WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EMMedia, Inc. v. Roman Romanov
Case No. D2017-0778
1. The Parties
Complainant is EMMedia, Inc. of Beverly Hills, California, United States of America (“United States”), represented by Walters Law Group, United States of America.
Respondent is Roman Romanov of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <gaymassagem4m.com> (the “Domain Name”) 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 April 18, 2017. On April 18, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2017, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on April 24, 2017.
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 Respondent of the Complaint, and the proceedings commenced on April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 17, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 1, 2017. 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 holds trademarks registered with the United States Patent and Trademark Office (“USPTO”) for the marks MASSAGEM4M (Registration No. 3,749,775) and MASSAGEM4M.COM (Registration No. 3,749,337) in connection with “advertising services, providing an online directory information service featuring information regarding message [sic] therapists; promotion of massage services of others through a webpage that contains massage therapist descriptions and contact information.” The USPTO registered these marks in February 2010. Complainant first used these marks in commerce in January 2001. At its website “www.massagem4m.com”, Complainant provides a “Gay Massage and Male Massage Directory.”
The Domain Name was registered on May 16, 2016. The Domain Name resolves to a website which purports to serve as a directory for gale male massage services in New York City. There is also a link inviting users to “sign up today”. Complainant’s counsel sent Respondent a cease-and-desist letter on March 6, 2017. No response was received.
5. Parties’ Contentions
Complainant contends that it has satisfied the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the marks MASSAGEM4M and MASSAGEM4M.COM, through registration and use demonstrated in the record. The Panel further concludes that the Domain Name is confusingly similar to these marks. The Domain Name incorporates Complainant’s marks in their entirety and merely adds the generic term “gay.” In view of the services offered by Complainant under its marks, this additional generic term does not reduce the confusing similarity between the marks and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not rebutted the prima facie case made out by Complainant and has not come forward with any explanation why he registered the Domain Name, which is confusingly similar to Complainant’s trademark, and why the Domain Names resolves to a website offering services similar to those offered by Complainant.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the Domain Name was registered and is being used in bad faith. It is clear that Respondent had Complainant’s mark in mind, since Respondent’s website offers services similar to – and even in competition with – those offered by Complainant. In the Panel’s view, Respondent is clearly using the Domain Name in bad faith within the meaning of the above-quoted Policy paragraphs 4(b)(iii) and 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <gaymassagem4m.com> be transferred to Complainant.
Robert A. Badgley
Date: June 2, 2017