Beautiful People Magazine, Inc. has just been found guilty of Reverse Domain Name Hijacking (RDNH)
The Magazine filed a UDRP on five domain names:
The three member panel of Jeffrey M. Samuels Esq., Jonathan Hudis Esq. and Alan L. Limbury Esq. found the Complainant knew it could not prove bad faith registration of the domain names beautifulpeople.net and beautifulpeople.com, and knew of the domain name holders “unassailable legitimate interests in the domain names and nevertheless brought the Complaint in bad faith”.
Here are the highlights:
On February 21, 2002 Respondent registered the domain name (not the subject of these proceedings) and then began offering online dating and social networking services through that website.
Respondent continued to offer such services via the and domain names, which were registered by Respondent on August 15, 2003 and September 29, 2005 respectively.
On May 5, 2008, Complainant filed an intent to use Application for federal registration in the United States of the trademark BEAUTIFUL PEOPLE IN ACTION for “Entertainment services, namely, conducting contests designed to promote socially beneficial goals”. This mark was registered on September 21, 2010, No. 3850644, citing August 31, 2009 as the date of first use in commerce.
On December 13, 2010, Complainant filed an intent to use Application for federal registration in the United States of the trademark BEAUTIFUL PEOPLE MAGAZINE, US Application 85196831, for “Downloadable electronic publication, namely general interest magazine featuring philanthropy, fashion, health, food, world issues, travel, art and entertainment”. The Application was published for opposition on January 17, 2012. In February, 2012 Respondent filed an opposition to the Application (“the Opposition Proceedings”). The opposition was dismissed with prejudice on March 19, 2014 and the Application resulted in Registration No. 4653099 for the BEAUTIFUL PEOPLE MAGAZINE mark, disclaiming “magazine”, which issued on December 9, 2014, citing October 12, 2014 as the date of first use in commerce.
On February 7, 2011, Respondent filed an Application for U.S. federal trademark registration of BEAUTIFUL PEOPLE for dating services. Registration was refused on May 7, 2011 on the ground that the mark was purely descriptive. On March 10, 2011, Respondent applied to register BEAUTIFUL PEOPLE for entertainment services. Registration was refused on January 8, 2015 on the ground of likely confusion with Complainant’s BEAUTIFUL PEOPLE MAGAZINE mark.
On November 4, 2011 Respondent registered the domain name beautifulpeoplegay.com and gaybeautifulpeople.com
On June 1, 2012 Respondent registered the domain name beautifulWomenOnly.com domain name. Respondent has used those domain names to offer online dating and social networking services.
By letter dated December 12, 2014, Complainant’s attorney wrote to Respondent’s attorney offering to license Respondent one or more of Complainant’s marks (registered and applied for) for an annual down payment of between 4 and 12 million dollars US plus monthly payments of between 300,000 and 1 million dollars US. Respondent did not reply.
The domain names , and are not identical but are confusingly similar to the marks in which Complainant has rights. The domain name is neither identical nor confusingly similar to Complainant’s marks.
Respondent’s registrations of the and domain names and their use to offer dating services predate Complainant’s registration and first use of the BEAUTIFUL PEOPLE IN ACTION and BEAUTIFUL PEOPLE MAGAZINE marks by several years. Although the , and domain names were registered after the registration and first use of Complainant’s BEAUTIFUL PEOPLE IN ACTION trademark, the use of all the domain names in accordance with their descriptive meaning to offer dating services indicates that Respondent was not intending to target Complainant’s trademark and establishes that Respondent has legitimate interests in the domain names and has not acted in bad faith.
Complainant has engaged in reverse domain hijacking.
Complainant has rights in the trademarks BEAUTIFUL PEOPLE MAGAZINE and BEAUTIFUL PEOPLE IN ACTION.
The Panel finds none of the domain names to be identical to either of Complainant’s marks.
As to confusing similarity, Complainant says the domain names have a similar appearance, sound, and commercial impression as Complainant’s marks; the goods and services provided under the domain names, namely dating services, calendars, and a reality TV show, are similar to goods/services sold by Complainant; and the consumer markets and trade channels through which Respondent sells services/goods are similar to those of Complainant, in that Complainant and Respondent sell goods and services via the Internet.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No.D2001-1121, and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
Applying this test to the domain names here at issue, the Panel finds the domain names , , and to be confusingly similar to Complainant’s marks, since they all juxtapose the words “beautiful” and “people”, being the dominant elements of Complainant’s marks. The addition of the word “gay” as a prefix and as a suffix does not detract from those dominant elements sufficiently to negate confusing similarity. In relation to these domain names, Complainant has established this element.
The domain name does not include the word “people” and adds to the common descriptive word “beautiful” the words “women” and “only”. The Panel does not find this domain name to be confusingly similar to either of Complainant’s marks.
Complainant has not established this element in relation to the domain name and Complainant’s request for transfer of that domain name must be denied.
Although references hereafter in this determination to “the domain names” are references only to the , , , and domain names, the Panel’s findings in relation to the , and domain names would apply equally to the domain name.
Rights or Legitimate Interests
Complainant’s assertions on this element are that Respondent has no state, federal or common law trademarks in the US for “beautiful people”, “beautifulpeople.com” or any variants and that Respondent’s US trademark application filed on February 7, 2011 for BEAUTIFUL PEOPLE for dating services was refused registration because the examiner found it merely descriptive. These assertions are irrelevant, since the question to be decided is not whether Respondent has a valid trademark but whether Respondent has rights or legitimate interests in the domain names.
