2nd Jun 2014
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Okruzhnost LLC v. WhoIs Privacy Protection Service, Inc./Six Media Ltd.
Case No. D2014-0373
1. The Parties
The Complainant is Okruzhnost LLC of Penza, Russian Federation, represented by Baker & McKenzie, Russian Federation.
The Respondent is WhoIs Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“USA”) / Six Media Ltd. of Hong Kong, China, represented by ESQwire.com, USA.
2. The Domain Name and Registrar
The disputed domain name <ifunny.com> (“Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on March 11, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 17, 2014.
The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2014. As agreed by the Parties, the extended due date for Response was April 17, 2014. The Response was filed with the Center on April 17, 2014.
The Center appointed Gabriela Kennedy, Nicholas Weston and The Hon Neil Brown Q.C. as panelists in this matter on May 19, 2014. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. The Panel finds that it was properly constituted.
4. Factual Background
The Complainant is a software company that develops mobile applications and websites. The Complainant launched a website “www.ifunny.mobi” and mobile application called iFunny in 2011, which allows users to create and share humorous photos, videos and comics. The Complainant is the owner of the IFUNNY trade mark registered in the Russian Federation on August 27, 2013 (with a priority date of July 5, 2012), and the IFUNNY trade mark registered in the USA on November 5, 2013 and September 17, 2013.
The Respondent is Six Media Ltd, a Hong Kong company. Since 2009, the Respondent has operated the website “www.fakeposters.com”, which contains humorous posters and images. In July 2012 the Respondent acquired the Disputed Domain Name. The Disputed Domain Name resolves to a website that contains humorous content, photos and videos.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Complainant relies on its trade mark rights in the IFUNNY mark, registered in the Russian Federation on August 27, 2013 (with a priority date of July 5, 2012), and in the USA on November 5, 2013 and September 17, 2013. The Complainant also claims common law rights in the IFUNNY trade mark dating back to April 2011, when it first began using it. The Complainant argues that its IFUNNY trade mark is identical to the Disputed Domain Name, save for the generic Top-Level Domain (“gTLD”) extension, which should not be taken into account.
(b) The Complainant argues that the Respondent has no rights or legitimate interests in the Disputed Domain Name, as it was registered and is being used in bad faith. The Respondent has not made any use of, or demonstrated any preparations to use, the Disputed Domain Name in connection with abona fide offering of goods or services.
(c) The Complainant contends that the word “ifunny” is not a generic term. This is based on the figures provided by Google Trends which shows that the use of “ifunny” for any purposes whatsoever remained negligible until July 2011, which was three months after the Complainant launched its “www.ifunny.mobi” website and related application. Further, the Russian Federation and US trade mark offices found that the IFUNNY trade mark was not generic, and was sufficiently distinctive enough in order to enable the mark to be registered. The use of “ifunny” as a keyword in Google searches increased significantly three months after the Complainant launched its “www.ifunny.mobi” website and related application. The Complainant therefore argues that the word “ifunny” gained recognition and secondary meaning in connection with the Complainant’s products, and had become well-known by the time the Respondent acquired the Disputed Domain Name in August 2012.
(d) The website of the Disputed Domain Name contains links to a substantially similar resource (“www.fakeposters.com”), which also contains a link to the Disputed Domain Name. The website in which the Disputed Domain Name resolves and “www.fakeposters.com” have an almost identical concept of funny pictures, and same design and layout, and are hosted at the same IP address. The Complainant therefore argues that these two websites are controlled and operated by the same developers. The “www.fakeposters.com” website has photos dating back almost two years prior to the Complainant’s launch of its products under the IFUNNY mark, and almost three years prior to the Respondent’s acquisition of the Disputed Domain Name. The Complainant therefore argues that the operators and developers of the website that the Disputed Domain Names resolves must have been aware of the Complainant and its IFUNNY products, since they are in the same industry. Further, the Complainant contends that a simple search prior to the acquisition of the Disputed Domain Name would have revealed the Complainant’s rights in the IFUNNY mark.
(e) For the foregoing reasons, the Complainant argues that the Respondent must have registered the Disputed Domain Name with the intent of taking advantage of the Complainant’s IFUNNY mark, by causing confusion between the Complainant’s mark and the Disputed Domain Name in order to divert consumers to the Respondent’s websites. Any use of the Disputed Domain Name in respect of products that compete with those of the Complainant cannot constitute bona fide offering of goods or services or fair use. The Complainant also asserts that the Respondent cannot claim to be using the Disputed Domain Name for legitimate noncommercial or fair use purposes, since the website that the Disputed Domain Name resolves contains sponsored advertisements.
(g) The Complainant maintains that the Respondent registered and is using the Disputed Domain Name in bad faith in order to intentionally attract users for commercial gain, by creating a likelihood of confusion with the Complainant’s IFUNNY mark. Users searching for the Complainant and its IFUNNY products may inadvertently visit the Disputed Domain Name, which could be easily confused with the Complainant’s products. The website that the Disputed Domain Name resolves also increases the likelihood of confusion. The Respondent should have carried out at least some minimum due diligence at the time it acquired the Disputed Domain Name – a simple Google search would have allegedly revealed the use by the Complainant of the IFUNNY mark.
The Respondent’s contentions can be summarized as follows:
(a) The Respondent claims to have registered the Disputed Domain Name because it incorporates a generic term, i.e. it is comprised of the English dictionary word “funny”, and is preceded by the letter “i”, which commonly denotes the Internet.
