SBO Pictures, Inc. dba WICKED PICTURES ® dba WICKED ® v. Tech-Media, Ltd.

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

SBO Pictures, Inc., dba WICKED PICTURES ® dba WICKED ® v. Tech-Media, Ltd.l

Case No. D2003-0969

1. The Parties

The Complainant is SBO Pictures, Inc., dba WICKED PICTURES ® dba WICKED ®, of Canoga Park, California, United States of America, represented by Sughrue Mion, PLLC of Washington DC, United States of America.

The Respondent is Tech-Media, Ltd., of Christchurch, Canterbury, New Zealand. The Respondent is not represented.

2. The Domain Names and Registrar

The disputed domain name <wickedmovies.com> is registered with eNom.

3. Procedural History

The original Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2003. On December 9, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name in issue. On February 13, 2004, a search of eNom’s WhoIs database revealed that Tech-Media Ltd., was the listed domain name registrant.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 13, 2004. This was described by the Complainant as the "Revised Complaint." The Panel has relied upon this document rather than the original Complaint.

The Center has verified that the Revised Complaint ("the Complaint")

satisfied the formal requirements of the Uniform Domain Name Dispute Resolution

Policy (the "Policy"), 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 Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2004.

In accordance with the Rules, paragraph 5(a), the due date for Response was

March 4, 2004. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on March 9, 2004. There

has been no communication since from the Respondent.

The Center appointed Mr Clive Duncan Thorne as the Sole Panelist in this matter

on March 16, 2004. The Panel finds that it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

There have been no further procedural stages and no orders issued by the Panel.

The language of the proceedings is English.

4. Factual Background

The Complainant, SBO Pictures, Inc., is a Californian corporation doing business

as (dba) WICKED PICTURES ® and also as WICKED ®.

The Complainant is an adult entertainment company and is engaged in the business

of marketing adult entertainment goods and services throughout the world.

The Complainant began its business offering pre-recorded video cassettes, DVDs

and CD-Roms. It has also since introduced a Wicked Pictures magazine that features

articles and pictorials about the Complainant and the Complainant’s star actors.

The Complainant commenced use of the designations of WICKED PICTURES and WICKED

in 1993. Although the Complainant is incorporated under the name SBO Pictures

Inc., it does business under the name WICKED PICTURES so that according to the

Complainant the brand name WICKED PICTURES has become associated with SBO Pictures

Inc. The Complainant is also commonly referred to as WICKED in the industry.

The Complainant continues to expand its business and since as early as March 1, 1996,

has offered on-line services featuring the sale of adult entertainment and novelty

items, photographs and movies. In addition to these items the Complainant currently

offers e-clothing items and newsletters. The Complainant submits that it is

recognised as one of the top five adult entertainment movie studios in the world.

At Appendix A to the Complainant are exhibited evidence of use of WICKED and

WICKED PICTURES in respect of what appears to be the cover of a DVD or video

entitled "Jenna Jameson’s Anthology Volume 1," Wicked Pictures. The

text also describes it as "the first compilation that Wicked has ever released"

and it is no coincidence that it features Jenna Jameson, arguably the biggest

female name in "adult" entertainment.

At Exhibit B to the Complaint, is a list of movie titles in which the Complainant

uses the mark WICKED.

The Complainant is also the owner of a large number of trademark and service

mark registrations and applications for trademark registrations worldwide in

respect of the mark WICKED alone or in combination with other words, designs

or logos. At Exhibit C, are copies of registrations and applications for registrations

in the US Patent and Trademark office together with a summary of these. Thus,

for example, the Complainant has a registration dated August 22, 2000,

in respect of the mark WICKED for "audio, visual and motion picture goods"

(number 75620784). It also has a registration for the mark WICKED registered

on July 31, 2001, for "personal vibrators and sexual aids etc"

(registration number 2473950). In total, it is currently the owner of 15 US

trademark and service mark registrations.

