The Complainant is PB Web Media B.V. of Longwood, Florida, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Redacted for Privacy, Domains By Proxy, LLC of Scottsdale, Arizona, United States / George Larson of Miami, Florida, United States (“Respondent”). 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 September 19, 2018. On September 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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 September 24, 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 September 26, 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 September 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2018.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 30, 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
Complainant in a United States Company which owns and operates a website in connection with adult entertainment.
Complainant is the registered owner of the domain name , registered April 7, 2011. Complainant registered the trademark LUPOPORNO with BENELUX Reg. No. 0989079, accruing April 15, 2016. Such registered rights have been previously recognized in PB Web Media B.V. v. Domain Admin. Whois Privacy Corp/Max Ya,WIPO Case No. D2015-0928. Respondent was properly notified and served in this proceeding but has not responded in any way and has defaulted.
The disputed domain name was registered on June 6, 2016. According to the Complaint, the disputed domain name resolves to a website providing multimedia content in connection with adult entertainment. 5. Parties’ Contentions A. Complainant
Complainant owns and operates a website in substantial international commerce under the domain name . It has done so for several years in connection with the providing advertising, promotional activity, providing links to third parties and a search engine for photographs and other multimedia materials in the field of adult entertainment services via the World Wide Web. The trademark LUPOPORNO is extensively used for these services. Complainant also has common law rights in the mark LUPOPORNO, uses occurring since July 2011. These rights predate the earliest use or registration by Respondent, registration of the disputed domain name occurring on June 6, 2016.
Complainant’s registered rights are for Class 35 (advertising and promoting the services of other through a web page linking the websites of others with, e.g., the compilation of data and data search) and Class 42 (Computer services, namely providing search engines for searching photographs, multimedia materials, etc. in the field of adult entertainment). Complainant’s Benelux registration constitutes prima facie evidence of exclusive rights to the trademark LUPOPORNO pursuant to the Policy.
Complainant’s website as launched in July 2011 is essentially the same as it is today in operation. There are over 150,000 visitors per day averaged for its website. (Annex G to Complaint).
The disputed domain name is identical and/or confusingly similar to Complainant’s mark. The addition of the Top-Level Domain (“TLD”) “video” is not contrary to that conclusion. It does nothing to mitigate the confusion. This confusion is exacerbated by Respondent of the same service for the same industry on the same or substantially similar products. (Complaint pp 7-8).
As a result of Respondent’s confusing and infringing uses Complainant has received several copyright infringement notices from third parties referencing content on . Users have attempted to take down such materials by incorrectly directing the takedown notices to the Complainant’s “www.” website. This demonstrates actual confusion between Complainant and the illegitimate uses and registration by Respondent.
Respondent has no rights or legitimate interests in the disputed domain name. Use in bad faith cannot establish rights or legitimate interests. Given the presentation of rights by Complainant the burden shifts to Respondent to present concrete evidence that it has any rights. Respondent is using the disputed domain name to direct customers of Complainant and Complainant’s website to a website offering the same or substantially similar services as offered on . This is “an obvious counterfeit site offering the same services”, with a similar layout and format. Respondent’s use merely is the same as Complainant’s uses, competitive therewith and incapable of use for a legitimate purpose. This is particularly evident from Respondent’s hiding its identity from the public under a Whois privacy wall. There was no legitimate or good reason to do so.
Complainant’s mark is an invented term only used by Complainant and not a word in any language. By reason of this Complainant is entitled to the strongest protection. Respondent is intentionally profiting from the uniqueness of the mark and the substantial good will generated by Complainant since 2011. The failure to respond to the demand letter of Complainant is further evidence of no rights or legitimate interests by Respondent.
The disputed domain name was registered in bad faith. Respondent knew at the time of its registration in June 2016 it was nearly five years after the substantial use in the same competitive environment was being developed by Complainant. Respondent knew of Complainant and the good will generated by Complainant. Respondent intentionally attracted the customers of Complainant by such registration and follow up use. When Complainant served its demand letter Respondent actively changed its Whois back to the Whois privacy wall. It is inconceivable that Respondent was unaware of Complainant’s registrations and uses prior to Respondent’s registration filing of the disputed domain name. Even if there was no actual knowledge constructive knowledge is enough. Bad faith and use are confirmed by the diversionary practices of Respondent all for commercial gain from the rights of Complainant. Respondent committed an abusive registration seeking to profit and exploit the rights of Complainant.
Bad faith use is shown where there is an attempt to disrupt another party’s legitimate uses and to divert the good will of another for one’s own monetary purposes without concern for such other party’s rights. More particularly true when the same goods and services are being attempted to be provided and are being provided. Users reaching Respondent’s site either believe they have reached Complainant’s website or there is an agreement or relationship between Respondent and Complainant. This was a clear attempt to exploit Complainant’s good will and brand name recognition. B. Respondent
The Respondent did not reply to any of the Complainant’s contentions. 6. Discussion and Findings
As an initial matter a complete default by Respondent does not necessarily require any findings for Complainant. This Panel has reviewed all the evidence before to determine what should be a proper, reasonable and rationale determination. That said, however, the evidence presented by Complainant is supportable on all issues as follows. A. Identical or Confusingly Similar
Complainant uses and has registered its trademark, uniquely conceived, LUPOPORNO both as a mark and domain name right under . The disputed domain name is essentially identical to Complainant’s trademark. That Respondent has registered the disputed domain name under the “.video” TLD is irrelevant to this conclusion. SoftCom Technology Consulting ,Inc v.Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792. The addition of the TLD “.video” does not negate the identity between the disputed domain name and the mark. Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; Koninklijke KPN N.V. v. Marjin Vlug,WIPO Case No. D2014-1116.
The Panel finds the disputed domain name to be identical or confusingly similar to Complainant’s mark under Policy Paragraph 4(a)(i) and Rules, paragraphs 3(b)(viii) and 3(b)(ix)(1). B. Rights or Legitimate Interests
By defaulting Respondent has shown no rights or legitimate interests in the disputed domain name . However any such claim is directly refuted by the (1) Benelux registration of LUPOPORNO prior to the registration of the disputed domain name; (2) the domain name registration earlier filed by Complainant in 2011; and (3) the substantial common law rights and uses by Complainant for five years relating to the mark or domain name LUPOPORNO before Respondent registered the disputed domain name. There would appear to be nothing in the record to refute Complainant’s prima facie case. The Panel finds there are no rights or legitimate interests in the disputed domain name that should be accorded to Respondent. Policy paragraph 4(a)(ii). Rules paragraph 3(b)(ix)(2). C. Registered and Used in Bad Faith
Respondent comes to this proceeding with a bad faith registration. It had to constructively know that the same mark and word LUPOPORNO had been created and used by Complainant for many years. Respondent was/is in the identical industry doing the identical services with identical or substantial similar products. Respondent was also creating confusion in the marketplace by registering the disputed domain name. The only proper conclusion is Respondent did not care and wished to siphon off the good will created by Complainant for many years before Respondent arrived on the scene in June 2016. There is no other way to look at the reasons for registering the disputed domain name, identical to a uniquely and novel use of words by Complainant.
Use in bad faith can be seen from Respondent’s actions in registering the disputed domain name and, without concern, using the disputed domain name for identical activities to Complainant’s. The uses by Respondent going forward from June 2016 to the present appear only to commercially prioritize the (1) good will; and (2) brand name of Complainant for Respondent, both of which on this record only belong to Complainant. The Panel finds that Respondent has registered and used the disputed domain name in bad faith. Policy paragraph 4(a)(iii) and 4(b). Rules paragraph. 3(b)(ix)(3). 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 Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: November 13,2018
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