The Complainant is MG Licensing Europe S.A.R.L.of Luxembourg, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot12, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2018. On October 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2018, 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 October 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2018.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 6, 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
The Complainant is a company incorporated under the laws of Luxembourg and is part of the MindGeek group, an entity that has been operating a pornographic platform providing different content both generated by the platform and by users as of 2006 under the domain name . As of January 2017, the Complainant had over 5 million registered members.
The Complainant owns several trademarks that have been registered on a worldwide basis, including:
- European Union TradeMark MY DIRTY HOBBY (005686787) registered on December 3, 2007 under numerous classes of products and services;
- Swiss Trademark MY DIRTY HOBBY (646301) registered on August 6, 2012 under numerous classes of products and services;
On August 23, 2018, The Respondent registered the disputed domain name . At the time of filing of the Complaint, the disputed domain name resolved to a parking page displaying pay-per-click (“PPC”) links to competitors of the Complainant and offering the disputed domain name for sale. 5. Parties’ Contentions A. Complainant
The Complainant first contends that the disputed domain name is identical or confusingly similar to its MY DIRTY HOBBY trademark as it entirely incorporates these terms in the disputed domain name, together with the term “free”, a descriptive term that does prevent the resulting likelihood of confusion.
The Complainant then affirms that the Respondent has no rights nor any legitimate interests with regards to the disputed domain name. The Respondent does not own any trademark under the terms “My Dirty Hobby” and uses a website attached to the disputed domain name that displays PPC links to the Complainant’s competitors, a use that cannot be considered as a bona fide use of the disputed domain name. Furthermore, the Respondent is not known under the terms “My Dirty Hobby”.
The Complainant finally considers that the disputed domain name was registered and is being used in bad faith. Considering the widespread use of the Complainant’s MY DIRTY HOBBY trademark over the years, the Complainant is of the opinion that the Respondent had knowledge of its trademark when it registered the disputed domain name . The disputed domain name is further being used in bad faith as the Respondent is trying to sell it on “” for a minimum amount of USD 500, which is far above the costs of registration, and currently purposefully displays it on a PPC website to which the disputed domain name resolves. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(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 Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds several trademarks in jurisdictions throughout the world consisting of MY DIRTY HOBBY.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises,WIPO Case No. D2007-1629). Such happens to be the case here.
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case here. The applicable generic Top-Level Domain (“gTLD”) suffix, in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of a merely descriptive term such as “free” does not avoid confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd,WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant is the owner of several MY DIRTY HOBBY trademarks that have been intensively used since 2006 over the Internet. The Complainant has no business or other relationship with the Respondent. Furthermore, UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users (section 2.9, WIPO Overview 3.0). Such happens to be the case here. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Absent any Response, and in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s MY DIRTY HOBBY trademarks have been intensively used over the years. The Respondent has further decided to attach the disputed domain name to a PPC website displaying links to the Complainant’s competitors. Particularly with respect to “automatically” generated PPC links, UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (section 3.5, WIPO Overview 3.0).
As a result, it sounds obvious in the Panel’s view that the Respondent was well aware of the Complainant’s MY DIRTY HOBBY trademarks when it registered the disputed domain name, and that the above mentioned use amounts to a usage in bad faith within the meaning of the Policy.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the 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 be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Date: November 12, 2018
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