Additionally, at Exhibit D to the Complaint, the Complainant sets out a schedule

of trademark and service mark applications and registrations for the term WICKED

either alone and/or a combination with another word, design or logo in Hong

Kong, SAR of China, Argentina, the Czech Republic, the European Union, Mexico,

Australia, Brazil, Canada, Russian Federation and Japan. The Complainant markets

its good and services throughout the world and apparently always uses its trade

name and trademark WICKED PICTURES in such promotion.

The Complainant also owns a large number of domain names incorporating the

word WICKED such as <wickedpictures.com> and <wickedweb.com>. The

Whois information for these two domain names are exhibited as Exhibit E to the

Complaint.

The Complainant asserts that it has expended millions of dollars in advertising,

customer services and research in an effort to establish itself as a leader

in the adult entertainment industry. It apparently spends thousands of dollars

annually advertising the goods and services in national print media and at trade

shows and exhibitions. It asserts that as a result of its advertising expenditure

and promotional activities the marks using the word WICKED have become one of

the most recognised brands in the adult entertainment industry worldwide. As

evidence of the recognition that the Complainant has received it has won a number

of awards for its movies, details of which are set out at Exhibit F to the Complaint.

The Complainant also draws attention to the fact that adult entertainment companies

operate in a manner similar to that of the old Hollywood movie studios in that

they often hire movie stars on a contract basis. These actors appear exclusively

in the films produced by the particular movie house. In the case of the Complainant,

this means that its female actors are known as "Wicked Girls." The

most famous of these Wicked Girls is apparently Jenna Jameson. She became a

"Wicked Girl" in 1995 and remained so for approximately six years

until 2000. Wicked Pictures has produced 25 movies featuring Jenna Jameson,

most of which had WICKED in the title. Evidence is set out at Exhibit G and

also at Exhibit H to the Complaint which refers to "Jenna Jameson’s Wicked

Anthology 1: 1995." There is also details of "Wicked Weapon"

in which she apparently appeared in 1997 and "The Wicked One" in 1995.

The Complainant adduces evidence that since 1995 it has attended the Cannes

Film Festival. At Exhibit K to the Complaint is a press release detailing its

attendance at the Cannes Film Festival for 2001 by reference to WICKED PICTURES

and the suggestion that WICKED PICTURES dominates the Cannes Film Festival.

In summary, the Complainant submits that by virtue of extensive use, advertising,

promotion and sale of its goods and services throughout the United States and

the World it’s WICKED marks have become well known and famous in the United

States and abroad, in the adult entertainment industry as an indicia of origin

for the Complainant’s goods and services.

In the absence of any submissions by the Respondent and any evidence submitted

on behalf of the Respondent, the Panel accepts the evidence set out above as

to the Complainant’s trademark rights and accepts its submission to the effect

that the WICKED marks have become well known and famous in the adult entertainment

industry as an indicia of origin for the Complainant’s goods and services throughout

the world.

According to the Complainant, the current dispute arose as a result of evidence

of confusion arising between the Respondent’s use of the <wickedmovies.com>

domain name and the trading name of the Complainant. In particular, the Complainant

relies upon the evidence set out at Exhibits Q and R to the Complaint. At Exhibit

Q, a Mr. Orenstein of Apic Worldwide forwarded an email to the Complainant,

implying by the use of questionmarks, his confusion in respect of the domain

name <wickedmovies.com>. The Complainant noted that Apic Worldwide was

a copyright infringement agent representing many adult entertainment producers

and copyright owners. The content of the email which he forwarded was headed

<wickedmovies.com> i.e. the domain name in dispute and refers to "Wicked

Movies – Free daily updated movies." The content is generally pornographic

in character. By way of example, it refers to a "spunk mouth free amateur

movie preview" which "may go down as an amateur porn classic."

In February 2002, the Complainant apparently received an email from a

consumer who emailed the Complainant’s employee to ask if <wickedmovies.com>

belonged to the Complainant. The consumer, called Lara, wrote in the email:

"Dear Wicked Pictures

Is this your site?

http://www.wickedmovies.com

Regards

Lara."

She forwarded part of a website entitled "www.wickedmovies.com" which

was described as containing "sexually explicit site descriptions and content

that some may find offensive."

