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Dirtyfling.com : #Domain was lost via the UDRP process after creative trademark lawyering

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The domain Dirtyfling.com appears to be two generic words, “dirty” and “fling,” but a company called Brentwood Holding Group Inc asserted it infringes on its marks:

Complainant claims rights in the FLINGSTER and DIRTYROULETTE trademarks through its ownership of the United States registered trademarks described below and through the goodwill it claims through its use of the marks on its adult chatroom and dating services.

In our opinion, combining two marks to make a point should lead to a failed attempt at getting the domain from its registrant.

Somehow, the NAF panelist, James Bridgeman SC, agreed to these claims – and ordered the domain Dirtyfling.com to be transferred to the Complainant.

Dirtyfling.com was last sold on Namejet in 2019, for $206 dollars.

Full details on this UDRP decision follow:

Brentwood Holding Group Inc v. Dirty Fling

Claim Number: FA2004001893607

PARTIES

Complainant is Brentwood Holding Group Inc (“Complainant”), represented by Alina Landver of LANDVER LAW CORPORATION, APC, California, USA. Respondent is Dirty Fling (“Respondent”), United Kingdom.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dirtyfling.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James Bridgeman SC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 26, 2020; the Forum received payment on April 26, 2020.

On April 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dirtyfling.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dirtyfling.com. Also on April 28, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on May 18, 2020.

On May 22, 2020 an Additional Submission was received from Complainant.

On May 26, 2020 an Additional Submission was received from Respondent.

On May 26, 2020 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant claims rights in the FLINGSTER and DIRTYROULETTE trademarks through its ownership of the United States registered trademarks described below and through the goodwill it claims through its use of the marks on its adult chatroom and dating services.

Complainant has been known by its “FLINGSTER” name since 2014 and “DIRTYROULETTE” name since 2010 and both have common law rights and the rights that exist with registering its marks with the USPTO.

Complainant submits that its FLINGSTER website is one of the largest adult video chat and adult dating companies in the world with more than 2,154,566 members. On it, since 2014, Complainant has advertised and provided its services to customers in about 200 countries worldwide since at least as early as 2014 and provides consumers with adult video chat and dating under its name.

Complainant adds that its website at DIRTYROULETTE is one of the leading adult video cam chat sites online. Millions of connections are made every day. DIRTYROULETTE has been featured in over half a dozen review sites. The company has more than 2,507,868 members. It advertises and markets to customers in over 100 countries worldwide.

Complainant submits that the disputed domain name <dirtyfling.com> is confusingly similar to the trademarks FLINGSTER and DIRTYROULETTE. Complainant argues that the combination of the terms “dirty” and “fling” are suggestive of Complainant’s registered trademarks.

Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by the disputed domain name whereas Complainant has used the FLINGSTER name since 2014 and DIRTYROULETTE name since 2010.

Complainant adds that Respondent has not been licensed to use the FLINGSTER and DIRTYROULETTE marks in the disputed domain name.

Complainant argues that Respondent does not have, nor can it obtain a registered trademark for DIRTYFLING because of Complainant’s prior rights in the trademarks FLINGSTER and DIRTYROULETTE. The website to which the disputed domain name resolves has a commercial purpose to make money by selling its identical services by misleading consumers into believing they are using the Complainant’s FLINGSTER and DIRTYROULETTE services, or that Respondent’s website somehow affiliated with, endorsed, or licensed by Brentwood.

Complainant submits that the disputed domain name was registered and is being used in bad faith, arguing that panels established under the Policy have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

Complainant argues that Respondent registered the disputed domain name with Godaddy.com, the disputed domains name <dirtyfling.com> on July 4, 2019 long after Complainant has been using its FLINGSTER and DIRTYROULETTE names extensively and continuously.

Complainant argues that Respondent registered the disputed domain name knowing the popularity and reputation of Complainant’s brands and its services and knowing it would confuse consumers into believing its services are those of Complainant, or affiliated with, or endorsed by Complainant. Complainant alleges that Respondent’s intention was to attract Complainant’s customers and create confusion as to the affiliation between Complainant and Respondent.

