WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MG Licensing Europe S.A.R.L. v. Dmitri Novak

Case No. DCC2018-0008

1. The Parties

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”).

Respondent is Dmitri Novak of the Russian Federation¹ .

2. The Domain Name and Registrar

The disputed domain name <mydirtyhobbyfree.cc> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2018. On June 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2018, the Registrar 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 July 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 24, 2018.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on July 31, 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

Complainant is a company organized under the laws of Luxembourg that is associated with the Internet pornography entity MindGeek.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “My Dirty Hobby”, including the following with protection for the European Union:

- Word mark MY DIRTY HOBBY, European Intellectual Property Office (EUIPO), Registration No.: 005686787, Registration Date: December 3, 2007, Notification of Change of Name of Complainant as Trademark Owner on April 8, 2014, Status: Active.

Complainant, moreover, owns the domain name <mydirtyhobby.com> which redirects to Complainant’s official website at “www.mydirtyhobby.com” where it features several services, either free of charge or at fee, including chats and cam services relating to adult content on the Internet.

Respondent registered the disputed domain name on June 5, 2014. The disputed domain name previously resolved to a website displaying pornographic content, copying elements of Complainant’s website, including Complainant’s logo displayed in the top left corner of the screen. As of the time of the rendering of this decision, the disputed domain name does not resolve to any content on the Internet.

Complainant’s authorized representative sent a cease-and-desist letter to Respondent at the email address provided for in the WhoIs information for the disputed domain name on March 22, 2018. On the same day, Respondent replied asking if the redirection of all traffic to another domain name would be sufficient to solve the matter and later removed the website content earlier hosted under the disputed domain name. The Parties subsequently exchanged various emails, e.g., on March 23, 2018, March 29, 2018, April 6, 2018, April 12, 2018 as well as May 23, 2018 on a possible transfer of the disputed domain name from Respondent to Complainant which so far has not taken place.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that its My Dirty Hobby brand was initially launched in 2006 with meanwhile over 5 million registered members as of January 2017. Complainant states that its My Dirty Hobby brand has become well known in the adult entertainment industry enlisting customers from a wide geographical reach and offering services in the English, German, French and Italian languages. Moreover, Complainant claims to be very active also on social media websites and to enjoy first hits on popular search engines such as Google when entering the designation “My Dirty Hobby”.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s MY DIRTY HOBBY trademark as it incorporates the latter in its entirety with the mere addition of the descriptive term “free”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent apparently neither has registered any trademarks for the terms “my dirty hobby” or “my dirty hobby free” nor is Respondent known or has it ever been known thereunder and Respondent has never been authorized by Complainant to register and use the disputed domain name, (2) before notice to Respondent of this dispute, the disputed domain name resolved to an active website displaying pornographic videos for users to watch freely while using Complainant’s MY DIRTY HOBBY distinctive logo in the left top corner of said website and copying structural parts from Complainant’s own website. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Complainant has prior trademark rights relating to the designation “my dirty hobby” which accrued over seven years before the registration of the disputed domain name took place (2) Respondent, by using Complainant’s exact logo and similar website layout, is misleading the general public who are seeking Complainant’s services but mistakenly believe that Respondent’s website is an official website of Complainant or at least associated therewith, (3) the fact that Respondent is now passively holding the disputed domain name is not in contrast to the finding of bad faith since Respondent still failed to provide any evidence of actual or contemplated good faith use of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <mydirtyhobbyfree.cc> is confusingly similar to the MY DIRTY HOBBY trademark in which Complainant has rights.

The disputed domain name incorporates the MY DIRTY HOBBY trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether descriptive, geographical, or otherwise) to a trademark in a domain name would not avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “free” does not dispel the confusing similarity arising from the incorporation of Complainant’s MY DIRTY HOBBY trademark in the disputed domain name.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent obviously has not been authorized to use Complainant’s MY DIRTY HOBBY trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the designation “My Dirty Hobby”. To the contrary, Complainant has evidenced that at some point before the filing of this complaint the disputed domain name resolved to a website offering the same kind of adult content services as does Complainant’s core business thereby using a somewhat similar website structure and even Complainant’s official My Dirty Hobby logo in the left upper corner of said website. Against this background, the Panel finds that Respondent apparently had full knowledge of Complainant’s trademark when registering the disputed domain name and at least at some point before the filing of this Complaint was using the disputed domain name in a manner seeking to profit from Complainant’s My Dirty Hobby brand’s reputation which neither qualifies as bona fide use within the meaning of paragraph 4(c)(i) of the Policy nor as fair use within the meaning of paragraph 4(c)(iii) of the Policy.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

As a general rule, UDRP panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine includes, e.g.: the degree of distinctiveness or reputation of complainant’s mark, the failure of respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.

Complainant has evidenced that at some point before the filing of this Complaint, Respondent used the disputed domain name to resolve to a website offering the same kind of adult content services as does Complainant’s core business thereby using a somewhat similar website structure and even Complainant’s official My Dirty Hobby logo in the left upper corner of said website. These facts alone demonstrate that Respondent apparently was fully aware of Complainant’s My Dirty Hobby brand when registering the disputed domain name and that Respondent was seeking to use the disputed domain name in a manner by which it would profit from the reputation that Complainant’s MY DIRTY HOBBY trademark enjoys. The Panel has noted that according to Complainant’s own contentions Respondent displayed these pornographic videos for users to watch freely and, moreover, that there is no indication in the case file that Respondent had set up this earlier website for a concrete commercial gain. Still, Respondent failed to submit any explanation as to why it still needed to rely on the inclusion of Complainant’s MY DIRTY HOBBY trademark in the disputed domain name and Complainant’s My Dirty Hobby official logo in said website, so that the Panel finds it more likely than not that Respondent clearly aimed at targeting Complainant’s My Dirty Hobby brand when registering and making use of the disputed domain name. Against this background, even though in the case at hand none of the non-exclusive scenarios set forth under paragraph 4(b) of the Policy is strictly fulfilled, it is yet obvious that Respondent took unfair advantage and clearly abused Complainant’s MY DIRTY HOBBY trademark which is generally understood by UDRP panelists to fulfil the requirements of bad faith registration and making use of a domain name under the Policy (see WIPO Overview 3.0, section 3.1).

Accordingly, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <mydirtyhobbyfree.cc> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: August 9, 2018

¹ The Panel notes that the WhoIs information lists Respondent as being located in “Zagreb, Russian Federation”, with a postcode corresponding to Panjin, China. In the circumstances, the Panel finds that the WhoIs-listed contact information is most likely false.