The Complainant is Multi Media, LLC of Las Vegas, Nevada, United States of America ("United States" or "US") represented by Randazza Legal Group, PLLC, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 24, 2016. On May 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 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 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 17, 2016.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on June 21, 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
The Complainant is the registered owner of the trademark registration for the term CHATURBATE, i.e.,US Trademark Registration No. 4288943 filed on June 28, 2012, and registered on February 12, 2013, for services in classes 38 and 42. The Complainant has also filed a figurative trademark application including the verbal element CHATURBATE, i.e., US Serial Number No. 86808048 filed on November 3, 2015 for services in classes 38 and 42. Finally, the Complainant also registered a domain name containing the mark CHATURBATE, i.e., , created on February 26, 2011.
The Respondent registered the disputed domain name on October 2, 2013. It results from the Complainant's documented allegations that the disputed domain name resolves to a website that refers to "BongaCams", which offers services virtually identical with the Complainant's services. 5. Parties' Contentions A. Complainant
The Complainant alleges that it owns and operates the website available under domain name and has been using its domain name for several years in international commerce in connection with the provision of streaming audio, visual, and audiovisual material and other entertainment services to its users via the World Wide Web since at least 2011. In fact, the Complainant registered the domain name on February 26, 2011, and its website went live on or about June 30, 2011. The Complaint contends that in providing its services, it has developed extensive common law rights throughout the world. The Complainant claims that its website at the domain name is one of the most popular websites in the world in 2016, being within the rare top 1,000 websites for overall traffic. Because of that, it has become a prime target for cybersquatters wishing to profit from the goodwill that the Complainant has garnered in the CHATURBATE mark. According to the Complainant, the Respondent is one of those cybersquatters.
The Complainant contends that the disputed domain name is identical or, at the very least, confusingly similar to its trademark CHATURBATE, since it directly incorporates said trademark, adding only a hyphen and the generic term "chat", that is already part of the Complainant's mark and describes one of the primary services available on the Complainant's website. Thus, the addition of this term does nothing to mitigate the likelihood of confusion created by the disputed domain name. In fact, it potentially increases it.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. The Respondent is using the disputed domain name to offer the exact same services that the Complainant offers under the CHATURBATE mark. Specifically, the disputed domain name is hosting the site BongaCams, which is one of the Complainant's direct competitors. The Respondent did not offer these services - that are virtually identical to and therefore competitive with the Complainant's services - under the disputed domain name until well after the Complainant had acquired registered rights in the CHATURBATE mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and no evidence indicates that the Respondent is known by the text of the disputed domain name. This is particularly true since the Respondent is hiding its identity from the public by hiding its identity behind a privacy service. Furthermore, the disputed domain name is clearly being used for a commercial purpose. Not only is it selling streaming audio and video streaming services to Internet users and permitting users to sell services to each other, it contains advertising as well. The Respondent is undoubtedly compensated for this advertising, as well as the services that it sells to the members of the /BongaCams website. Finally, "Chaturbate" is a novel, invented term and there is no obvious connection between "Chaturbate" and streaming audio and audiovisual services. The Respondent is profiting financially from the disputed domain name and chose the disputed domain name to profit from the goodwill of the Complainant's CHATURBATE marks.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, the Complainant holds that the Respondent has registered the disputed domain name because it knew of the Complainant and the goodwill associated with its CHATURBATE mark and hoped to profit from it. The Respondent clearly hoped to attract Internet users to its website by creating a likelihood of confusion between the Complainant's services and the infringing services offered by the Respondent. Because the Complainant had used the CHATURBATE marks in connection with a website offering streaming video and audio for several years and the Respondent offers the exact same services, it is inconceivable that the Respondent was not aware of the Complainant's mark when the Respondent registered the disputed domain name, particularly since the Respondent is using the disputed domain name to enrich one of the Complainant's main competitors.
In addition, the Complainant contends that the Respondent's use of a privacy service prior to the Complainant filing this proceeding is additional evidence of bad faith. Because the Respondent registered the disputed domain name to offer services provided by the Complainant's competitor, the Respondent used a privacy service in a bad faith attempt to hide its identity and conceal its intellectual property infringement. Furthermore, the Respondent desired to disrupt the Complainant's business and to divert Internet traffic away from the Complainant's website at when Internet users search for CHATURBATE. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of a trademark registration consisting of the term CHATURBATE, i.e.,US Trademark Registration No. 4288943 filed on June 28, 2012 and registered on February 12, 2013, for services in classes 38 and 42. This trademark predates the creation date of the disputed domain name, which is October 2, 2013.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (e.g.,Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). This is the case in the present proceeding where the Complainant's registered trademark is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant's registered trademark CHATURBATE, as its distinctive element with the generic term "chat" which is totally applicable as a descriptive term of one of the primary services available on Complainant's site. The element "chat" is therefore calculated to increase the confusing similarity between the trademark and the disputed domain name. The addition of this descriptive term - combined with a hyphen - to the distinctive trademark is insufficient in itself and does not serve to distinguish the disputed domain name from the trademark, but rather, reinforces the association of the Complainant's trademark with the disputed domain name (see e.g., Deutsche Lufthansa AG v. Kudakwashe Musunga / PrivacyP,WIPO Case No. D2009-1754; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name. In the Panel's view, based on the Complainant's undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
It is the view of this Panel that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services in the sense of paragraph 4(c)(i) of the Policy and cannot be considered a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(iii) of the Policy. First of all, the website to which the disputed domain name resolves offers the same services that the Complainant offers under the CHATURBATE mark and its domain name . In addition, the Respondent's concealment of its identity behind a privacy service is also taken in consideration, and this Panel finds that it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant's registered trademark CHATURBATE – a distinctive mark not descriptive of any related services – by registering a domain name fully containing the Complainant's trademark with the intent to attract Internet users for commercial gain.
Finally, the Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy, nor has it acquired trademark rights.
It is acknowledged that once the Panel finds 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 disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. One of these circumstances is that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the CHATURBATE trademark as to the source, sponsorship, affiliation or endorsement of its website. According to the Complainant's non-contested allegations the Respondent's website offers services such as selling streaming audio and video streaming services to Internet users and permitting users to sell services to each other, and it also contains advertising. The Respondent did therefore benefit from any confusion between the Respondent and the Complainant that arose from the similarities in the disputed domain name and services offered by the Complainant and offered by the Respondent. Therefore, it is highly likely that the Respondent received revenue from Internet users who happen to come across the Respondent's disputed domain name and website by means of confusion with the CHATURBATE trademark (see Cembra Money Bank AG v. Original-Kreditbox AG limited, Cinar Abdulhamit,WIPO Case No. D2015-0885; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812).
In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(iv) 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.
Tobias Malte Müller
Sole Panelist
Date: July 5, 2016
Full & Egal Universal Law Academy