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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maker Studios, Inc. v. ORM LTD / Contact Privacy Inc. Customer 0137258808

Case No. D2014-0918

1. The Parties

The Complainant is Maker Studios, Inc. of Los Angeles, California, United States of America (“US”), represented by Dinsmore & Shohl LLP, US.

The Respondent is ORM LTD of Cayman Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland (“UK”); Contact Privacy Inc. Customer 0137258808 of Toronto, Ontario, Canada.

2. The Disputed Domain Name and Registrar

The disputed domain name <pewdiepie.com> (“Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2014. On June 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 2, 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 June 3, 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 amended Complaint on June 5, 2014.

The Center verified that the Complaint and 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2014.

The Center appointed Neil A. Smith as the sole panelist in this matter on July 9, 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.

This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. Upon information and belief, the Registration Agreement, pursuant to which the domain name that is the subject of this Complaint is registered, incorporates the Policy. The Registrar’s policy expressly states that the Registrant of a domain name registered with the Registrar “agrees to submit to proceedings under ICANN’s Uniform Domain Dispute Policy (“UDRP”) and comply with the requirements set forth by the Registry.” The Policy states that the UDRP applies to Respondent’s registration of <pewdiepie.com>.

4. Factual Background

The PEWDIEPIE trade mark was registered in the US for entertainment and other goods and services, as noted below. See PEWDIEPIE, US Registration No. 4,424,201, registered on October 29, 2013, which as noted below the Complainant pleads that it inter alia controls, together with a trade mark registration in the European Union (“EU”) Office for Harmonization in the Internal Market (“OHIM”), Registration No. 011197837, for goods including movies, computer games, computer game software, downloadable computer game programs, computer programs, software in the form of application”, etc. The Complainant asserts without challenge that its use of its PEWDIEPIE trade mark predates the Respondent’s registration of the Disputed Domain Name, which was created on February 7, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. It asserts that:

- The Complainant Maker Studios (Maker) is a YouTube media company focused on developing programming for a large audience of subscribers, and that each month, Maker generates over one billion views across more than one thousand channels for over eighty million subscribers worldwide.

- “Maker, itself and/or through its licensed affiliates and subsidiaries, owns and/or controls trademarks and other intellectual property relating to the YouTube talent, Felix Kjellberg.”

- “(‘Maker Talent’), professionally known as PewDiePie, which includes, without limitation, the name and likeness of Maker Talent.”

- “Maker controls the trademark PEWDIEPIE for entertainment services, namely, PEWDIEPIE, U.S. Registration No. 4,424,201, in connection with movies, namely, audio and video recordings featuring video game playing with player commentary and narration, computer game programs, computer game software, downloadable computer game programs, software in the form of applications (‘apps’) for games, computer software for transmission of photographs to mobile telephones, computer mice, computer mouse pads, headsets for telephone and computer, headphone consoles, keyboards in Class 9, posters, printed items, namely, business cards, picture postcards in Class 16, clothing, namely, t-shirts, sweatshirts, footwear, headgear, namely, caps, clothing accessories, namely, scarves in Class 25, and entertainment, namely, live performances featuring video game playing with player commentary and narration; arranging organizing and performing online shows featuring video game playing with player commentary and narration in Class 41.”

- “Maker controls a trademark registration in the European Union (‘EU’) Office for Harmonization in the Internal Market (‘OHIM’), Registration No. 011197837, in connection with movies, computer games, computer game software, downloadable computer game programs, computer programs, software in the form of applications (‘apps’), computer software for transmission of photographs to mobile telephones, computer mouse, computer mouse pads, headsets, headphone consoles, keyboard in Class 9, posters, printed papers in Class 16, clothing, footwear, headgear, clothing accessories in Class 25 and entertainment, organizing shows for entertainment purposes, arranging of visual entertainment over the Internet in Class 41.”

- Goods and services offered under the PEWDIEPIE trade mark are promoted through advertising in trade magazines, at trade shows, on the Internet, through press releases, and through co-promotions with other companies, and that millions are likely to see an advertisement for a PEWDIEPIE product on the Internet, in magazines, on billboards, and in other places.

- The Complainant maintains a website to provide customers with information about its PEWDIEPIE products at “www.pewdiepie.net”.

- Due to the length of use of the PEWDIEPIE trade mark and the widespread recognition of the brand, PEWDIEPIE has become a famous, recognized trade mark for entertainment services.

- The Complainant contends that the Disputed Domain Name <pewdiepie.com> creates confusion because it incorporates Complainant’s PEWDIEPIE trade mark in its entirety and simply adds “.com” to the domain name.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect to the Disputed Domain Name in that:

- “Complainant’s use of its PEWDIEPIE trademark predates Respondent’s registration of the <pewdiepie.com> domain name.”

- Complainant alleges that has not discovered any rights or legitimate interests that the Respondent has in the Disputed Domain Name.

