Complainant is Licensing IP International S.A.R.L., Luxembourg, represented by ROBIC, LLP, Canada.
Respondent is Enigma Blockchain, Enigma Blockchain Ltd, Anguilla. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registry a request for registry verification in connection with the Domain Name. On March 6, 2020, the Registry transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2020. The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 16, 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 Complainant is a corporation located in Luxembourg that operates in the online adult entertainment market, where Internet traffic, including channeling and control, is important. Complainant, its subsidiary companies and other corporate affiliates are often referred to as MindGeek. Complainant focuses on web design, IT, web development and search engine optimization in the adult entertainment market. Complainant states it has contributed to the advent of adult video social portals that aggregate content from a variety of sources, where users can watch, like, share, comment and upload their own videos. Given that several websites operating under Complainant’s brands are free of charge, this generates a volume of web traffic to these sites, as well as to Complainant’s advertisers and subscription-based websites. On a daily basis, Complainant’s has more than 115 million visits throughout its network of websites, delivers over 3 billion ad impressions through them, and manages 15 additional terabytes of uploaded video content, with a workforce of more than 1,000 full-time employees in 6 offices worldwide. Complainant has submitted evidence to demonstrate ownership of trademark registrations in numerous countries for its YOUPORN mark, dating from as early as 2007. The description of services for which its marks are registered mainly covers services in international classes 38, 41 and 42, in particular: - Class 38: Video-on-demand transmission services; video broadcasting; electronic, electric, and digital transmission of voice, data, and images, all in the field of adult entertainment. - Class 41: Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio recordings and text in the field of adult entertainment via a global computer network. - Class 42: Providing a website allowing users to download videos in the field of adult entertainment. Complainant purchased the domain name The Domain Name was registered on December 16, 2017. It redirects users to a website at “www.enigmablockchain.com”, a site for a company stated to be Enigma Blockchain, located in Anguilla. The website states that Enigma Blockchain specializes in consultancy and management of initial coin offerings (ICO’s) for cryptocurrency. The site also states that the company “offer .ai domains” and includes a long listing of domain names, including the Domain Name and other domain names comprised of well-known trademarks, such as Amazon, Disneyland and Disney World, GE Capital, Google, Instagram, Mark Cuban, Microsoft, Walt Disney and World Bank. 5. Parties’ Contentions A. Complainant (i) Identical or Confusingly Similar Complainant bases its Complaint on its registered YOUPORN trademarks, as well as on unregistered common law rights in the word mark YOUPORN, which are used in combination with Complainant’s network of other brands, including PORNMD, PORNHUB, REDTUBE, SEXTUBE and TUBE8. Complainant owns more than 400 trademark registrations covering several dozen brands related to its business in many countries and regions around the world, mainly in North America, Europe, Asia, and Australia. According to Complainant, using a side-by-side comparison of the Domain Name and the textual components of the YOUPORN trademark to assess whether the mark is recognizable within the Domain Name illustrates the similarity: YOUPORN v. Complainant states that in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP. In the present case, the Domain Name is confusingly similar to Complainant’s YOUPORN marks, given that all but the Top-Level Domain (“TLD”) are word elements in the Domain Name that are identical to the textual components of Complainant’s marks. The confusing similarity is even greater given the extent to which Complainant’s marks have become well known. (ii) Rights or Legitimate Interests Complainant contends that Respondent cannot show rights to and legitimate interests in the Domain Name. In particular, Respondent cannot show rights or legitimate interests on the basis of use of, or demonstrable preparations to use, the Domain Name (or a name corresponding to the Domain Name) in connection with a bona fide offering of goods or services before any notice of the dispute. There is evidence to demonstrate that the Domain Name is among over 350 domain names held by Respondent in the “.ai” ccTLD, many of which consist of well-known trademarks of others, as shown from (i) a list of domain names “of interest” in the “.ai” ccTLD, including the Domain Name, as displayed on the webpage located in the “.ai Domains” section of Respondent’s website at “www.enigmablockchain.com”; (ii) a reverse WhoIs search report showing domain names for which Respondent’s email address “[ ]@enigmablockchain.com” is found in the WhoIs record, such report being supplemented with references to well-known trademarks comprised in many of those domain names, along with their respective registration number, country of registration and registered owner; and (iii) WhoIs records for a subset of “.ai” ccTLD domain names held by Respondent. Complainant further contends that Respondent cannot either show rights and legitimate interests in the Domain Name on the basis that it has been commonly known by the Domain Name, given that the sole named Respondent appears to have been commonly known by Enigma Blockchain. Complainant found no incorporated entity under this name (even though it is listed in the WhoIs record for the Domain Name) in the worldwide company directory at “www.info-clipper.com”, which covers Anguilla.Furthermore, Complainant never requested, allowed or authorized Respondent to register or hold the Domain Name, or to use any of Complainant’s marks, tradenames, domain names or any other identification element or imitation of Complainant. Lastly, Complainant asserts that Respondent cannot show rights or legitimate interests in the Domain Name on the basis that Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s marks. Respondent describes itself as being involved in activities relating to cryptocurrencies and initial coin offerings, which are inherently commercial in nature. Therefore, Respondent cannot claim that it is making a legitimate noncommercial use of the Domain Name. Further, Respondent’s use of the Domain Name should not be considered “fair” as it falsely suggests affiliation with Complainant. