#Sexpats .com : #Domain is generic, despite common law #trademark claim by movie producers

UDRP has been denied.

Sexpats.com, a domain that dropped and was caught twice by DropCatch, currently hosts content about the word’s definition:

Sexpat (noun), an compound of sex and expat or expatriate. A sexpat is one who participates in tourism with the express intention of having sex. There may be a variety of reasons for this, such as: less restrictive laws in foreign countries; anonymity or privacy; a preference for people of other ethnic groups; financial reasons…

The domain was originally registered in 2004, but it dropped in 2015 and was acquired by DropCatch on behalf of Media Options. They let the domain drop in late 2017, and the current registrant was hit with a UDRP.

The Complainant is Invincible Freedom Films LLC, and according to the UDRP filed at the National Arbitration Forum, it uses SEXPATS, SEXPATS.COM and SEXUALEXPATRIATES.COM marks to promote a screenplay or film series that Complainant has produced since 1989.

Complainant has common law rights in the SEXPATS and SEXPATS.COM marks because it coined the term “SEXPATS” in 1989 and originally registered the <sexpats.com> domain name in 2003. Respondent’s <sexpats.com> domain name is identical to Complainant’s SEXPATS.COM mark.

If they owned the domain in 2003, that’s before the oldest WHOIS record captured by DomainTools and its historic WHOIS database.

Archive.org shows a capture from 2009 with a “coming soon” message and various trademark claims, when the domain was in the possession of the Complainant.

The Complainant applied for the registration of SEXPATS with the USPTO on January 23, 2018, claiming first use of the mark SEXUAL EXPATRIATES “at least” as early as 2000.

The Respondent disputed the Complainant’s allegations, stating that the mark claims are not true, and that the domain name is a generic keyword. They had offered the domain Sexpats.com for sale, for a minimum price of $5,000 dollars.

The sole panelist, Ho Hyun Nahm, Esq., stated that the Complainant did not establish proof of having common law rights to the name, and ordered the domain Sexpats.com to remain with the Respondent.

Full details of this UDRP decision follow:

Invincible Freedom Films, LLC v. Daniel Sommer

Claim Number: FA1803001776436
PARTIES

Complainant is Invincible Freedom Films, LLC (“Complainant”), Delaware, USA. Respondent is Daniel Sommer (“Respondent”), Denmark.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sexpats.com>, registered with DropCatch.com 590 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.

Ho Hyun Nahm, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 16, 2018; the Forum received payment on March 16, 2018.

On March 19, 2018, DropCatch.com 590 LLC confirmed by e-mail to the Forum that the <sexpats.com> domain name is registered with DropCatch.com 590 LLC and that Respondent is the current registrant of the name. DropCatch.com 590 LLC has verified that Respondent is bound by the DropCatch.com 590 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 March 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2018 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@sexpats.com. Also on March 27, 2018, 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 April 16, 2018.

On April 18, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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

i) Complainant, Invincible Freedom Films, LLC, uses its SEXPATS, SEXPATS.COM and SEXUALEXPATRIATES.COM marks to promote a screenplay or film series that Complainant has produced since 1989. Complainant has common law rights in the SEXPATS and SEXPATS.COM marks because it coined the term “SEXPATS” in 1989 and originally registered the <sexpats.com> domain name in 2003. Respondent’s <sexpats.com> domain name is identical to Complainant’s SEXPATS.COM mark.

ii) Respondent does not have rights or legitimate interests in the <sexpats.com> domain name. Complainant was the original owner of the disputed domain name. When Complainant inadvertently allowed its registration to expire, Respondent acquired the domain name and offered to sell it to Complainant for an amount in excess of out-of-pocket expenses. Respondent owns multiple domain names and is a domain name speculator.

iii) Respondent registered and is using the domain name in bad faith. Respondent offered to sell the domain name to Complainant at a minimum price of $5000. Further, Respondent used the domain name to host a fraudulent, copied version of Complainant’s original <sexpats.com> website.

B. Respondent

i) Respondent purchased the <sexpats.com> domain name on November 21, 2017. Complainant has not used the <sexpats.com> domain name consistently since 2003, as it claims, because there is no record of any website at the domain name until the end of 2009. See archived information attached to the Response. The domain name was also deleted and owned by others in June, 2015 and October, 2017. Id. Also, Complainant does not have rights in the domain name because the term SEXPATS is generic and Complainant does not have exclusive rights over it.

ii) Respondent has rights and legitimate interests in the disputed domain name. Complainant originally contacted Respondent to inquire about transferring the <sexpats.com> domain name. Respondent registered the domain name for the purpose of creating an informative website about sex tourism and sex travelers.

iii) Respondent did not register or use the domain name in bad faith. Respondent did not acquire the domain name for the purpose of selling it at a higher price later. Further, the <sexpats.com> domain name describes the content of its resolving website. Finally, Respondent did a search for trademark before purchasing the domain name, and did not find any trademark issues with the name.

iv) Complainant has been trying to steal the domain name without Respondent’s knowledge, and misleading Respondent as to Complainant’s claim to the name. This Complaint is a further attempt to obtain the name illegitimately.

FINDINGS

1. The <sexpats.com> domain name was registered on November 21, 2017.

2. Complainant has not established common law rights in the SEXPATS and SEXPATS.COM marks, as it has not continuously owned the <sexpats.com> domain name. Complainant has not adequately shown its marks have gained secondary meaning.

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 contends it has common law rights in the SEXPATS and SEXPATS.COM marks because it coined the term “SEXPATS” in 1989 and registered the <sexpats.com> domain name. A complainant may have common law rights in a mark through evidence of secondary meaning in the mark such as registration of an identical domain name. Complainant contends that invoices from the domain registration service, 1&1, indicate that Complainant has owned the domain name since 2008. See Compl. Ex. B. Complainant does not offer additional evidence in support of its contention.

Respondent claims Complainant has not established common law rights in the SEXPATS.COM mark, as it has not continuously owned the <sexpats.com> domain name. Where a complainant has not adequately shown a mark has gained secondary meaning, a panel may find Complainant does not have common law rights in the mark per Policy ¶ 4(a)(i). See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”). Respondent claims Complainant has not used the <sexpats.com> domain name consistently since 2003, as it claims, because there is no record of any website at the domain name until the end of 2009. See Resp. Exs. Labeled “Skærmbillede 2018-04-14 kl. 11.54.17.png” and “Skærmbillede 2018-04-14 kl. 13.01.40.png” The domain name was also deleted and owned by others in June, 2015 and October, 2017. Id. As such, the Panel concludes that Complainant has failed to establish common law rights in the SEXPATS.COM mark through its ownership of the <sexpats.com> domain name.

As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <sexpats.com> domain name REMAIN WITH Respondent.

Ho Hyun Nahm, Esq., Panelist

Dated: April 20, 2018


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