The Complainant is Shelter Media s.p.a., Italy, represented by Nicola Littarru, Italy.
The Respondent is qing tong su, su qing tong, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2021, 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 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, and the proceedings commenced on July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2021. The Center appointed Adam Taylor as the sole panelist in this matter on August 20, 2021. 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 a YouTube video games and entertainment channel called “Stef&Phere”, which includes videos featuring characters called “Stef” and “Pherenike”. The channel is aimed at a young audience and has attracted some 1.3 million followers. The Complainant owns Italian registered trade mark no. 302018000034989 comprising a logo plus the stylised words STEF & PHERE, registered on May 23, 2019, in classes 9, 14, 16, 21, 25, 28 and 41. The Complainant formerly owned the disputed domain name, which is still marked on gadgets supplied by the Complainant to children. The Respondent registered the disputed domain name on November 8, 2020, after the Complainant inadvertently failed to renew it. The Respondent has used the disputed domain name for a website with pornographic content. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The disputed domain name is confusingly similar to the Complainant’s STEF & PHERE trade mark, which it incorporates in its entirety. The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent had not been commonly known by the names comprised in the disputed domain name or the Complainant’s trade mark. The Complainant has never authorised the Respondent to use its marks. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair manner. The disputed domain name was registered and is being used in bad faith. Even if the Respondent had been legitimately promoting adult content, there was no legitimate reason to select a domain name comprising the Complainant’s trade mark for this purpose. The fact that the Respondent opportunistically registered the disputed domain name after the Complainant inadvertently allowed it to expire is additional evidence of bad faith. The Respondent intended to take advantage of the Complainant’s trade mark to exploit Internet users seeking the Complainant for financial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; The Complainant has established rights in the mark STEF & PHERE by virtue of its registered trade mark as well as its unregistered trade mark rights deriving from its extensive use of that name for its YouTube channel. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing. Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name. The only differences are that “&” has been replaced with the letter “e”, the Italian word for “and”, and the suffix “nike” has been added to extend the abbreviation “Phere” to the full version of that name: “Pherenike”. For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests As explained in section 2.1 of of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name. As to paragraph 4(c)(i) of the Policy, the Respondent has used the disputed domain name for a pornography site with no obvious connection to the words in the disputed domain name but with the obvious potential to damage the reputation of the Complainant’s trade mark, particularly given that the Complainant formerly owned the disputed domain name and that the Complainant’s service is aimed at a young audience. Such use of the disputed domain name could not be described as bona fide. Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel has little difficulty concluding that the disputed domain name has been registered and is being used in bad faith. It is obvious that the Respondent was aware of the Complainant when it registered the disputed domain name, which reflects the Complainant’s highly distinctive name and trade mark. The disputed domain name is inextricably linked with the Complainant and its trade mark, and makes little sense when considered independently of the Complainant, without any obvious reason for its use for a pornographic website. The Respondent must have known that such use of the disputed domain name was likely to damage the Complainant’s reputation. Furthermore, the Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any legitimate reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation. The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 Adam Taylor
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: September 3, 2021
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