The Complainant is Bright Imperial Ltd. of Wanchai, Hong Kong, SAR of China, represented by Sheppard Mullin Richter & Hampton LLP, United States of America.
The Respondent is Domain Admin, PrivacyP/Private Registration, of Moergestel, the Netherlands and Panama City, Panama respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2010. On June 30, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On July 1, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2010 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 Amended Complaint on July 6, 2010. The Center verified that the Amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2010.
The Center appointed Michael J. Spence as the sole panelist in this matter on July 30, 2010. 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. 4. Factual Background
The Complainant is the proprietor of an adult website that receives 6 million visits a day and is the third most popular adult website currently operating. It has extensive trademark registrations in several countries and is famous in the relevant market sector as a supplier of adult videos, under the mark REDTUBE. The Respondent registered the disputed domain name two years after the Complainant began to operate under the REDTUBE mark and well after it had become famous. The site that the Respondent operates under the disputed domain name includes links to other suppliers of adult material. 5. Parties’ Contentions A. Complainant
The Complainant contends that, consisting as it does of the Complainant’s registered trade mark with the addition of the common Internet term ‘blog’, the disputed domain name is identical or confusingly similar to its mark. It also contends that the Respondent has no right or interest in the disputed domain name and has only ever used it to gain advertising revenue. Finally, the Complainant contends that the registration and continued use of the disputed domain name is in bad faith because: (a) the Respondent is using the confusion created by the disputed domain name to gain advertising revenue, even after being given notice of the Complainant’s rights in the REDTUBE trade mark; and (b) the Respondent has offered to sell the disputed domain name to the highest bidder. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name contains the whole of the Complainant’s trade mark and is distinguished only by the generic Internet term ‘blog’. There is no doubt that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark, especially given its considerable fame in the relevant market sector.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110), though this is made more difficult in cases in which no reply has been filed.
In this case, given that the Respondent’s website was established after the Complainant’s business had a significant international reputation, and is being used to generate advertising revenue from suppliers in competition with the Complainant, it is difficult to imagine any right or legitimate interest in the disputed domain name that the Respondent might have.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
In several Panel decisions, both knowingly profiting from the confusion created by a domain name identical or confusingly similar to a complainant’s mark, and seeking to profit by trading in such a mark, have been found to be strong evidence of registration and use in bad faith. In this case, the high degree of probable confusion, and the clear evidence of an intention to trade in the disputed domain name support the Complainant’s claim that the Respondent both registered, and is continuing to use, the disputed domain name in bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Michael J. Spence
Sole Panelist
Dated: August 9, 2010
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