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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ugly, Inc. v. Bella Night / Sivachuck Stanislav

Case No. DCC2021-0001

1. The Parties

The Complainant is Ugly, Inc., United States of America (“United States”), represented by Pryor Cashman, LLP, United States.

The Respondents are Bella Night, Russian Federation / Sivachuck Stanislav, Russian Federation.

2. The Domain Names and Registrars

The disputed domain name <coyoteugly.cc> is registered with Danesco Trading Ltd (the “Registrar 1”).

The disputed domain name <fuckingcoyote.cc> is registered with NameCheap, Inc (the “Registrar 2”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021 in connection with the disputed domain name <coyoteugly.cc>. On April 6, 2021, the Center transmitted by email to the Registrar 1 a request for registrar verification in connection with the disputed domain name <coyoteugly.cc>. On April 8, 2021, the Registrar 1 transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <coyoteugly.cc> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 19, 2021 providing the registrant and contact information disclosed by the Registrar 1, and inviting the Complainant to submit an amendment to the Complaint. The Respondent Bella Night sent an informal email on April 19, 2021. The Complainant filed a first amended Complaint adding the disputed domain name <fuckingcoyote.cc> to the Complaint on April 23, 2021. On April 30, 2021, the Center transmitted by email to the Registrar 2 a request for registrar verification in connection with the disputed domain name <fuckingcoyote.cc>. On April 30, 2021, the Registrar 2 transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <fuckingcoyote.cc> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 11, 2021 providing the registrant and contact information disclosed by the Registrar 2, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 11, 2021. The Center sent an email communication to the Complainant on May 12, 2021 providing the registrant and contact information disclosed by the Registrars 1 and 2, and requesting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. The Complainant filed a second amended Complaint on May 14, 2021.

The Center verified that the Complaint together with the amendment to the Complaint and the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on May 17, 2021. On May 17, 2021, the Respondent Bella Night sent an informal email. On May 21, 2021, the Center informed the Parties that a UDRP proceeding may be suspended to implement a settlement agreement between the Parties.

In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2021. The Respondents did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to Panel Appointment on June 7, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on June 10, 2021. 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 the owner and licensee of the “Coyote Ugly Saloon” bars located throughout the world. The original Coyote Ugly Saloon bar was depicted (pursuant to a license from the Complainant) in the Touchstone/Disney motion picture Coyote Ugly, which grossed well over one hundred and ten million dollars worldwide. The Complainant has used the COYOTE UGLY trademarks prominently and consistently in connection with bar and tavern and related goods and services since at least as early as 1993.

The Complainant owns and operates its official website, located at <coyoteuglysaloon.com>, for which it offers information regarding its bars, locations, news, pictures, events, franchising opportunities and “Coyote Ugly” merchandise.

The Complainant owns numerous registrations for its COYOTE UGLY trademark around the world, including for instance the United States trademark registration No. 2,144,582 registered on March 17, 1998. The Complainant also owns the United States trademark registration No. 3,078,183 for its COYOTE trademark, registered on April 11, 2006.

The disputed domain name <coyoteugly.cc> was registered on February 1, 2019 and directed to a website with adult sexually explicit content with pornography elements prominently featuring the Complainant’s trademark COYOTE UGLY. At the time of the decision, the disputed domain name redirects to another disputed domain name <fuckingcoyote.cc>.

The disputed domain name <fuckingcoyote.cc> was registered on April 13, 2021 and directs to a website with adult sexually explicit content with pornography elements. For certain period of time before the decision, the website at the disputed domain name contained a notice that it is a new address for the previously known disputed domain name <coyoteugly.cc>.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain name <coyoteugly.cc> wholly incorporates the Complainant’s COYOTE UGLY trademark. The disputed domain name <fuckingcoyote.cc> wholly incorporates the Complainant’s COYOTE trademark and adding the expletive word “fucking” does not preclude the confusing similarity. The Respondents’ use of the country code Top-Level (the “ccTLD”) “.cc” also does not distinguish the disputed domain names from the Complainant’s trademarks.

The Respondents have no rights or legitimate interests in the disputed domain names. The Respondents have never been an authorized representative or agent of the Complainant. The Respondents are not commonly known by the disputed domain names.

The disputed domain names were registered and are being used in bad faith. By registering and using the disputed domain names in connection with websites that provide explicit content, including, but not limited to pornography, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites and/or the Respondents’ goods and services. The Respondents were well aware of the Complainant’s well-known trademarks when registering the disputed domain names. Linking the disputed domain names to pornographic websites is prima facie evidence of bad faith. Creating a new website at the disputed domain name <fuckingcoyote.cc> with a notice regarding the website’s new address after the Complaint was filed is clear evidence of the Respondents’ bad faith.

B. Respondents

The Respondents did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation of Respondents

The Complainant requested the Panel to hear the present dispute brought against two Respondents as a consolidated Complaint.

Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”.

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, since the disputed domain names are subject to common control by either the same person or connected parties. This is confirmed inter alia by the facts that (i) the disputed domain name <fuckingcoyote.cc> was registered shortly after the Complaint was filed, (ii) then the disputed domain name <coyoteugly.cc> started to redirect to the disputed domain name <fuckingcoyote.cc> with the same content at its website and notice that the initial website has moved to this new location.

Furthermore, the Panel notes that both Respondents are located in the Russian Federation and have exactly the same email address.

The Panel grants the request to consolidate the Respondents into one proceeding. Hereafter, the Panel will refer to the Respondents as the “Respondent”.

B. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview 3.0 the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards ccTLD “.cc” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 , in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain names incorporate the entirety of the Complainant’s respective trademarks.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that addition of the term “fucking” in the disputed domain name <fuckingcoyote.cc> does not prevent establishing the confusing similarity with the Complainant’s trademarks.

Considering the above, the Panel finds the disputed domain name <coyoteugly.cc> is identical and the disputed domain name <fuckingcoyote.cc> is confusingly similar to the Complainant’s trademarks, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Noting the facts and arguments set out above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain names.

The Respondent is not commonly known by the disputed domain names, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The disputed domain name <coyoteugly.cc> used to redirect Internet users to website prominently featuring the Complainant’s trademark to make the Internet users believe that they actually access a website authorized by the Complainant. Past UDRP panels confirmed that such actions prove a registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).

Noting the high risk of implied affiliation between the disputed domain name <coyoteugly.cc> and the identical well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademarks are well established through intensive and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark near worldwide. Thus, the Panel finds that the disputed domain names identical and confusingly similar to the Complainant’s trademarks were registered in bad faith.

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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. In this case, the disputed domain names identical and confusingly similar to the Complainant’s trademarks were used to capitalize on the Internet users’ efforts to find the Complainant. The Panel finds the above confirms the mentioned disputed domain names were also registered and used in bad faith.

The fact that the websites at the disputed domain names provide adult sexually explicit content with pornography elements is a clear indication that the disputed domain names have been registered and used in bad faith (see, e.g., Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022, Miroglio S.p.A. v. Mr. Alexander Albert W. Gore, WIPO Case No. D2003-0557).

Considering the above, the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under 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 names <coyoteugly.cc> and <fuckingcoyote.cc> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: June 21, 2021

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