We can all assume Joe Francis, founder of the Girls Gone Wild videos love publicity but things don’t seem to be travelling with him too well so far this year. Having just recently lost his 7.5$ million defamation suit and being embroiled in a scandal invloved with Senator
Mark Pryor, Joe cannot even take a trick against a mere ordinary citizen.
A further blow to Joe (Joseph R) Francis and his Girls Gone Wild trade mark
In a decision by the National Arbitration Forum Girls Gone Wild have lost a case against the holder of the domain girlsgonewild.name The arbitrator The Honourable Neil Anthony Brown Qc in decision FA1203001435699 dated 24th April 2012 states the complainant Path Media Holdings LLC failed in its case that the domain girlsgonewild.name was registered in bad faith.
One of the factors against proving the use of “Bad faith” was that it was found by the panel that the registrant Jim Durflo could not have registered the domain in bad faith as the name was registered prior to the register of the trade mark ‘Girls Gone Wild’.
This is clearly good news for domain and website owners who have felt helpless in the past in disputes by big companies who would often make frivolous claims to acquire related domain maes knowing that the respondents normally cannot afford to the costs needed to fight such disputes.In what must have been a further blow to the Complainant is that this challenge was uncontested by the respondent.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that Complainant has not established that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant has not made out any of the criteria set out in Policy ¶ 4(b) and has not argued or shown that there are other matters that can be described as bad faith within the generally accepted meaning of that expression. Indeed, Complainant has not attempted to do so. Complainant’s entire case on the issue of bad faith is as follows: “By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
No evidence has been submitted to show that this has happened or how it happened. As panels have said on many occasions, mere assertions are not enough to prove a case and any submissions must be supported by evidence. It is certainly not enough merely to paraphrase provisions of the Policy. If a panel were to accept a case without proper submissions and evidence it would make the Policy a very inadequate and unsatisfactory procedure and it would be unfair to the vast majority of parties who present complete cases with evidence and reasoned arguments and who go to a lot of trouble and expense to do so.
Secondly, to allow a case to succeed without proof would be contrary to the plain words of the Policy, which provide that “…the Complainant must prove that each of these three elements are present.” The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a) (iii) as it has not proved that the element now under consideration is present. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Thirdly and in particular, Complainant asserts that Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s affiliation with the disputed domain name. But Complainant has not provided any evidence or arguments that support those allegations and it is impossible for the Panel to conclude whether they are true or not. Therefore, the Panel finds that Complainant failed to prove that Respondent registered and uses the girlsgonewild.name domain name under Policy ¶ 4(b) (iv).
Fourthly, the Panel notes that Complainant’s rights in the GIRLS GONE WILD mark, according to the USPTO trademark registration, date back to June 18, 2007. The Panel notes that Respondent registered the girlsgonewild.name domain name on February 3, 2006. Thus, the Panel therefore concludes that Respondent’s registration of the disputed domain name predates Complainant’s rights in the GIRLS GONE WILD mark. Consequently, the Panel holds, in keeping with established UDRP jurisprudence and practice and consistent with many UDRP decisions, that Respondent could not have registered the girlsgonewild.name domain name in bad faith under Policy ¶ 4(a) (iii). See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).