1. 1 The Complainant is Bright Imperial Ltd. of Wanchai, Hong Kong SAR of China, represented by Sheppard, Mullin, Richter & Hampton, United States of America.
1. 2 The Respondent is PROXHOST International, Herr Carlos Torres of Ciudad de Panamá, Panamá. 2. The Domain Name and Registrar
2. 1 The disputed domain name (the “Domain Name”) is registered with 1API GmbH (the “Registrar”). 3. Procedural History
3. 1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2012. On September 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3. 2 The Center verified that 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”).
3. 3 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 September 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2012.
3. 4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 30, 2012. 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
4. 1 The Complainant has since 2006 operated an adult entertainment website under the name “RedTube” from the domain name . The website offers pornographic videos to its visitors. It attracts a very large amount of traffic. Between April 1, 2008 and June 22, 2011 there were over 9 billion visits to the RedTube website.
4. 2 The Complainant is the owner of numerous trade marks around that comprise the word “redtube”. They include International Registration No. 1003812 dated April 4, 2009for the word mark REDTUBEin classes 9, 35, 38, 41 and 45 of the International Classification. The application designated over 60 countries and in most (but not all) countries that mark had proceeded in whole or in part to grant.
4. 3 The Domain Name was registered on June 21, 2010.
4. 4 The publically available WhoIs details for the Domain Name identifies the “owner organisation” to be “PROXHOST International” and the “owner name” to be “Herr Carlos Torres” and provides a contact address in Panamá.
4. 5 On May 24, 2011 the Complainant’s lawyers wrote to Mr. Torres at the contact address provided in the WhoIs details. In that letter they complained that the Domain Name was being used “for redirecting users to [the Respondent’s] own adult website” and claimed that this use infringed the Complainant’s trade mark rights. No response to that letter was forthcoming.
4. 6 As at August 29, 2012 the website operating from the Domain Name offered pornographic videos to its visitors. This website continues to operate as at the date of this decision. 5. Parties’ Contentions A. Complainant
5. 1 The Complainant refers to the extent of its business and its various trade marks. It claims that by 2009 it ranked as the 63rd most popular website on the Internet and the third most popular adult site. In addition to its registered trade marks, it contends that it has earned “widespread notoriety” around the world and claims common law trade mark rights in the United States of America, United Kigdom of Great Britain and Northern Ireland and Canada.
5. 2 The Complainant maintains that the Domain Name includes the Complainant’s mark REDTUBE in its entirety and thus is confusingly similar to that mark.
5. 3 The Complainant also contends that as its website is “one of the most trafficked adult websites in the world. [the] Respondent was or must have been aware of the Complainant’s REDTUBE mark at the time he registered the [Domain Name]”.
5. 4 The Complainant asserts that the Respondent has no rights in the Domain Name, and has not been licensed or authorised to use the Complainant’s trade mark. It contends that the Respondent has without permission placed advertisements on the website operating from the Domain Name for the Complainant’s competitors and has even gone so far as to “embed [the] Complainant’s own videos” on that site. It denies that the Respondent is commonly known by the names “Redtube” or “Redtube8”, or that the Respondent’s use of the Domain Name constitutes legitimate non-commercial or fair use.
5. 5 So far as bad faith is concerned, the Complainant maintains that the Domain Name is being used to free ride on the Complainant’s reputation and customer goodwill with a view to generating revenue from the advertisements appearing on the web pages operating from the Domain Name. It repeats its assertion that the Respondent must have been aware of the Complainant website at the time that the Domain Name was registered because of the fame the REDTUBE mark had generated in the four years prior to the registration of the Domain Name. It also alleges that the Respondent had “constructive knowledge” of this mark, citing a number of UDRP decisions in 2000 and 2001 that are said to support that proposition. B. Respondent
5. 6 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6. 1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6. 2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6. 3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6. 4 The Panel accepts that the Domain Name can be most sensibly understood as the terms “Redtube” or “Red tube” in combination with the number “8” and the “.com” TLD. Accordingly, the Domain Name contains the entirety of the Complainant’s mark. The addition of the number “8” and the “.com” TLD does not so distract from the term “Redtube” as to prevent the Domain Name from being confusingly similar to the Complainant’s REDTUBE mark. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6. 5 The relevant facts of this case appear to be reasonably clear. The Respondent has been using the Domain Name either directly or, more recently, indirectly to promote a website of the same sort as the Complainant’s and in competition to the Complainant.