- The Complainant alleges that it has no relationship with the Respondent, and has not given the Respondent permission to use its PEWDIEPIE trade mark or to apply for a domain name incorporating the PEWDIEPIE trade mark. The Complainant alleges further that the Respondent’s name does not include the word “Pewdiepie” and that the Respondent’s business has nothing to do with the links relating to the ads currently located on the website resolved by the Disputed Domain Name, and that Respondent profits, in bad faith, from misdirecting those searching for information on or the official website related to the Complainant and/or <pewdiepie.net> to those competitive links.

- The Complainant finally asserts that there is no legitimate reason for the Respondent to have chosen the Complainant’s PEWDIEPIE trade mark for the Disputed Domain Name.

The Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith in that:

- The Respondent has registered the Disputed Domain Name in bad faith and continues to use it in bad faith.

- The Respondent registered the Disputed Domain Name in an effort to capitalize from the misdirected traffic, in that the Disputed Domain Name contains numerous placeholder links, advertisements and search engines as content to not only misdirect consumers to websites not affiliated with the PEWDIEPIE brand, but also to make money from such misdirected users clinking on these links, noting that these websites include search engines, placeholder links, links to unrelated websites (such as “www.amazon.com”, but with a link at the top of the domain to redirect money back to the Registrant), to online gambling websites.

- The Complainant alleges therefore that since the Respondent’s website automatically redirects visitors to various advertisements, search engines, and other websites, Internet users at the website resolved by the Disputed Domain Name which have been looking for information about the Complainant’s PEWDIEPIE goods and services, but instead of reaching the desired website, those users are misdirected by the Respondent to various other websites that pay the Respondent for the additional traffic, and that using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s mark is evidence of bad faith registration under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The fact that Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences flowing from the Complaint as true. See e.g. Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar to a trade mark or service mark in which the Complainant has rights

The Panel accepts for the purpose of this administrative proceeding that the Complainant has rights in the PEWDIEPIE mark, based on the numerous registrations described above and Complainant’s assertions that it, such as the statements quoted above from the Complaint, e.g. “Maker controls the trade mark PEWDIEPIE” and that “Maker, itself and/or through its licensed affiliates and subsidiaries, owns and/or controls trademarks and other intellectual property relating to the YouTube talent, Felix Kjellberg (‘Maker Talent’), professionally known as PewDiePie, which includes, without limitation, the name and likeness of Maker Talent,” and that “Complainant’s use of its PEWDIEPIE trademark predates Respondent’s registration of the <pewdiepie.com> domain name.” While these statements are somewhat ambiguous, they are made in this legal proceeding and are unchallenged. (See Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

The Disputed Domain Name incorporates the Complainant’s PEWDIEPIE mark in its entirety. It is well established that in making an inquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension, in this case “.com”, may be disregarded. See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered mark, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel finds that there is no evidence that the Respondent has become commonly known by the Disputed Domain Name or has any trade mark rights that correspond to the Disputed Domain Name. The Panel also accepts that there is no evidence that the Respondent has been authorized to use the PEWDIEPIE trade mark, or a domain name including it. The Panel is therefore of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. However, as the Respondent has not filed any Response to the Complaint, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

The website that the Disputed Domain Name resolves to is a parking page that provides sponsored links, or rotates to sponsored links, which likely generates income to Respondent from misdirected traffic from the trade mark in which Complainant has rights. This is in line with previous UDRP cases, such as see Comerica Incorporated v. Balticsea LLC / Contact Privacy Inc. Customer 0131519121, WIPO Case No. D2013-0932 and L’Oréal v. Balticsea, LLC, WIPO Case No. D2012-2460, where the Respondent registered domain names that incorporated well-known marks, and then simply used them to resolve to pages in order to generate pay-per-click revenue from the traffic generated.

In light of the above, the Panel finds that the Respondent has not been using the Disputed Domain Name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use, without intent for commercial gain. As such, the Respondent cannot claim any rights or legitimate interests in the Disputed Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Name resolves to a page that includes, or rotates to pages for pay or containing sponsored links. It is reasonable to infer that the Respondent earns pay-per-click revenue in relation to the Disputed Domain Name. The PEWDIEPIE trade mark has been used by the Complainant and/or its claimed predecessors or related parties, for many years, and it is undisputed here that it is well-known. It therefore cannot be mere coincidence that the Respondent registered the Disputed Domain Name which incorporates the Complainant’s exact PEWDIEPIE mark. The Panel therefore finds that the Respondent registered and is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its pages, by creating a likelihood of confusion with the Complainant’s PEWDIEPIE mark, and/or also registered it with the intent of selling and/or using the Disputed Domain Name for profit.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 <pewdiepie.com> be transferred to the Complainant.

Neil A. Smith
Sole Panelist
Date: July 22, 2014

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