(b) In 2008, the Respondent allegedly tried to acquire the domain name <funny.com>, but its offer was rejected. In 2009, the Respondent therefore purchased <fakeposters.com>, and launched its website displaying humorous posters and images. The Respondent claims that it later decided to acquire another domain name with broader appeal. As such, the Respondent acquired the Disputed Domain Name on July 30, 2012, and launched a website related to humorous products and images, consistent with the generic meaning of the dictionary word “funny”. The Complainant only filed its IFUNNY trade mark applications on July 5 and July 30, 2012. The actual dates of registration of the Complainant’s trade mark are after the date the Disputed Domain Name was acquired by the Respondent. Therefore, the Respondent contends that it cannot be found to have purchased the Disputed Domain Name in order to target the Complainant, since the Complainant’s IFUNNY trade marks were not registered until a year after the Disputed Domain Name was acquired by the Respondent.
(c) The Respondent also applied for its own trade mark registration for IFUNNY in Hong Kong on July 12, 2013, before it allegedly became aware of the Complainant.
(d) Between September 2012 to September 2013, the Complainant contacted the Respondent to try and purchase the Disputed Domain Name from it. The Respondent informed the Complainant in January 2013 that the Disputed Domain Name was not for sale.
(e) Many third parties have registered other domain names incorporating the word “funny”, and preceded by either the letter “e” or “i”, long before the Complainant’s first alleged use of the IFUNNY mark (e.g. <efunny.com>, <ifunny.net>, <i-funny.com>, etc). The Complainant must have been aware of the extensive and common third-party use of the word “funny” with the letters “i” or “e”, before it launched its products and began using the IFUNNY mark.
(f) The Respondent allegedly registered the Disputed Domain Name based on its common descriptive meaning, in order to profit off of the generic word, and not to target the Complainant or its IFUNNY mark. The Respondent has even registered and used other common word domain names to host comedic and humorous related websites, such as “www.fakeposters.com”. The Respondent is actively using the Disputed Domain Name in connection with the dictionary meaning of the generic word “funny”. Further, the Respondent’s operation and active development in relation to humorous websites predates the Complainant. The Respondent therefore claims to have a legitimate interest and right in the Disputed Domain Name.
(g) The Respondent claims that there can be no finding of bad faith in the absence of any direct proof that the Disputed Domain Name, which incorporates a descriptive term, was used solely to profit from the Complainant’s mark. The Respondent argues that there is no evidence that it knew of the Complainant prior to acquiring the Disputed Domain Name. The Respondent allegedly registered the Disputed Domain Name because it incorporates common dictionary words, and has been using it in a descriptive manner to provide a humorous website.
(h) The use of a proxy service provider was legitimate, and there is no evidence that the Complainant was unable to contact the Respondent or that the Respondent was attempting to avoid the Complainant. The Complainant itself used a proxy service provider to register its <ifunny.mobi> domain name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the IFUNNY trade mark on the basis of its trade mark registrations in the Russian Federation and the USA. The Panel notes that the Complainant did not register the IFUNNY mark until August 27, 2013, September 17, 2013 and November 5, 2013, which is over a year after the Disputed Domain Name was registered by the Respondent in 2012. However, the Panel refers toparagraph 1.4 of the WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identical or confusing similarity under the first element of the UDRP.
Whether the Complainant had rights in the trade mark at the time of registration of the Disputed Domain Names may be relevant to the consideration of the second and third element, but it is not relevant for the purposes of determining whether the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
It is now well-established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the gTLD extension, in this case “.com”, may generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s registered mark, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of proving otherwise. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not granted the Respondent a licence to use the Complainant’s IFUNNY mark. The Panel further notes that the Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Names. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name.
It is widely accepted that even where a complainant owns trade mark registrations for a generic or descriptive term that has been incorporated in a disputed domain name, this does not necessarily mean that the disputed domain name should be automatically transferred to the complainant (see U.S. Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services, NAF Claim No. 365884 <naturedirect.com>; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 <historichotels.com>; The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 <landmarks.com>; Sweeps Vaccuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 <sweeps.com> and Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 <allocation.com>).
Paragraph 2.2 of the WIPO Overview 2.0 sets out factors to be taken into account when determining whether or not a respondent may have rights or legitimate interests in a generic domain name. These factors include the fame of the trade mark in question; whether the respondent has registered other domain names incorporating generic terms; and whether the domain name is used in connection with a purpose relating to its generic meaning.
In this case, the Disputed Domain Name consists of the generic word “funny”, and the letter “i”, which the Panel accepts is commonly used to refer to the Internet. The Disputed Domain Name resolves to a website that contains humorous content and photos (“Website”). The Respondent therefore appears to be using the Disputed Domain Name in a descriptive sense to describe the type of content that is made available via the Disputed Domain Name, i.e. the provision of funny content via the Internet.
As such, in the absence of any direct evidence that the Respondent is targeting the Complainant in any way through use of the Disputed Domain Name, rather than simply using the Disputed Domain Name in a descriptive sense, the Panel is prepared to find that the Respondent’s use of the Disputed Domain Name and the Website constitutes legitimate use under the Policy (see Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; and National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).
The Panel considers its finding supported by other relevant factors, such as registration of the domain name <fakeposters.com> in 2009, which also contains generic words or phrases, and the lack of evidence provided by the Complainant as to its fame and well-known status outside of the USA, particularly in Hong Kong where the Respondent is located. The Panel’s finding is also supported by the fact that the Respondent has been involved in the business of operating a website (“www.fakeposters.com”) which contains humorous content and photos since 2009, at least two years prior to the Complainant’s launch of its IFUNNY products. The registration and use of the Disputed Domain Name and Website therefore appears consistent with the Respondent’s pre-existing business operations.
In light of the above, the Panel finds that the Respondent has shown that it has rights or legitimate interests in the Disputed Domain Name and that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of the Panel’s finding under the second limb, the Panel need not consider whether or not the Disputed Domain Names were registered and used in bad faith.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Date: June 2, 2014