The Complainant is Multi Media, LLC, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / John Holmes, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2020. On April 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2020, 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 April 21, 2020 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 April 21, 2020.
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 May 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2020.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 11, 2020. 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 BackgroundThe Complainant has, since about June 30, 2011 been offering streaming audio, visual and audiovisual material and other entertainment services to its users via the World Wide Web, under its trademark CHATURBATE. According to Alexa Internet, in 2020 the Complainant’s website operated under its CHATURBATE trademark is the 74th most popular website in the world. The Complainant is the proprietor of United States Federal registration No. 4,288,943, registered on February 12, 2013, relating to its CHATURBATE trademark.
The disputed domain name was registered on October 31, 2014, and relates to a website that contains links that allow the Respondent’s users to, inter alia, download infringing recordings of copyright-protected content originally available on the Complainant’s CHATURBATE website.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that the disputed domain is confusingly similar to its CHATURBATE trademark, containing the CHATURBATE trademark in its entirety, with the mere addition of a descriptive or non distinctive element.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Complainant has never granted permission to the Respondent to use its CHATURBATE trademark in connection with a domain name, or otherwise.
The Complainant alleges that the disputed domain disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering similar content to that available on the Complainant’s CHATURBATE website, to the Complainant's detriment.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred 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.
A. Identical or Confusingly SimilarIt is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.net” indicator to be irrelevant in the circumstances of the present case, and so finds.
The Complainant has drawn the Panel's attention to a number of prior decisions under the Policy, in which panels have recognised the Complainant's registered and common law rights to its CHATURBATE trademark as being sufficient for the purposes of proceedings under the Policy, the most recent being Multi Media, LLC v Superprivacy Services LTD c/o Dynadot,
WIPO Case No. D2010-2004. The Panel finds these decisions to be compelling, and has no difficulty in recognising the Complainant's rights in the CHATURBATE trademark.
It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, and from the material presented to the Panel, the Panel considers the word “model" to be a descriptive or non distinctive element in the commerce in goods and services offered by the Complainant under its CHATURBATE trademark. The Panel considers that the Complainant's CHATURBATE is readily recognisable within the disputed domain name, and, accordingly, finds that this disputed domain name is confusingly similar to the Complainant's CHATURBATE trademark, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIt is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel is convinced that the Complainant's CHATURBATE trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds.
It is well-established in prior decisions under the Policy, with which the Panel agrees that the use of a disputed domain name in connection with goods and services offered by a complainant under a trademark in which the Complainant has clear trademark rights, constitutes use of that disputed domain name in bad faith. That clearly applies in the circumstances of the present case, and that Panel, accordingly, finds that the disputed domain name in this case is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
George R. F. Souter
Sole Panelist
Date: June 25, 2020