The Complainant is Duodecad IT Services Luxembourg S.à.r.l. of Luxembourg, represented by Randazza Legal Group, United States of America (“United States”).
The Respondent is Dragos Neagu of Giurgiu, Romania. 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 26, 2016. On May 26, 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 Complainant filed an amended Complaint on June 7, 2016, to address an administrative formality.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016. On June 15, 2016, the Respondent submitted an informal email noting the domain name was locked and asking what was needed to transfer the disputed domain name. On the same day, the Center emailed the Parties inviting the Complainant to request suspension of the proceeding. The Respondent did not submit any formal response.
On June 29, 2016, having received no further communications from the Respondent, the Center sent an email to the Parties indicating that the Center would proceed with the appointment of the Administrative Panel. On the same day, the Complainant requested a 30-day suspension of the proceeding. On June 29, 2016, the proceeding was suspended until July 29, 2016.
On July 29, 2016, the Complainant requested reinstitution of the proceeding. The proceeding was reinstituted on August 1, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 3, 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 owner and operator of the domain name which was registered on November 12, 2001 and offers adult entertainment services.
The United States trademark registration No. 3,129,772 for LIVEJASMIN in class 38, filed on September 12, 2005 and registered on August 15, 2006 is owned by WebMindLicenses Kft, for which the Complainant is the exclusive licensee.
The disputed domain name was registered on May 13, 2013, and currently resolves to a parked page. The disputed domain name was previously used in connection with a website offering adult entertainment services in competition with those of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is the exclusive licensee of the LIVEJASMIN trademark and operator of the website “www.” which has been used at least as early as 2003 in connection with the provision of adult entertainment services on the Internet. According to the Complainant, “www.” is one of the most popular Internet websites for video and virtual reality games in the world, being currently ranked at number 331 at Alexa’s Internet Summary.
The disputed domain name which, according to the Complainant, was used to offer services that directly competed with the Complainant’s services, reproduces the distinctive term “Jasmin” in the Complainant’s LIVEJASMIN trademark, being confusingly similar therewith.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that the website that resolved from the disputed domain name was initially used for the offering of competing services and later on was used for redirecting Internet users to the Complainant’s competitors’ webpages. Such use cannot characterize a legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Complainant asserts that bad faith in the registration and use of the disputed domain name is evident given the fact that the Respondent used the disputed domain name in a clear attempt to attract Internet users to its website by creating a likelihood of confusion among the consuming public as to the source, affiliation or endorsement of the Respondent’s infringing services and the Complainant’s website and services. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. On June 15, 2016, the Respondent sent an informal email noting the domain name was locked, and asking what was needed to transfer the domain name. There were no further communications from the Respondent. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
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 Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has shown rights over the LIVEJASMIN trademark, asserting that it holds the exclusive license of the LIVEJASMIN trademark, duly registered in the United States.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8 states that “[i]n most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP.” The Panel thus finds that the Complainant can be considered as having rights over the LIVEJASMIN trademark under the UDRP.
The disputed domain name reproduces the element “Jasmin”, being the distinctive and dominant element of the Complainant’s LIVEJASMIN trademark, being confusingly similar therewith.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii. the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
iii. the Respondent is making 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.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, the Complainant has evidenced that the website that resolved from the disputed domain name offered initially competing adult entertainment services and later on was used for redirecting Internet users to the Complainant’s competitors’ webpages, which cannot characterize a legitimate noncommercial or fair use of the disputed domain name.
In addition to that, the Respondent’s informal email asking what was needed to transfer the disputed domain name corroborates a finding of lack of rights or legitimate interests in the disputed domain name.
Under these circumstances and absent further evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the partial reproduction of the LIVEJASMIN trademark in the disputed domain name, as well as the offer of similar adult entertainment services to those of the Complainant on the website that resolved from the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 5, 2016
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