Complainant also asserts that Respondent’s use of the domain names has been and is “merely descriptive”; that Respondent has never had any other rights in the domain names, certainly not since the registration of Complainant’s marks; and that Respondent is making purely commercial use of the domain names so this is not a fair use situation.
The Panel considers that the making of purely commercial use of descriptive domain names in accordance with their descriptive meaning, without more, does not amount to a prima facie showing of absence of rights or legitimate interests in a domain name on the part of the registrant.
Although it is doubtful that Complainant’s mere assertion that Respondent has never had any rights in the domain names does make such a showing, the Panel nevertheless proceeds on the basis that it does, and that Respondent bears the onus of establishing that it does have rights or legitimate interests in the domain names.
The Panel is clearly of the view that Respondent has done this.
Whether or not Respondent has trademark rights in BEAUTIFUL PEOPLE and BEAUTIFULPEOPLE.COM as Respondent asserts Respondent has provided evidence that, beginning many years prior to the first use and subsequent registration of either of Complainant’s trademarks, Respondent has used the and domain names to provide online dating services, calendars and in connection with a television show and that, subsequent to the registration of Complainant’s BEAUTIFUL PEOPLE IN ACTION mark, has used the and domain names for the same purpose.
Accordingly, Respondent has established that it has rights and legitimate interests in the domain names and Complainant has failed to establish this element.
Registration and Use in Bad Faith
The Panel does not accept that Respondent is acting in bad faith by continuing to maintain registrations for the domain names and by refusing to respond to Complainant’s offer to license marks for at least 1 million dollars US per annum plus monthly payments of at least 300,000 US dollars.
Although Joshua Domond, a co-owner of Complainant, who may be treated as Complainant for present purposes, filed an application on December 10, 2007 to register the mark BEAUTIFUL PEOPLE MAGAZINE, on the basis of claimed actual use as of the date of filing; that application was abandoned because the applicant was unable to provide any evidence of use of the mark as of the date of filing or at all. The Panel does not regard that application as affording any basis for the conclusion that Complainant ever used that mark prior to October 12, 2014.
The registrations of the and domain names and Respondent’s commercial use of them preceded by some years the filing of Respondent’s intent to use applications to register the BEAUTIFUL PEOPLE IN ACTION and BEAUTIFUL PEOPLE MAGAZINE marks.
Under these circumstances there is no evidence before the Panel which could justify an inference that Respondent had Complainant or its marks in mind when registering the and domain names.
The and domain names were registered by Respondent after the registration of Complainant’s BEAUTIFUL PEOPLE IN ACTION mark and after the filing of Complainant’s application to register the BEAUTIFUL PEOPLE MAGAZINE mark; and also after Respondent applied to register the mark BEAUTIFUL PEOPLE on February 7, 2011, serial No. 85236075, and on March 10, 2011, serial No. 85264026.
The Panel considers there is no evidence from which the conclusion can properly be drawn that, when registering the and domain names, Respondent was aware of Complainant’s registration or use of the BEAUTIFUL PEOPLE IN ACTION mark nor of Complainant’s application to register the BEAUTIFUL PEOPLE MAGAZINE mark, which was not published for opposition until January 17, 2012.
There is no place under the Policy for the concept of constructive knowledge because the essence of the Complaint is an allegation of bad faith targeted at the Complainant. This requires the cybersquatter to have actual knowledge of the trade mark owner or of the trademark. See: The Way International Inc. v. Diamond Peters, WIPO Case No. D2003-0264 and Asset Marketing Systems, LLC v. Silver Lining, WIPO Case No. D2005-0560.
Accordingly, the Panel finds that Complainant has not shown that Respondent had Complainant or either of its marks in mind when registering the and domain names nor that Respondent registered those domain names in bad faith.
Given the descriptive nature of Complainant’s marks, even if Respondent were shown to have had knowledge of Complainant or either of its marks when registering the and domain names, such knowledge alone would not suffice to establish bad faith registration, as would be the case were Complainant’s marks inherently distinctive and very well known. See Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. More would be needed, such as evidence from which could be inferred intent to take advantage of the goodwill in Complainant’s marks.
The Panel therefore finds that none of the domain names were registered in bad faith.
All of the domain names, including those registered after the Complainant’s first use of its BEAUTIFUL PEOPLE IN ACTION mark on August 31, 2009, have been used consistently to promote the legitimate online dating services Respondent has offered since 2002 via the domain name . Accordingly, the Panel finds that none of the domain names have been or are being used in bad faith.
Reverse domain name hijacking
The Complainant was well aware, when it filed this Complaint on February 26, 2015, that Respondent is and has long been using the domain names descriptively in commerce to provide legitimate dating services.
Complainant was also aware when it filed this Complaint that Respondent registered the and domain names before Complainant had ever used either of its marks and that Respondent’s and domain names, although registered after registration of Complainant’s BEAUTIFUL PEOPLE IN ACTION mark, have also been and are being used descriptively in commerce to provide legitimate dating services.
Under these circumstances the Panel concludes that Complainant knew it could not prove bad faith registration of the and domain names, knew of Respondent’s unassailable legitimate interests in the domain names and nevertheless brought the Complaint in bad faith.
Accordingly, the Panel finds Complainant to have engaged in Reverse Domain Name Hijacking.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the , , , , and domain names REMAIN WITH Respondent.