MELBOURNE — An arbitrator has ruled against the operator of NudeLive.com in its cybersquatting complaint that targeted the owner of a competing cam site who uses the domain name NudeLive.net, dismissing the case and holding that charges were brought in bad faith.
Both competing sites — NudeLive.com and NudeLive.net — operate similar cam fare and are powered by the same white label from Chaturbate. The only difference between the domains are their extentions.
The owner of the domain NudeLive.com is British Virgin Islands-based Brentwood Holding Group Inc., which has a trademark for “Nudelive” in the U.S. that was registered in November. Brentwood Holding also claimed that it had common law rights dating back to 1998.
NudeLive.net’s operation, meanwhile, is owned by Raphael Nikolai Necesito of Ormoc City in the Philippines. Necesito registered the disputed domain name in March 2012 and since that date has resolved to its own cam site.
In his defense of using the NudeLive.net domain name, Necesito said he registered the disputed domain without knowledge of the complainant and its trademark and before the complainant had any rights.
In deciding the case, arbitrator Warwick A. Rothnie ruled that Brentwood Holding’s cybersquatting claim should be denied and that the company should also be sanctioned by a finding of reverse domain name hijacking.
Rothnie noted that there were numerous troublesome problems with Brentwood Holdings complaint that sought to swipe away the NudeLive.net domain name.
First, he stated that Brentwood Holding trademark for “Nudelive” was first used in commerce in 2015 and that the mark couldn’t possibly have been used in preceding years by the company, as stated in the UDRP complaint. He cited years of inactivity, from 2004 to 2015, that was captured on Archive.org’s Wayback Machine.
He also noted that a search showed that the NudeLive.com was last purchased at auction in August 2015 for $6,000, and that Necesito provided evidence showing a substantial drop in traffic to NudeLive.net after NudeLive.com’s website appeared to have become active in 2015.
“[T]his evidence falls well short of what is required to demonstrate common law reputation and remedies, particularly bearing in mind that the trademark appears to be essentially descriptive of the service being provided from the complainant's website,” Rothnie wrote in his decision.
“Given the complainant's failure to provide evidence supporting its chain of title back to 1998 and to demonstrate that the trademark had been used sufficiently extensively in the period between 1998 (or at least 2004) and 2012 to have generated secondary meaning in the term ‘Nudelive,’ the panel cannot accept the complainant's claim to common law rights dating back to 1998 or at least some point prior to the respondent's registration of the disputed domain name,” Rothnie wrote.
Rothnie found that, “on the record in this administrative proceeding, the complaint was brought in bad faith and constituted an abuse of the administrative proceeding.”