Complainant is Bright Imperial Ltd. of Hong Kong, SAR of, China, represented by Sheppard, Mullin, Richter & Hampton of United States of America.
Respondent is Senja Dumpin of Tallinn, Estonia, represented by Jura Sidorenko of Estonia.
The disputed domain name <hqredtube.com> (“the domain name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2009. On December 2, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 4, 2009, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2009. The Center received an e-mail communication from Respondent on December 28, 2009.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on January 8, 2010. 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.
The domain name was created on April 30, 2009.
Complainant is a distributor of adult video movies and operates a website at domain name <redtube.com> offering downloads of adult movies. Complainant is the successor in title to Jager and Polacek GmbH of Austria, by assignment.
Complainant now owns registrations and applications for registration of the trademark REDTUBE in several countries including Australian trademark No. 1228767 dating from March 10, 2008 and International Registration No. 1003812 dating from October 31, 2008. Complainant claims to have used the trademark REDTUBE in interstate and international commerce since 2006. Complainant contends that prior to the registration of the domain name its REDTUBE trademark and the services which it offers were well and widely known in many countries including Respondent's country of domicile, Estonia. Complainant cites references to and articles about, its website in prominent international publications, including Financial Times and Esquire, throughout 2008.
Complainant provides audit statistics from rating agency Alexa.com showing that in Estonia as of September 21, 2009, Complainant's website was the most popular adult website and the 64th most popular site overall. Complainant exhibits downloads from Respondent's website showing advertisements for adult videos in competition with Complainant and which, Complainant alleges, copies the look and feel of Complainant's website.
Complainant exhibits correspondence showing that in May 27, 2009 Complainant's predecessor contacted Respondent by e-mail demanding transfer of the domain name and deactivation of the website at the domain. Respondent replied that he would take down the site and sought USD 10,000 for the site software and the domain name.
Complainant replied that it was not interested in the software but sought transfer of the domain name in return for reasonable out of pocket expenses. Respondent replied that he would transfer the domain name for USD 2100. Respondent did not take down the website and did not answer Complainant's request for justification of the USD 2,100 price requested for transfer of the domain name. Complainant shows that the current price charged by registrar GoDaddy.com for registration of a name in the “.com” domain USD 10.69.
Complainant contends that:
1. (i) it has well established and widely known rights in the trademark REDTUBE by virtue not only of its several registrations but also its widespread use in respect of its website which ranks among the top 100 most visited sites worldwide, and in Estonia in particular.
(ii) the domain name differs from its inherently distinctive REDTUBE trademark only by the addition of the letters “hq”, which, Complainant says, on the evidence of Respondent's website, stands for “high quality”. Complainant contends that the domain name is strikingly similar to its trademark and therefore confusingly similar to it. Complainant cites Toyota Motor Sales, U.S.A., Inc. v. TPI, WIPO Case No. D2003-0418.
2. Respondent has no rights or legitimate interests in the domain name. He is not commonly known by the domain name, and is not making a legitimate noncommercial use of it. Respondent's use of the domain name to promote for gain, the goods and services of Complainant's competitors is not a bona fide offering of those goods or services. Complainant cites Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001 (“Nokia”).
3. (i) Respondent's registration and use of the domain name is in bad faith. Complainant contends that at the time of registration of the domain name, its REDTUBE trademark was well-known throughout the world to makers and viewers of adult videos and cites the “Alexa” ratings in support. Respondent knew or ought to have known of the reputation of Complainant's trademark, his registration of the domain name “for use with identical services, was plainly calculated to misappropriate and trade off the goodwill developed by Complainant in the REDTUBE mark”.
(ii) Respondent's bad faith is further evidenced by his demand for a sum many times the cost of registration as consideration for the transfer of the domain name.
Respondent did not file a formal Response, but on December 28, 2009 sent an e-mail communication to the Center reading as follows:
“I'm Jura Sidorenko, translating the text for Senja Dumpin (he doesn't speak English).
Here are few points of Senja:
1. He didn't make any money on the Hqredtube domain.
2. Redtube domain owners didn't loose any money because of hqredtube domain.
3. IMPORTANT hqredtube domain was registered, but doesn't exist as a webpage. For some time it was pointing to totally different domain name. Now it is not pointing anywhere. There was no case of any infringement.
4. Finally Senja does not understand is it really “against the law” to buy some domain name (in this case hqredtube.com)? As a student he knows that anybody is allowed to buy any domain name.
Complainant has demonstrated that it has rights in the trademark REDTUBE both by registration in several countries and at common law. The domain name incorporates the whole of that trademark and differs from it only by the addition of the letters “hq”. Whatever these letters may stand for in the context, they do not significantly diminish the primary impression of the words “red tube”.
The Panel finds that the domain name is confusingly similar to Complainant's REDTUBE trademark.
Complainant has made a strong prima facie showing that Respondent has no rights or legitimate interests in the domain name. Respondent has made no attempt to rebut that showing. Specifically he has not contested Complainant's contention that Respondent's use of the domain name to point to a website offering programs in competition to Complainant cannot constitute a bona fide offering of goods or services under the trademark. Complainant's contention is well supported by previous UDRP panel decisions including Nokia, supra.
The Panel finds that Respondent has no rights or legitimate interests in the domain name.
At the time of registration of the domain name, Complainant and its predecessor in title had established a substantial reputation in the trademark REDTUBE. That trademark is not descriptive and is inherently capable of distinguishing Complainant's goods and services. Its reputation was established in the specialized field of adult videos in many countries including Respondent's own country of Estonia. It is therefore reasonable to conclude, and Respondent has not sought to deny, that at the time Respondent registered the domain name he was well aware of Complainant's trademark and of the reputation which it had established.
Having registered the domain name, Respondent then proceeded to use it to point to a website offering goods and services in competition with Complainant. The inescapable conclusion is that he did so in order to tap into Complainant's market by creating confusion with Complainant's trademark and its website at “www.redtube.com”. Such use was, and continues to be, in bad faith. The Panel also accepts Complainant's contention that Respondent's failure to take down the website and his demand for a substantial sum for the transfer of the domain name provides further evidence of Respondent's bad faith.
The Panel therefore finds that the domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hqredtube.com> be transferred to Complainant.
Desmond J. Ryan AM
Dated: January 19, 2010