The Complainant is Multi Media, LLC of Longwood, Florida, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Private Whois, Global Domain Privacy Services Inc. of Panama / Waist Corset of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with URL Solutions, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2018, the Registrar 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 March 1, 2018, 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 March 1, 2018.
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 March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2018.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on April 4, 2018. 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 bases the Complaint on the trademark CHATURBATE, which the Complainant began to use in 2011, in connection with streaming of adult audio and visual content via the Internet, and for which the Complainant currently owns several trademark registrations (details attached to Annexes E and F of the Complaint).
The Complainant registered the domain name on February 26, 2011 (see Annex G), which started to function on June 30, 2011 (Annex E).
The Complainant owns rights in the trademark CHATURBATE, registered in the United States (United States Patent and Trademark Office (“USPTO”) Reg. No. 4,288,943, and No. 4,988,208),and with the first registration dating back to February 12, 2013.
The disputed domain name was registered on December 25, 2017, and currently resolves to a hosting website. According to the evidence provided by the Complainant, the disputed domain name resolved to a website imitating the Complainant’s official website, dedicated to providing the same services. 5. Parties’ Contentions A. Complainant
The Complainant claims to own and operate the website located at the domain name in connection with the provision of streaming audio, visual, and audiovisual material and other entertainment services to its users via the World Wide Web.
The Complainant asserts to have registered rights in the CHATURBATE mark with the USPTO and has developed extensive common law rights throughout the world. Furthermore, the Complainant claims to be using the CHATURBATE mark in international commerce in connection with streaming audio and video since at least 2011.
Furthermore, the Complainant asserts that the domain name , first registered on February 26, 2011, is one of the most popular websites in the world, being the 120th most popular website on the World Wide Web.
The disputed domain name contains the registered trademark CHATURBATE, followed by the number “2018”. In this regard, the Complainant claims that adding the numbers of a year to the Complainant’s registered mark does nothing to eliminate the confusing similarity, and moreover, the numbers “2018” added to the disputed domain name constitutes a merely generic or descriptive term.
Secondly, the Complainant contends that the Respondent has no rights or any legitimate interests in the disputed domain name, stating that the Respondent will be unable to provide credible evidence that it has rights or legitimate interests in the disputed domain name, which would be proved by the fact the Respondent is using the disputed domain name to direct Internet users to a website offering similar services to those that the Complainant offers under the CHATURBATE mark.
Furthermore, the Complainant claims that the Respondent is not commonly known as “chaturbate” or any similar terms including typographical error variants of those terms. The Respondent did not register the disputed domain name until December 25, 2017, long after the Complainant’s registration of the domain name.
Finally, the Complainant claims that the disputed domain name was registered, and is being used in bad faith, as it is clearly being used for a commercial purpose. The Respondent’s website redirects Internet users to a website that offers similar adult-themed social networking services, presumably for commercial gain.
The disputed domain name was registered in December 25, 2017. By that time, the Complainant had been using its fanciful mark since June 2011, over six years before the Respondent registered the disputed domain name. The Complainant also states that it acquired registered rights in the CHATURBATE mark in June 2012, over five years before the Respondent registered the disputed domain name. The Respondent 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 is intentionally attempting to attract Internet users to its website for commercial gain by creating confusion based on a minor modification of the Complainant’s mark
Finally, the Respondent’s diversionary use of the Complainant’s CHATURBATE mark to redirect Internet users to its own website that offers competing services, presumably for commercial gain, also amounts to bad faith registration (and use) of the disputed domain name under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel considers that the information provided by the Complainant clearly attests that the disputed domain name can be considered confusingly similar to the Complainant’s registered trademark CHATURBATE.
In this regard, the Panel agrees with the Complainant’s contentions that the addition to CHATURBATE, of the numbers “2018” does not distinguish the disputed domain name from the Complainant’s trademark, which is clearly identifiable in the disputed domain name.
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CHATURBATE, and that this requirement of the Policy has been satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests it may have in the disputed domain name. Neither has the Respondent refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel considers the silence of the Respondent as a tacit acceptance of the claims made by the Complainant.
Moreover, the Panel has not found the occurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated the following: to be the holder of a registered trademark and associated domain name, which are prior to the Respondent’s registration of the disputed domain name, and that it has not licensed the use or exploitation of its CHATURBATE trademark to the Respondent.
Therefore, in light of the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complainant has also fulfilled the second element required by the Policy. C. Registered and Used in Bad Faith
This third element requires the Complainant to prove that the disputed domain name (1) was registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.
The disputed domain name incorporates the Complainant’s trademark CHATURBATE.
The Panel finds the Respondent must have had knowledge of the Complainant’s mark CHATURBATE and its rights therein at the time the Respondent registered the disputed domain name. These findings are based on: (i) the Complainant’s trademark being a fanciful trademark, with no inherent meaning; (ii) the disputed domain name is confusingly similar to the Complainant’s trademark; (iii) the disputed domain name resolved to a website which offered the same services as the website of the Complainant; and (iv) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name.
Finally, given the similarity of the disputed domain name to the Complainant’s CHATURBATE trademark and in light of the use given to the disputed domain name, the Panel agrees that the Respondent’s motive to register the disputed domain name can only have been to create a likelihood of confusion with the Complainant’s CHATURBATE trademark, through the content appearing on the website associated with the disputed domain name, within the meaning of paragraph 4(b)(iv) of the Policy.
Consequently, for all these reasons, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, and 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.
Rodrigo Velasco Santelices
Sole Panelist
Date: April 16, 2018
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