The Complainant is AC Webconnecting B.V. of Rotterdam, The Netherlands, represented by Merk-Echt B.V., of Breda, The Netherlands.
The Respondent is SC VIRTUAL MEDIA SRL of Roman, Neamt, Romania.
2. The Domain Name and Registrar
The disputed domain name <xlovecam.ro> (the “Domain Name”) is registered with Romanian Top Level Domain (“RoTLD”) through its partner Alfa Web SRL.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2010. On January 19, 2010, the Center transmitted by email to RoTLD a request for registrar verification in connection with the disputed domain name. On January 20, 2010, RoTLD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. RoTLD in its reply to the Center also indicated the language used for the registration of the disputed domain name was Romanian. The Complaint having been filed in English, on January 22, 2010 the Center sent Language of Proceedings documents to the parties, requesting comments on the issue of language. The Complainant filed its submissions on the Language of Proceedings documents on January 22, 2010.
On January 29, 2010, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2010. The Response was filed with the Center on February 16, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 23, 2010. 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.
In its email to the parties of January 29, 2010, the Centre noted that the Complaint was submitted in English, the language of the registration agreement was Romanian, and the Complainant had submitted a request that English be the language of the proceedings. The Respondent did not make any submission in relation to the Language of Proceedings documents. Given the submissions and the circumstances of the case, the Center stated that it would to accept the Complaint written in English, accept a Response filed in either Romanian or English, and appoint a panel familiar with both languages, if possible.
In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. The Panel considers that the most appropriate language for the Panel's decision is English. The Panel notes that the website at the Domain Name is in English and that the Center has given both parties to opportunity to comment, and the Respondent has not done so. Further, Respondent submitted his Response in English on February 16, 2010.
On March 5, 2010 the Panel issued Procedural Order No. 1, requesting further information from the Complainant and the Respondent in relation to the Complainant's affiliate program, and the Respondent's involvement with that program. The deadline for the parties' submissions was March 10, 2010. The date for the transmittal of the panel's decision was accordingly extended. On March 9, 2010 the Complainant submitted a response to the Panel's request. The Respondent submitted its response on March 12, 2010.
4. Factual Background
The Complainant is the owner of Community Trademark No. 005506241 for XLOVECAM. The application for the mark was filed November 28, 2006 and the mark was registered on October 17, 2007. The mark is registered in class 38 for “broadcasting, dissemination and transmission of visual images, audio information, graphics, data and other information, using radio, telecommunications apparatus, electronic media or the Internet.”
The Complainant is the registrant of the domain name <xlovecam.com>, and is listed on the website to which the domain name resolves as the website publisher. This website appears to offer video footage of online models to members, who enroll to obtain access to live streaming broadcasts. The WhoIs report indicates that the <xlovecam.com> domain name was registered in January, 2006.
The Respondent registered the Domain Name on December 16, 2007. At the time of the Panel's decision, the Domain Name resolved to a website offering similar services as those offered on “www.xlovecam.com”.
5. Parties' Contentions
A. Complainant
The Complainant's particular contentions can be summarized as follows:
(a) the Complainant has rights in the XLOVECAM mark, by virtue of the registration of XLOVECAM as Community Trademark No. 005506241;
(b) the Respondent has used the Complainant's XLOVECAM mark as the main part of the Domain Name;
(c) as the Domain Name was registered on December 16, 2007 after the Complainant's XLOVECAM mark was filed and registered, the Respondent should be presumed to have had notice of the Complainant's mark;
(d) the Respondent has not obtained any authorisation from the Complainant to use its XLOVECAM mark;
(f) as the Respondent is a direct competitor of the Complainant, there is a real likelihood of confusion between the Complainant's mark and the Respondent's Domain Name;
(g) the Respondent is intentionally using the Domain Name to misleadingly divert consumers from the Complainant and for commercial gain; and
(h) the Respondent has continued to use the Domain Name despite the Complainant's efforts to resolve the dispute informally.
