed domain name to make a bona fide offering of services which are not related to or in competition with the Complainant’s services. Accordingly, it does not appear that the Respondent has attempted to divert the Complainant’s customers or to intentionally tarnish the Complainant’s trademarks.
The Panel finds that the second element has not been met.
C. Registered and Used in Bad Faith
Since the Respondent has a legitimate interest in the disputed domain name, it is not necessary for the Panel to consider bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson Sole Panelist
Dated: February 6, 2008
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