On November 1, 2003, a representative from <submitstar.com>

apparently contacted Wicked Pictures regarding "www.wickedmovies.com."

This is referred to at Exhibit S to the Complaint and would appear to show confusion

by the representative from the <submitstar.com> between <wickedmovies.com>

and WICKED PICTURES.

The Complainant had previously contacted the Respondent as well as the prior

registrant to advise that the Complainant believed the use of the domain name

infringed the Complainant’s rights. The first instance of this is set out in

Exhibit T to the Complaint which is a copy of an email dated October 13, 1999,

from a legal assistant of the Complainant to the owner of the domain name <wickedmovies.com>

at that time. The Complainant requested that he assign the domain name to the

Complainant and that the Complainant will reimburse him for his registration

expenses. There was no response to this email and the domain name was later

transferred to the Respondent.

On June 27, 2002, the Complainant, through its attorney, contacted

the Respondent in an email which is exhibited at Exhibit U to the Complaint.

In it, the Complainant stated that;

"As a result of my client’s long prior use of promotional adult entertainment

products and services under the Wicked® designation, SBO Pictures Wicked®

has become synonymous with goods and services emanating from and has become

an extremely valuable asset of SBO Pictures."

The Complainant suggests an amicable resolution including a transfer of the

domain name to the Complainant. There was no response to this email. A chaser

was sent on July 16, 2002, (Exhibit V to the Complaint) but again

there was apparently no response.

On October 9, 2002, a further email was sent by the Complainant referring

to the Complainant’s rights, requesting immediate agreement to assign the domain

name and for the Respondent to cease and desist the use of the domain name <wickedmovies.com>.

The Complainant reserved the right to file a UDRP proceeding. Again, no response

was received.

A further email was sent to the main server hosting "www.wickedmovies.com"

who apparently claimed that the email was forwarded to the Respondent. The Respondent

did in fact reply by email on September 11, 2003, (Exhibit Y) in which

the Respondent stated:

"if u want my domain name you guys can make an offer on it, i mean come

on its been 3 years your not getting it, I will die before you get it man!"

The response was signed by "mike."

5. Parties’ Contentions

A. Complainant

The Complainant submits:

(i) that the Respondent’s domain name, <wickedmovies.com>, is confusingly

similar to the Complainant’s marks WICKED.

(ii) that the Respondent has no rights or legitimate interests in the domain

name <wickedmovies.com> as a result of the Complainant’s continuous and

exclusive use of WICKED as a trademark in the United States and elsewhere.

(iii) the Respondent is merely attempting to trade on the Complainant’s notoriety

in the adult entertainment industry.

(iv) the Respondent registered the domain name, <wickedmovies.com>, in

bad faith:

(a) at the time of the Respondent’s registration, it had actual notice of the

Complainant’s ownership of the WICKED marks. The Complainant is well known in

the adult entertainment industry and the Respondent must have had notice of

the Complainant’s use of the marks;

(b) the Respondent holds other domain names as set out in Exhibit N to the

Complaint. There is no reason why the Respondent chose the confusingly similar

domain name, <wickedmovies.com>, except to trade on the success of the

Complainant;

(c) the Respondent is in competition with the Complainant and advertises itself

as a low cost alternative to other adult entertainment so that it is using the

<wickedmovies.com> domain name for commercial gain;

(d) the Respondent has selected the domain name, <wickedmovies.com>,

in a "blatant attempt to trade off the Complainant’s success." The

Complainant contends that the Respondent’s adult entertainment movies are of

a lesser quality than those of the Complainant and that any confusion results

in tarnishing the Complainant’s hard earned reputation;

(e) there has been evidence of actual confusion as referred to above.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and findings

In order to succeed in its Complaint, the Complainant has the burden of proof

in showing that each element within the Policy is present:

(i) the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the domain name is registered and is being used by the Respondent in

bad faith.

The Panel proceeds to deal with each of these in turn.

