Surecom Corporation NV v Thomas Standford

WIPO Case No. D2024-5278

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Surecom Corporation NV v. Thomas Standford

Case No. D2024-5278

1. The Parties

The Complainant is Surecom Corporation NV, Curaçao, Netherlands (Kingdom of the), represented by

Mandelbaum Barrett PC, United States of America (“U.S.”).

The Respondent is Thomas Standford, Austria.

2. The Domain Name and Registrar

The disputed domain name <c4-archiver.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2024. On December 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy) and contact information in the Complaint.

The Center sent an email communication to the Complainant on January 2, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 8, 2025.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 14, 2025. In accordance with the Rules, paragraph
5(a), the due date for Response was February 3, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 5, 2025.

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The Center appointed Andrea Mondini, Mathias Lilleengen and Jeremy Speres as panelists in this matter on
February 27, 2025. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

The Complainant owns and operates a live adult webcam site known as Cam4.com. The Complainant has owned the <cam4.com> domain name since it first registered it in July 1999. In June, 2007, the Complainant launched its adult web cam site utilizing the <cam4.com> domain name.

The Complainant owns trademark registrations in several jurisdictions, including:

TRADEMARK	JURISDICTION	REGISTRATION	REGISTRATION	INTERNATIONAL
NUMBER	DATE	CLASS
CAM4	U.S.	4,062,460	November 29, 2011	35, 38
CAM4	European Union	10,053,701	November 16, 2011	35, 41

The Complainant holds the domain name <cam4.com>, which hosts its main website, and uses “C4” as a favicon for its webpage.

The disputed domain name was registered on January 14, 2023.

Because the Respondent did not file a Response, not much is known about the Respondent.

According to the evidence submitted with the Complaint, the disputed domain name resolves to a website with the title “Cam4 Archiver” and stating: “The Cam4 archiver is a recording tool that captures all favorite adult webcam broadcasts from Cam4 for watching them at a later time for free. This way you can enjoy the performances of your favorite performers even when they are not live.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends as follows:

The disputed domain name is confusingly similar to the CAM4 trademark in which the Complainant has rights, because it is mimicking the common law mark “C4” used as a favicon by the Complainant to suggest the website posted under the disputed domain contains archived content from the Complainant’s website. Registering the abbreviation of a trademark does not dispel confusing similarity, where the Respondent chose the disputed domain name with the intention that the abbreviation should call the Complainant’s trademark and its abbreviation to mind. The addition of the term “archiver” does not dispel the confusing similarity.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The
Complainant’s trademark has been extensively used to identify the Complainant and its services. The
Respondent has not been authorized by the Complainant to use this trademark, is not commonly known by

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the disputed domain name, and there is no evidence of the Respondent’s use, or demonstrable preparation
to use, the disputed domain name in connection with a bona fide offering of goods and services. On the
contrary, the Respondent specifically selected the disputed domain name for the express purpose of copying
the content offered by the Complainant and directing Internet users away from the Complainant’s website.

The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well known trademark CAM4 at the time it registered the disputed domain name. The Respondent is using the disputed domain name in bad faith, by copying the content offered by the Complainant to intentionally attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the
complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of the trademark CAM4 for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. The Complainant also asserted rights in the common law mark “C4”.

Irrespective of whether the Complainant has common law rights in the mark “C4”, the Panel finds that the abbreviation of the registered mark CAM4 is reproduced within the disputed domain name. Prior UDRP panel decisions have made clear that abbreviating a registered mark is not enough to avoid confusing similarity, when taking into account that the respondent’s website intended to imply an affiliation with the complainant. See, e.g., Groupe Vanessa Bruno v. Tbdsh Rvdsh, WIPO Case No. D2023-0628, where the disputed domain name “boutiquevb.com” was found to be confusingly similar to the complainant’s mark VANESSA BRUNO. See also Ralf Bohle GmbH v. Chen Shengqiu, WIPO Case No. D2023-4534.

Considering that in the present case the abbreviation “C4” corresponds to the Complainant’s favicon and further considering that the Respondent’s website offers a tool to record the content posted on the Complainant’s website, the Panel finds that under the circumstances of this case “C4” is confusingly similar to the Complainant’s registered trademark CAM4.

Although the addition of other terms, such as here “archiver”, may bear on assessment of the second and third elements, the Panel finds that in the present case the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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The addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that for a complainant to prove that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the

knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that
the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the
respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain
name (although the burden of proof always remains on the complainant). If the respondent fails to come
forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the view of the Panel, noting that that the Complainant’s trademark predates the registration of the trademark. In the circumstances of this case, this is evidence of registration in bad faith.
disputed domain name and considering that the disputed domain name resolves to a website featuring the

Complainant’s CAM4 trademark and referring to the Complainant’s services, it is inconceivable that the

The Panel holds that by using the disputed domain name, the Respondent has intentionally attempted to
attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website in the sense of

Policy, paragraph 4(b)(iv).

As further evidence of bad faith, the Panel notes that the Respondent had previously targeted the
Complainant by registering the domain name <cam4-archiver.com> and a previous Panel ordered the
Respondent to transfer that domain name. See Surecom Corporation NV, v. Filearn, Thomas Standford,
WIPO Case No. D2015-0824.

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Based on the available record, the Panel finds that the Complainant has established the third element of the

Policy with regard to the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <c4-archiver.com> be transferred to the Complainant.

/Andrea Mondini/ Andrea Mondini Presiding Panelist

/Mathias Lilleengen/ Mathias Lilleengen Panelist

/Jeremy Speres/
Jeremy Speres
Panelist
Date: March 9, 2025