On March 26, 2020 Complainant sent Respondent a cease and desist letter, yet Respondent continued to knowingly, willfully and wrongfully violate Complainant’s registered marks by continuing to use the infringing domain name with the intent to divert consumers to their own website accessible through the infringing domain names. Respondent did so with the intent to harm Complainant’s goodwill and to profit from Complainant’s mark by creating a likelihood of confusion as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s site, and/or services.

Complainant submits that at that time Respondent denied owning the disputed domain name but thereafter began offering the site for sale for $15,000. Since then Respondent has continued to use the domain names in bad faith.

B. Respondent

In an informal Response by email, Respondent claims to be a “domain investor” with over 1000 domains in his portfolio.

He agrees that registering domain name does not create trademark rights but argues that in this case the disputed domain name <dirtyfling.com> was registered before Complainant’s trademarks were registered.

Respondent claims that because he purchased the disputed domain name he did not act in bad faith. He argues that because he purchased and owns the disputed domain name, he can do whatever he wants with it.

He asserts that he has never contacted Complainant or offered to sell the disputed domain name to Complainant.

He asserts that he is not targeting any trademark directly, and argues that Complainant does not own the trademark DIRTY FLING, because it owns FLINGSTER and DIRTYROULETTE.

C. Additional Submissions of Complainant

In Additional submissions, Complainant submits that the invoice presented by Respondent as evidence of the date of purchase of the disputed domain name is a forgery and it does not identify the customer number, the “bill to name”, and the contact number of the purchaser or even identify the disputed domain name.

Noting that Respondent contends that its predecessor began using <dirtyfling.com> in 2006 which predates Complainant’s use and therefore has accrued rights as evinced by a Wayback Machine search showing use of <dirtyfling.com> since that date, Complainant submits that this evidence fails to demonstrate any common law reputation and that searches of the Wayback Machine adduced by Respondent shows that that the domain name <dirtyfling.com> was essentially inactive between about 2006 and 2020.

Complainant adds however that during this period the <dirtyfling.com> domain name was used as the address of a website which appears to have been a copy of Complainant’s other website <chatrandom.com> before Complainant sent a cease and desist to the registrant. Respondent’s own Additional Submission on May 20, 2020 shows a substantial drop in traffic to the Respondent’s website at the disputed domain name after the website appears to have become inactive from 2006 to 2014, 2015 to 2018 and some light activity in 2018 and 2019 and no activity in 2020. Furthermore Complainant submits that Respondent had not adduced any evidence of protectable reputation by such use.

Complainant argues that the disputed domain name at issue was registered in 2006. At that time, Complainant’s <flingster.com> domain name had been created on June 5, 2002 and its <dirtyroulette.com> domain name had been created on February 16, 2010.

Complainant’s FLINGSTER website was established in June 2014 and its DIRTYROULETTE website was created in 2013.

Complainant adds that it is difficult to accept given Respondent bought the site for the too good to be true price of $1170 when it was previously advertised for $15,000.

D. Additional Submissions of Respondent

In informal Additional Submissions, Respondent denies that the receipt that he adduced in evidence is a forgery. He adduces a printout of a Wayback Machine search which shows that use of the domain name <dirtyfling.com> was recorded on 68 occasions from April 2, 2006 to September 9, 2019. He adds, providing screenshots, that there are numerous examples of website addresses on the Internet that are similar to trademarks. In additional submissions Respondent filed after this Panel was appointed he repeated his denial that he ever offered to sell the disputed domain name to Complainant for £15000 or that he ever had any contact with Complainant.

He states that he bought the disputed domain name at auction only a few weeks before the commencement of this Complaint so that he would not have had the chance to put it up for sale as he has been in lockdown during this pandemic restrictions.

FINDINGS

Complainant hosts adult video chat and adult dating websites to which its domain names <dirtyroulette.com> and <flingster.com> resolve and is the registered owner of

• United States registered service mark FLINGSTER registration number 5,235,295, registered on July 4 2017 on the Principal Register for services in international classes 38 and 45.