A. Identical or Confusingly Similar

The Panel has already accepted the Complainant’s evidence that the Complainant

has trademark rights in the mark WICKED and also has rights in the mark WICKED

PICTURES. The Complainant contends that the domain name <wickedmovies.com>

is confusingly similar to WICKED and WICKED PICTURES. The Respondent has merely

added a descriptive term i.e. the word "movies" to the well known

mark WICKED. The Panel accepts that this is so and particularly when the word

chosen is synonymous in the English language to the word "pictures."

The Panel finds for the Complainant in respect of this element.

B. Rights or Legitimate Interests

The Respondent has, of course, adduced no evidence of right or legitimate interest

in the domain name <wickedmovies.com>. The Complainant points out that

the Respondent is not known by the name "Wicked Movies" which is,

of course, correct. It asserts that the Respondent is merely attempting to trade

on the Complainant’s notoriety of the adult entertainment industry and is not

offering bona fide services. In the absence of such evidence of legitimate interest

on the part of the Respondent and the fact that the Complainant is making use

of the domain name in respect of similar services i.e. generally within the

adult entertainment sphere to those of the Complainant the Panel finds for the

Complainant in respect of this element.

C. Registered and Used in Bad Faith

The Panel has received Complainant’s submissions. It accepts that on the evidence

the Complainant is well known in the adult entertainment industry and has been

since at least 1993. It therefore seems to the Panel highly unlikely that the

Respondent in using the domain name <wickedmovies.com> would have been

unaware of the activities of the Complainant. The Complainant was using WICKED

widely in the adult entertainment industry and as the evidence shows, was known

both as WICKED and as WICKED PICTURES. The Respondent must also be deemed to

have had notice of the Complainant’s registered rights.

The Complainant relies on the submission that there is no reason why the Respondent

chose the domain name <wickedmovies.com> except to trade on the Complainant’s

success. The Respondent has pointed out posted advertisements on its website

for related goods. At Exhibit O to the Complaint are printouts from <mastersofcash.com>

and <penismedical.com>. The Panel accepts that this is evidence adduced

by the Complainant that the domain name is being used for commercial gain.

The Respondent not only uses the domain name <wickedmovies.com> in its

activities, but it also uses the domain name as a mark within its site as is

shown by Exhibit P and Exhibit O to the Complaint. The Complainant submits that

the domain name <wickedmovies.com> was chosen in a vain attempt to trade

off the Complainant’s success. The Panel accepts this submission given the evidence

of confusion. It is undoubtedly true that consumers have been and no doubt will

continue to be confused by the use of the domain name as trading on the Complainant’s

marks WICKED and WICKED PICTURES.

The Panel takes into account particularly the ’Complainant’s submission that

the Respondent’s adult entertainment movies are of lesser quality than those

of the Complainant. The Complainant does not wish to be associated with the

lesser quality works and points out that any confusion that arises "tarnishes"

the Complainant’s hard earned reputation. The Panel accepts this submission

and takes into account particularly the extract from the Respondents website

exhibited at Exhibit Q to the Complaint. In the Panel’s view this extract is

clearly pornographic and indeed is apparently accepted as such by the Respondent,

as is shown by the reference to the amateur movie as "an amateur porn classic"

and the heading at the top of the print out which states "free xxx movies

daily updated porn movies." It therefore seems to the Panel that there

is a considerable risk of damage to the Complainant and its products by the

Respondent using the domain name for a web-site displaying material that could

be inferior to Complainant’s products.

The Panel also takes into account in considering bad faith the response of

the Respondent of September 3, 2002, which is referred to above. This

appears to be a demand for payment over and above the actual costs of transfer

which the Complainant in its emails to the Respondent was prepared to offer.

It follows, having taken into account the evidence in support of the allegation

of registration and use of the domain name in bad faith by the Respondent, that

the Panel finds for the Complainant in respect of this element.

7. Decision

For all the foregoing reasons and in accordance with paragraph 4(i) of the

Policy and paragraph 15 of the Rules, the Panel orders that the domain

name, <wickedmovies.com>, be transferred to the Complainant as is requested

in the Complaint.

Clive Duncan Thorne

Sole Panelist

Dated: March 30, 2004