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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Multi Media, LLC v. Registration Private, Domains By Proxy, LLC / Apetre Andrei

Case No. D2018-1862

1. The Parties

The Complainant is Multi Media, LLC of Longwood, Florida, United States of America (“United States”), represented by Walters Law Group, United States.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Apetre Andrei of Suceava, Romania.

2. The Domain Name and Registrar

The disputed domain name <freetokenschaturbate.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2018. On August 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2018, 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 August 29, 2018 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 amended Complaint on August 29, 2018.

The Center verified that the Complaint together with the amended 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 August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. On September 3, 2018, the Center received an email communication from the Respondent. On September 17, 2018, the Center received an email communication from the Respondent, in response to which the Center sent an email inviting the Parties to explore settlement negotiations. No response to the Center’s email was received.

The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on October 12, 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, Multi Media, LLC, is the owner of the website “www.chaturbate.com” that provides streaming audio, visual and audiovisual entertainment services and the owner of the CHATURBATE (word mark), United States Trademark No. 4288943, which was registered on February 12, 2013 and the CHATURBATE (logo), United States Trademark No. 4988208, which was registered on June 28, 2016. Further, the Complainant registered the domain name <chaturbate.com> on February 26, 2011 to conduct its business.

The Respondent, Apetre Andrei, registered the disputed domain name on January 1, 2018. The disputed domain name resolved to a website generating free CHATURBATE tokens that could be used on the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s CHATURBATE trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of the trademark CHATURBATE (word mark) which was registered on February 12, 2013 and the trademark CHATURBATE (logo) which was registered on June 28, 2016, earlier than the registration date of the disputed domain name. The Complainant has successfully established its right upon the trademark.

The disputed domain name <freetokenschaturbate.com> incorporates the Complainant’s trademark CHATURBATE in its entirety. UDRP jurisprudence has established that incorporation of a complainant’s trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. The addition of the words “free” and “tokens” does not prevent a finding of confusing similarity between the Complainant’s mark and the disputed domain name. See BHP Billiton Innovation Pty Ltd v.Oloyi, WIPO Case No. D2017-0284.

As such, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

The Panel also notes that, upon receiving the notice of the present proceedings, the Respondent did not submit any substantial arguments, but rather sent an email to the registrar of the disputed domain name and requested to delete the disputed domain name on September 17, 2018. This suggests that the Respondent has no rights or legitimate interests in the disputed domain name. See Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered on January 1, 2018, five years after the registration date of the Complainant’s trademark. Further, the disputed domain name resolved to a website offering overlapping service with the presence of the Complainant’s trademark CHATURBATE. Given the reputation of the Complainant and the resolved website content, the Panel holds that the Respondent must have been aware of the Complainant’s trademark and/or services at the time of registering the disputed domain name. Without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith.

The Panel further observes that the addition of the descriptive “free” and the dictionary term “tokens” to the Complainant’s trademark creates a likelihood of confusion between the disputed domain name and the Complainant’s offering of goods or services. By registering the disputed domain name, the Respondent has intentionally attempted to trade on goodwill associated with the Complainant’s trademark, to attract traffic to the website under the disputed domain name and profit therefrom. Hence, the bad faith evident in the use of the disputed domain name can be established under 4(b)(iv) of the Policy. The Panel further finds that the Respondent is disrupting the business of the Complainant.

For the reasons above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <freetokenschaturbate.com> be transferred to the Complainant.

Jacob (Changjie) Chen
Sole Panelist
Date: October 26, 2018

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