• United States registered service mark DIRTYROULETTE, registration number 5,109,884, registered on December 27, 2016 for services in international class 38.

Complainant’s services are provided on its websites to which its domain names <flinger.com> and <dirtyroulette.com> resolve.

Complainant’s domain name <flingster.com> was created on June 5, 2002 and the website to which it resolves was created in June 2014.

Complainant’s domain name <dirtyroulette.com> was created on February 16, 2010 and the website to which it resolves was created in 2013

Both Parties appear to agree that there was a domain name <dirtyfling.com> which was active since 2006 but the Registrar’s WHOIS records that the disputed domain name which is at issue in this Complaint was registered on October 15, 2016. The record does not explain why this is the case.

Respondent claims to be a domainer and is the owner of the website to which the disputed domain name resolves.

Both of Complainant’s websites and the website to which the disputed domain name resolves offer adult video chat and dating services.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has adduced clear and convincing evidence that it has rights in the FLINGSTER and DIRTYROULETTE service marks through its ownership of the abovementioned United States trademark registrations and its use of the marks on its adult chat and dating websites.

The disputed domain name consists of the elements “dirty” and “fling” together with the gTLD <.com> extension.

The element “dirty” is similar to the DIRTYROULETTE service mark and the element “fling” is similar to the FLINGSTER trademark.

As the element “fling” is the dominant element of the FLINGSTER trademark, this panel finds that the disputed domain name is confusingly similar to Complainant’s FLINGSTER trademark.

For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.

This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. In such circumstances the burden of production shifts to Respondent to prove such rights or interests,

There is no suggestion that Respondent is commonly known by the disputed domain name or has been granted any right or license to use the disputed domain name or Complainant’s FLINGSTER or DIRTYROULETTE marks in a domain name.

Respondent claims to have recently acquired the disputed domain name at an auction. The exact date is disputed by Respondent.

Since acquiring the disputed domain name Respondent, who claims to be a domainer has established a website that is competing with Complainant’s websites purporting to also offer adult chat and dating services.

Such use is inconsistent with Respondent’s claim to be a domainer as he is going beyond buying, warehousing and selling this particular domain name.

While buying and selling domain names is in principle unobjectionable, without more, such activity does not create rights of legitimate interests in a domain name.

This Panel finds that in the circumstances of this case, Respondent’s use of the disputed domain name to establish a competing website cannot create a right or legitimate interest in the disputed domain name.

This Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

An unexplained aspect of this Complaint is that both Parties appear to agree that a domain name <dirtyfling.com> was active since 2006 but the Registrar’s WHOIS records that the disputed domain name was registered on October 15, 2016.

Complainant’s domain name <flingster.com> was created on June 5, 2002 and the website to which it resolves was created in June 2014.

While there seems to be a factual context outside of the information provided in the pleading.

In the absence of any explanation about the domain name that was active since 2006, this Panel must accept the information provided by the Registrar that the WHOIS shows that registration which is the subject of this Complaint was created on October 15, 2016.

On that date Complainant had established its website at <flingster.com> and its application to register the FLINGSTER mark that resulted in USPTO registration number 5,235,295 had been filed on July 13, 2016.

Complainants’ application to register the DIRTYROULETTE mark that resulted in USPTO registration number 5,109,884 was filed on 06-30-2016

Given that the disputed domain name is composed of the combination of the significant elements in Complainant’s two trademark, this Panel finds that on the balance of probabilities the registrant of the disputed domain name, whether it was Respondent or someone else was aware of Complainant and its business. It follows that on the balance of probabilities, the disputed domain name was registered to target and take advantage of Complainant’s reputation and the goodwill accruing to its trademarks and websites.

The date on which Respondent acquired his interests is also disputed. Whether Respondent registered the disputed domain name on October 15, 2016 or acquired it in an actuation sale on a subsequent date, as he claims, is irrelevant because as Complainant and its websites had an established reputation throughout the period from October 2016 to date.