6. 6 If the Respondent is using the Domain Name in connection with those activities with the intention of taking unfair advantage of confusion arising out of the similarity between the Domain Name and the Complainant’s REDTUBE marks with a view to drawing Internet users to his website, that use is not a use in connection with a bona fide offering of services. Indeed, such a finding is a positive indicator of the fact that no right or legitimate interest exists (see Premier Farnell Corp. v. BlueHost. com, BluehostInc / Newark del Peru S. A., WIPO Case No. D2010-2111).
6. 7 The motivations of the Respondent for registering the Domain Name and its subsequent use are dealt with in greater detail under the bad faith heading below. As is explained under that heading, the Panel has little doubt that the Domain Name is being used in this fashion and accordingly concludes that the Respondent has no legitimate rights or interests. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6. 8 The Panel is persuaded by the evidence before it that the Respondent has registered and used the Domain Name with the intention of taking unfair advantage of confusion arising out of the similarity between the Domain Name and the Complainant’s REDTUBE marks with a view to drawing internet users to his website.
6. 9 Although it is not entirely inconceivable that the term “Redtube” might have been independently chosen as a name for an adult video website, no such claim is made by the Respondent in this case. In any event, it seems reasonably clear from the evidence before the Panel that by the time the Domain Name was registered, the Complainant’s business was very extensive and was already very well known around the world. The Panel therefore that accepts that the Respondent was aware of the Complainant’s use of that term prior to the registration of the Domain Name. If so, the most likely reason for the choice of that name was to take commercial advantage of the reputation in that name as a result of the Complainant’s activities.
6. 10 The Complainant offers to evidence or argument as to why the Respondent included the number “8” in the Domain Name, but conversely there is no evidence or argument from the Respondent as to why the inclusion of that number should make any difference to the Panel’s conclusions as to the motives of the Respondent in this case.
6. 11 Another factor that is supportive of the conclusion that the Domain Name has been registered and used with the Complainant’s marks in mind is the Complainant’s undisputed assertion that the Respondent has reproduced the Complainant’s own videos on the site operating from the Domain Name.
6. 12 In the circumstances the Panel has little difficulty in concluding that the Domain Name was both registered and is being used in bad faith and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6. 13 In coming to this conclusion, the Panel has not been persuaded by the Complainant’s claim that the Respondent had “constructive knowledge” of its marks. The fact that arguments of constructive knowledge are rarely accepted as founding bad faith (particularly where the Respondent is based outside of the United States) is something which is addressed in some detail in paragraph 3. 4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2. 0"). Similar comments were to be found in the first version of the Overview.
6. 14 The Complaint in this case has been competently prepared by the Complainant’s advisors. The Panel can also understand the temptation of those advisors to include an argument of constructive knowledge given that was successful in a number of cases in the early days of the Policy.
6. 15 Nevertheless, panels are now familiar with the contents of the WIPO Overview and the fact that it attempts to summarise the prevailing views of panelistson various issues. It is now frequently cited by panels in their decisions. This is so even though the document has no official status under the Policy and panelists are not bound to follow its conclusions. It is perhaps time that parties began to realise that it is neither helpful nor realistic for them to advance a position that appears at odds with that Overview, without at least putting forward some form of argument as to why in their particular case the relevant part of the Overview should either be disregarded or distinguished. 7. Decision
7. 1 For 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.
Matthew S. Harris
Sole Panelist
Dated: November 6, 2012
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