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. In the present case, there is a high risk and accordingly, Respondent cannot claim that it is making a legitimate fair use of the Domain Name, given that any such use inherently and falsely suggests affiliation with Complainant as owner of Complainant’s YOUPORN marks. (iii) Registered and Used in Bad Faith Complainant states that UDRP panels have been prepared in appropriate cases to draw inferences concerning a respondent’s bad faith intent from the relevant facts and circumstances. In the present case, circumstances of bad faith as described in UDRP paragraph 4(b) are supported by arguments and available evidence, but the panel may choose to draw certain inferences if or where needed in light of the particular facts and circumstances of the case. Complainant contends that circumstances of bad faith include: - Bad faith can be inferred from Respondent’s intent in registering the Domain Name to profit in some fashion from or otherwise exploit Complainant’s marks. Circumstances supporting this inference include (i) Respondent’s likely knowledge of Complainant’s rights, (ii) the distinctiveness of Complainant’s YOUPORN marks, (iii) a pattern of abusive registrations by Respondent, or (iv) Respondent’s request for goods or services in exchange of the Domain Name. - Complainant sent a cease and desist letter to Respondent’s email address on July 30, 2019. A representative of Respondent replied on the same day, indicating that “The price for this domain name is $10,000 USD. That’s the best offer for this .ai domain”. Respondent subsequently sent a second email on the next day stating the following: “We’ve changed our mind. Let’s make this easy for all parties involved.15k USD is the new price.” Both replies were left unanswered by Complainant. Complainant contends it is obvious from this exchange that these offers from Respondent were attempts to capitalize on Complainant’s rights and must lead to a finding of bad faith under paragraph 4(b)(i) of the Policy. - Complainant states that the “.ai Domains” section of Respondent’s website contains a single page entitled “domain of interest”, which lists various “.ai” ccTLD domain names, including the Domain Name. This webpage is set up in such a way that when a visitor activates the hyperlink associated with a domain name in the list, it triggers the opening of a window allowing the visitor to write and send an email message about that specific domain name directly to Respondent’s email address at “[ ]@enigmablockchain.com”. According to Complainant, this constitutes a clear invitation to anyone (including other cybersquatters, trademark owners and legitimate domainers) to make offers to acquire the rights in any of the domain names, including the Domain Name and other “.ai” ccTLD domain names comprised of well-known trademarks of third parties. - Respondent is preventing Complainant from reflecting its YOUPORN trademark in the “.ai” ccTLD, and has engaged in a pattern of such conduct, as shown by the reverse WhoIs search report showing third-party trademarks targeted by Respondent as part of its “.ai” ccTLD domain name portfolio. - Deference should be given to previous UDRP decisions dealing with similar matters or issues. Bearing that in mind, it is worth pointing out that Complainant’s marks have been targeted by other cybersquatters who became party to more than 10 prior UDRP proceedings, resulting in the transfer of the domain names at issue. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its YOUPORN mark, based on ownership of the trademark’s registrations and use of the mark in commerce. Further, the Panel determines that the Domain Name is identical or confusingly similar to the YOUPORN marks. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that the test of confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name (…)”. Here, the Panel determines that Domain Name is identical to Complainant’s YOUPORN mark, with the exception of the “.ai” ccTLD. Accordingly, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its YOUPORN trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name has been used to redirect to a website at “www.enigmablockchain,com”, where the Domain Name – along with numerous other domain names (including domain names comprised of well-known marks) – are listed as available. When Complainant sent a message to Respondent regarding the Domain Name, Respondent replied that it would sell the Domain Name to Complainant for USD 10,000, but then increased its demand to USD 15,000. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. These matters, bearing in mind the registration of Complainant’s trademark long before the Domain Name was registered, are sufficient to raise a prima facie case that Respondent does not have rights or a legitimate interest in the Domain Name. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Complainant’s YOUPORN trademark has been active for many years and Complainant’s earliest trademark registration predates the Domain Name’s registration by approximately 10 years. The Panel observes that Respondent has registered more than 300 domain names, including domains comprised of well-known trademarks. Based on the evidence, and the identity of the Domain Name with Complainant’s YOUPORN mark, the Panel finds, on the balance of the probabilities, that Respondent was likely aware of Complainant and its YOUPORN mark and Moreover, pursuant to section 3.1.2 of WIPO Overview 3.0, UDRP panels have held that a “pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners”. Here, as noted above, Respondent has registered multiple domain names comprised of well-known marks. Further, Respondent's bad faith can be inferred from its reply to Complainant’s cease and desist letter prior to commencing this proceeding, where Respondent requested payment of USD 15,000 for the sale of the Domain Name. In conclusion, in this case where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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 Domain Name, Christopher S. Gibson
Sole Panelist
Date: May 18, 2020
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