B. Respondent
The Respondent's particular contentions can be summarized as follows:
(a) The Respondent does not use the Domain Name for the purposes set out in the Complainant's mark registration (i.e. within class 38);
(b) the Domain Name uses the “.ro” domain suffix;
(c) when the Domain Name was registered, on December 16, 2007, the registration of the Complainant's mark was still pending; and
(d) the Domain Name is not being used in bad faith, as the Respondent was an affiliate partner of the Complainant's affiliate program, until the Complainant withdrew the Respondent's affiliate account.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant must first establish that there is a relevant trademark or service mark in which it has rights. If the Complainant owns a relevant registered trademark, this satisfies the threshold requirement of having trademark rights, regardless of the category of goods and services in respect of which the mark is granted: Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano,
WIPO Case No. D2003-0661; Peter Voigt v. Niels Korte,
WIPO Case No. D2006-1460.
As the Complainant holds a Community Trademark for XLOVECAM, the Panel finds that the Complainant's rights have been established, and it is unnecessary for the purposes of the first element to consider the Respondent's contention that the Respondent's use of the XLOVECAM mark does not fall within the class in which the Complainant's mark is registered. However, the Panel notes that the content of the website to which a disputed domain name resolves is irrelevant to the question of whether the domain name is identical or confusingly similar to a Complainant's mark: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,
WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,
WIPO Case No. D2001-0110.
The Domain Name incorporates the Complainant's XLOVECAM trademark in its entirety. The addition of the domain suffix “.ro” does not add sufficient distinctive matter to negate a finding that the Domain Name is identical or confusingly similar: Caja de Ahorros y Monte de Piedad de Madrid v. INFORMATION LATIN AMERICAN TRADE,
WIPO Case No. D2009-0410; Uniroyal Engineered Products, Inc. v. Nauga Network Services,
WIPO Case No. D2000-0503.
The Panel finds that the first element of paragraph 4(a) of the Policy is established, and the Respondent's Domain Name is identical to the Complainant's mark.
B. Rights or Legitimate Interests
On the issue of whether the Respondent has any rights or legitimate interests in respect of the Domain Name, the Complainant relies on the fact that it has not licensed or authorised the Respondent to use the XLOVECAM trademark in any way, and that the Respondent's use of the Domain Name does not amount to legitimate, noncommercial or fair use under paragraph 4(a)(ii) of the Policy.
The Domain Name points to a website that appears to be a direct competitor to the Complainant's “www.xlovecam.com” website. It is the Respondent's position, both before the Panel and in previous correspondence with the Complainant, that at the time the Domain Name was registered, the Complainant's trademark was pending and therefore the Respondent's use of the Domain Name is legitimate. However, the Panel notes from its own searches of the CTM-Online trademark registry that the Complainant's trademark was registered on October 17, 2007, before the Domain Name was registered. In any case, the fact that a disputed domain name predates a Complainant's trademark may only be relevant to the issue of whether a Respondent has registered and used a domain name in bad faith: AB Svenska Spel v. Andrey Zacharov,
WIPO Case No. D2003-0527; Digital Vision, Ltd v. Advanced Chemill Systems,WIPO Case No. D2001-0827.
In its Response, the Respondent submitted that it was an affiliate account holder of the Complainant's affiliate program. Owing to the lack of evidence produced by either party in this regard, the Panel considered further information was necessary to determine whether the Respondent had any rights or legitimate interests in the Domain Name.
Accordingly, the Panel issued Procedural Order No. 1 (the “Order”), requesting further information on the Complainant's affiliate program and the Respondent's involvement with it.
In its submission in reply to the Order, the Complainant made two claims. First, the Complainant contended that the Respondent had never been an affiliate member of the Complainant's affiliate program in relation to the website associated with the Domain Name. The Respondent had been an affiliate member in relation to another website owned by the Respondent, until the present dispute arose, and the Complainant locked the affiliate account. Secondly, the Complainant provided a copy of the terms of conditions to its affiliate program, and pointed out that the terms and conditions clearly state that an affiliate is “not permitted to bid on, purchase or otherwise register/use the Company's trademarked names, Xlove, Xlovecam, Xlovegay and CleoVideo in any
domain name or as a subdomain name in any gTLDs and ccTLDs.”
