The Complainant is Surecom Corporation NV of Willemstad, Curaçao, Overseas Territory of the, Netherlands, represented by Eidsness Law Offices, United States of America ("US").
The Respondent is John Deiz, SBDGroup of Ljubljana, Slovenia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2016. On May 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2016, 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.
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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 9, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on June 15, 2016. 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
Since 2007, the Complainant has operated an adult webcam site known as "C". Its website traffic has grown from 22.7 million visits in 2007 to 1.83 billion visits in 2015.
The Complainant owns a number of registered trade marks for CAM4 including US trade mark no. 4,062,460, filed on December 2, 2010, in class 35 and registered on November 29, 2011 and European Union trade mark no. 010053701, filed on June 16, 2011, in classes 35 and 41 and registered on November 16, 2011 .
The disputed domain name was registered on January 20, 2016.
The Complainant emailed a legal letter to the Respondent on May 3, 2016. The Respondent replied the same day simply stating: "That domain doesn't infringe your trademark. There's no content there." 5. Parties' Contentions A. Complainant
A summary of the Complainant's contentions is as follows:
The disputed domain name is identical or confusingly similar to the Complainant's trade mark. The disputed domain name consists of the Complainant's mark plus the term "vr", which stands for "virtual reality". This term is likely to be associated with the Complainant's mark which is used exclusively in the internet space in which "virtual reality" is a known and rapidly growing quantity.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trade mark rights, has not been known by the disputed domain name and there is no evidence that it was using or planning to use the disputed domain name in a bona fide offering of goods or services.
The disputed domain name has been registered and used in bad faith. It was clearly selected in order to target the Complainant's trade mark rights. The disputed domain name was registered some nine years after the Complainant's site began its "meteoric rise" to become one of the most popular websites in the world.
The Respondent has intentionally attempted to attract Internet users to its site by creating a likelihood of confusion with the Complainant's mark. The site was formerly used for an adult web cam site emulating the colour scheme and layout of the Complainant's site but this was removed on the date of the Complainant's legal letter. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark CAM4 by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive use of that name.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Here, the Complainant's distinctive trade mark is undoubtedly the dominant component of the disputed domain name and the addition of the initials "vr", referable to the descriptive term "virtual reality", is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence before the Panel of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
In the Panel's view, it is obvious that the Respondent registered the disputed domain name with the Complainant's trade mark in mind. It its pre-action communication, the Respondent did not deny awareness of the Complainant's high profile mark, let alone attempt to provide a legitimate reason for its selection of the disputed domain name. Furthermore, the Complainant asserts that the Respondent formerly used the disputed domain name for a website offering adult webcam content and which indeed copied the colour scheme and layout of the Complainant's site. The Complainant has not exhibited a screenshot due to its graphic nature but the Respondent has not appeared in this proceeding to deny the Complainant's assertion.
In the Panel's view, paragraph 4(b)(iv) of the Policy applies. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
Even if one were to disregard the previous use of the Respondent's website, due to the lack of supporting evidence, the Complainant has nonetheless established passive holding in bad faith – see paragraph 3.2 of WIPO Overview 2.0. The following are the cumulative circumstances of bad faith: the distinctive and high-profile nature of the Complainant's trade mark; the lack of a response from the Respondent in this proceeding; and the lack of any denial of knowledge or explanation for selection of the disputed domain name in the Respondent's pre-action email.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 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 be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: June 29, 2016
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