The Complainant is MFCXY, Inc. d/b/a myfreecams.com, United States of America (the "United States"), represented by Walters Law Group, United States.
The Respondent is Romanenko Vanya, Vanos, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name). On October 23, 2020, 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. On October 26, 2020, the Center sent an email to the Parties in English and Ukrainian regarding the language of the proceedings. On October 27, 2020, the Complainant requested that English be the language of the proceedings and provided respective arguments in support of its request. The Respondent has not provided any comments regarding the language of the Proceedings. 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 in both English and Ukrainian, and the proceedings commenced on November 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2020. The Center appointed Taras Kyslyy as the sole panelist in this matter on December 2, 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 Background The Complainant operates the website available at “www.myfreecams.com” which has been in use since 2002 in connection with the provision of streaming audio, visual and audiovisual material and other entertainment services via the Internet. The website is being ranked by Alexa Internet within the top 500 most popular websites in the United States and the 1,258th most popular website on the Internet. The Complainant is the owner of the United States trademark registration No. 3,495,750 for the word mark MYFREECAMS.COM, registered on September 2, 2008. The disputed domain name The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain is identical to the Complainant’s trademark, including a hyphen and de-pluralizing the word “cams”.” It is well established that including a hyphen between words does not make a sufficient difference between the domain name and a complainant’s trademark. It is also well established that removal of a plural from a word does not make a sufficient difference between the domain name and a complainant’s trademark. The Complainant claims that the addition of a hyphen and the removal of the “s” in the Complainant’s trademark does nothing to mitigate the likelihood of confusion created by the disputed domain name and the Complainant’s trademark, but instead increases the confusion between the two. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name and as “MYFREECAMS”. The disputed domain name is clearly being used for a commercial purpose. The disputed domain name directs to an adult webcam site that directly competes with the services offered by the Complainant. The disputed domain name contains the entirety of the Complainant’s trademark, thus the Respondent is incapable of using the disputed domain name for a legitimate purpose. The Respondent did not reply to the cease and desist letter sent by the Complainant on September 28, 2020. The Respondent registered and used the disputed domain name because it is identical or confusingly similar to the The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name because it knew of the Complainant and the goodwill associated with its trademark and hoped to profit from it – now or in the future. The Respondent’s registration and use of the disputed domain name was clearly designed to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of the Respondent’s infringing activities. The Respondent’s diversionary use of the Complainant’s trademark to direct Internet users to its own website that offers overlapping services, presumably for commercial gain, also amounts to bad faith registration and use of the disputed domain name. The Respondent’s failure to respond to the demand letter is further evidence of bad faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreement for the disputed domain name is Ukrainian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) previous panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the Registration Agreement is published in English, Ukrainian, and Russian, (ii) the Respondent’s website published at the disputed domain name is in English, and (iii) the disputed domain name is composed of English words. Furthermore, the Complainant believes that requiring the proceedings be conducted in Ukrainian would result in significant delay, burden, and expense to the Complainant. The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Ukrainian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Ukrainian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Ukrainian. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case the Complainant's trademark is recognizable in the disputed domain name and the addition of hyphen and removal of "s" letter in the disputed domain name compared to the Complainant's trademark does not preclude finding the confusing similarity. Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). The disputed domain name used to redirect Internet users to a website designed similarly to the Complainant’s website to make the Internet users believe that they actually access the Complainant’s website or the website authorized by the Complainant. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr., a/k/a Dan Marino v. Edgar Carrillo / Greg Rice, Video Images Productions, WIPO Case No. D2000-0598, Houghton Mifflin Company v. The Weatherman, Inc.,WIPO Case No. D2001-0211). The Respondent’s use of the confusingly similar disputed domain name on a website offering overlapping services is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy. (see, e.g., Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052). Furthermore, the Respondent has no right or legitimate interests in the disputed domain name resolving to a currently inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to section 3.1 of the WIPO Overview 3.0 , bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. In this regard, the Panel finds that at least the fourth of the above scenarios apply to the present case confirming the Respondent's bad faith. Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use at the time the complaint was filed and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. The Respondent’s use of the disputed domain name to direct Internet users to an adult webcam site that directly competes with the services offered by the Complainant is evidence of bad faith as described under paragraph 4(b)(iv) of the Policy. Furthermore, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman),WIPO Case No. DPW2017-0003). Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022). Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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 Taras Kyslyy
Sole Panelist
Date: December 5, 2020
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