The Complainant is Licensing IP International S.à r.l of Luxembourg City, Luxembourg, represented by Mitchell, Silberberg & Knupp, LLP, United States of America ("United States").
The Respondent is WhoIs Privacy Protection Service, Inc. of Kirkland, Washington, United States / Holly Petersen, mp3 of United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2014. On September 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 9, 2014, 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 September 12, 2014 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 amendment to the Complaint on September 13, 2014.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") approved by doMEn on October 1, 2012, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2014.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 13, 2014. 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 facts relevant to the findings and decision in this case are that:
- the Complainant has since 2004 provided online adult entertainment services by reference to the registered trade mark, BRAZZERS;
- the trade mark is the subject of USPTO Trademark Registration Nos. 3,621,514 and 3,621,570, both registered May 19, 2009;
- the disputed domain name was registered on March 30, 2014;
- at the time the Complaint was filed, the disputed domain name resolved to a website which offered adult videos including material first produced by the Complainant; and
- there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark, nor has it licensed the use of its copyright protected material to the Respondent. 5. Parties' Contentions A. Complainant
The Complainant asserts trade mark rights in BRAZZERS and alleges that the disputed domain name is either identical or confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark 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.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold inquiry – namely, whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy. The Complainant provides evidence of registration of the trade mark with the USPTO and other intellectual property offices. The Panel notes that none of the listed registrations stands in the name of the Complainant. Nonetheless, on an assessment of the evidence as a whole and absent any contest by the Respondent as to proper proprietorship of the trade mark, the Panel accepts for the purposes of UDRP proceedings that the Complainant is either beneficially entitled to the trade mark or is an exclusive licensee of the trade mark rights, and therefore has rights in the trademark.
Panelists agree that generic Top-Level Domains, such as ".me", are of no source distinguishing value and can be disregarded when it comes to comparison of the domain name with the trade mark. The Panel finds that the disputed domain name is legally identical to the Complainant's trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The record does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. There is no indication of the use of the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a website where adult entertainment material, including material produced by the Complainant and in which the Complainant claims copyright protection, is offered in conjunction with so-called "pop-up" advertising. That use is not bona fide nor is it legitimate noncommercial use.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
It is plain to the Panel that the Respondent's conduct falls squarely under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain name to be identical to the Complainant's trade mark. The Panel finds that the likelihood of confusion as to the source is therefore inevitable. Paragraph 4(b)(iv) also requires an intention for commercial gain on the part of the Respondent. The resolving website incorporates pop-up advertisements which, inter alia, promote services competitive to the Complainant's business. The Panel accepts the Complainant's submission that the Respondent likely benefits financially from those advertisements.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith and, accordingly, the Complainant has satisfied 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.
Debrett G. Lyons
Sole Panelist
Date: October 27, 2014
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