It is most probable therefore that when Respondent has knowingly caused, permitted or allowed the disputed domain name be used in bad faith to resolve to a website that is directly competing with and targeting the same client base as Complainant’s websites.

This Panel finds therefore that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s FLINGSTER mark as to the source, sponsorship ,affiliation, or endorsement of the services offered on his web site and is therefore using the disputed domain name in bad faith.

As this Panel finds that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <dirtyfling.com> domain name be TRANSFERRED from Respondent to Complainant.

James Bridgeman SC

Panelist

Dated: May 27, 2020


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Comments

7 Responses to “Dirtyfling.com : #Domain was lost via the UDRP process after creative trademark lawyering”
  1. Rick says:

    And another panelist would decide in favor of the registrant.
    What standards are decisions like this based on? The panelist is pulling that reasoning out of where?
    The domain name does not match either trademark yet the panelist proactively combines elements of the two trademarks to match the disputed domain and declare similarity?
    There are numerous books by this title. And what about mydirtyfling.com?
    Outrageous. This is another activist panelist helping out complainants by making out the case for them.
    A decision like this and the twisted logic behind it sets a very dangerous path for both WIPO/UDRP and registrants.
    Hopefully the ruling will be contested and vacated in Federal court and a complaint filed with WIPO/ICANN.
    Thank you for bringing this “dirty” decision to light.

  2. RaTHeaD says:

    patently absurd.

  3. Rick says:

    Note: Panelist may not be activist, but the decision sure seems to be

  4. NameNinja says:

    Domainers are going to bash the panelist but the Respondent (registrant) messed up big time with this one.

    #1) They are citing previous use from another registrant prior to them. That attaches their use to the current use, and it’s a band move to try and align yourself with a previous owner that may have been in the wrong wither their use.

    #2) Apparently the registrant tried to setup a website that reaches the same niche market as the complainant. They could have just put up a site devoted to shaming cheaters, or telling torrid fiction stories like bad romance novels. No, instead they put up a site just like the complainants (dumb).

    #3) Most importantly, they could have attacked the hell out of the mental jump of taking TWO marks and then combining them into one to make a legitimate rights claim on ONE mark. This is where their focus should have been.

    #4) Their response was sloppy, their timelines and ownership documents were seen as fraudulent.

    The panelist didn’t do any of this, it was the domainer. Know the industry, learn the law.

  5. DomainGang says:

    NameNinja – In a nutshell, the Respondent didn’t have legal representation, hence the outcome. However, this doesn’t absolve the panelist from handing this over to the Complainant; joining two marks to make a case is ballsy.

  6. Rick says:

    “The disputed domain name consists of the elements “dirty” and “fling” together with the gTLD extension. The element “dirty” is similar to the DIRTYROULETTE service mark and the element “fling” is similar to the FLINGSTER trademark. As the element “fling” is the dominant element of the FLINGSTER trademark, this panel finds that the disputed domain name is confusingly similar to Complainant’s FLINGSTER trademark. registration number 5,109,884 was filed on 06-30-2016”

    “Given that the disputed domain name is composed of the combination of the significant elements in Complainant’s two trademark, this Panel finds that on the balance of probabilities the registrant of the disputed domain name, whether it was Respondent or someone else was aware of Complainant and its business. It follows that on the balance of probabilities, the disputed domain name was registered to target and take advantage of Complainant’s reputation and the goodwill accruing to its trademarks and websites.”

    There may have been other elements present that tipped the case to the Complainant, but there it is to see.

  7. Rick says:

    Would the panelist have reached the same decision for the complainant if he had not intertwined the two separate tm’s to create one that matched the registrant’s domain name?

    Regardless, the issue is not that this convoluted reasoning led to the registrant losing the case per se. But then the next case comes up and twisting two trademarks into a totally new one to negate a registrant’s legitimate rights is okay because this is now part of case law and can be cited by the next frivolous complainant and the next panelist.

    Finally, “Know the industry, learn the law.” – Totally unnecessary

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