The Respondent submitted a response to the Order on March 12, 2010, two days after the deadline for the parties' submissions. As to whether the Panel should accept and consider the Respondent's late submission, the Panel notes that under paragraph 10(b) of the Rules the Panel must ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case, and the Panel has the discretion to decide whether exceptional circumstances exist under paragraph 14(a) of the Rules. Accordingly, the Panel has decided to take the Respondent's submission into consideration, although, for the reasons mentioned below, the Panel considers that the submission does not advance the Respondent's case, but instead provides further support for the Complainant's submissions.
Having reviewed the submissions of both parties, the Panel accepts that, while the Respondent may have been a member of the Complainant's affiliate program, such membership was not in relation to the website attached to the Domain Name, but to another website owned by the Respondent. The website related to the membership is relevant to the issue of whether the Complainant had knowledge of the Respondent's use of the Domain Name. The Panel considers that inter alia, as the Domain Name was not the domain name listed with the Complainant as part of the affiliate membership, no consent or acquiescence on the part of the Complainant as to the Respondent's use of its XLOVECAM mark can be inferred.
The Respondent has directed the Panel to the following statement, which appears on the
FAQ section of the Complainant's website “www.acwm.biz”:
Xlove, Xlovecam, Xlovegay and CleoVideo are registered trademarks and we currently do not transfer any rights to our brands. We won't say “don't buy domains containing our trade marks in it” - if you do it, it is at your own risk. If we feel that you're using our trademarks in bad faith, (like sending the traffic from these domains to our competitors or cloning our sites and pretending yours are official etc.) we won't hesitate to take action to protect our brands.
The Respondent also quoted this statement in a letter to the Complainant on June 20, 2009 (provided by the Complainant to the Center as part of the Complainant's submission on the Language of the Proceedings). However, the Panel considers that this statement supports the Complainant's case, as it indicates that the Respondent had notice of the Complainant's rights in the XLOVECAM trademark, and speaks against the Respondent accruing any rights or legitimate interests in the Domain Name through its use in this case.
The statement on Complainant's “www.acwm.biz” website also gives notice that the Complainant did not transfer rights in its trademarks. Likewise, even if the Respondent had been considered a member of the Complainant's affiliate program in relation to the Domain Name and its associated website, that membership would not have granted the Respondent any right or license to use the Complainant's marks, a fact which the Respondent was well aware of, from the terms and conditions that the Respondent accepted as a member in relation to its other website. The Panel therefore considers that the Respondent had no bona fide reason under the Policy to use XLOVECAM mark as part of its Domain Name other than to associate itself with the business and goodwill of the Complainant, which is not a legitimate use: Philip Morris Incorporated v. Alex Tsypkin,
WIPO Case No. D2002-0946. Accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
In this case, the inquiry into whether the Respondent registered and used the Domain Name in bad faith is closely related to the inquiry into whether the Respondent had any rights or legitimate interests in the Domain Name.
As mentioned above, the Respondent has claimed that the Complainant's trademark was registered after the Respondent registered the Domain Name. The Complainant's <xlovecam.com> domain name was registered in 2006. Taking this into account and the fact that, as the Panel has already noted, the Complainant's trademark now appears to have been registered before the Domain Name, the Panel considers that the Respondent must have known of the Complainant at the time the Domain Name was registered.
Furthermore, the evidence clearly shows that the Respondent had actual notice of the Complainant's rights in the XLOVECAM mark, and was aware that the Complainant not only did not authorise the use of its marks, but would take action to protect its interests in relation to them. Nevertheless, the Respondent chose to register the Domain Name, and use it to point to a website offering identical services to those of the Complainant.
The Panel considers that the aim of the Respondent in doing this was to take advantage of the likelihood of confusion between the Complainant's rights and website and the Respondent's website, and to use this confusion to direct Internet users to the Respondent's own competing website. The circumstances of the case clearly indicate bad faith on the part of the Respondent, so that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <xlovecam.ro> be transferred to the Complainant.
Gabriela Kennedy Sole Panelist
Dated: March 15, 2010
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