WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Licensing IP International S.A.R.L. v. Adrian Garcia, Internet Bussines / Domain Protection Services, Inc.
Case No. D2017-1086
1. The Parties
The Complainant is Licensing IP International S.A.R.L. of Luxembourg City, Luxembourg, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Adrian Garcia, Internet Bussines / Domain Protection Services, Inc. of Palma de Mallorca, Spain.
2. The Domain Name and Registrar
The disputed domain name <redtubexxx.xxx> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 to the Complainant on June 7, 2017 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 12, 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 the Respondent of the Complaint, and the proceedings commenced on June 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2017. The Respondent sent informal email communications to the Center on June 7, 2017; the Respondent did not however submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on July 4, 2017.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on July 11, 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
The Complainant is Licensing IP International S.A.R.L., a company of Luxembourg ("MindGeek"), employing over 1,000 staff, which operates the brands REDTUBE, PORNHUB and YOUPORN and licenses the corresponding domain names and trademarks. Each of the brands is established worldwide and has its own website: <redtube.com>, <pornhub.com>, and <youporn.com>, which are visited by over 100 million people daily.
The Complainant's REDTUBE brand is a paid streaming service launched in 2007 that consists of adult content with a selection of symmetrical boxes, each one showing a scene from an adult video. REDTUBE has 221,000 and 112,000 followers on their Twitter accounts, 743,000 on their Instagram accounts and 1,595 subscribers on their YouTube channel.
The Complainant owns several trademark registrations around the world for mark REDTUBE, including the US trademark registration dated from 2010 (registration number 3.843.119, granted on August 31, 2010).
The disputed domain name was registered on March 9, 2014. The disputed domain name resolved to a website almost identical to the Complainant's own REDTUBE website.
5. Parties' Contentions
The Complainant states that it owns trademark registrations in several jurisdictions for REDTUBE, and that the domain name is abusive.
According to the Complainant, the domain name is confusingly similar to its trademark and the extension ".xxx" is irrelevant when comparing the domain name and the REDTUBE trademark, since the suffix ".xxx" is descriptive of the adult nature of the website and is not capable of distinguishing the association with the Complainant's mark. The Complainant adds that the extension ".xxx" is a generic Top-Level Domain (gTLD) extension which is intended for use in conjunction with Internet pornography, reinforcing the association with the Complainant's mark.
The Complainant argues that the Respondent has no rights or legitimate interests in the domain name, that it is highly unlikely that the Respondent is commonly known by the domain name and that it has not acquired any trademark rights related to the domain name.
The Complainant says that the domain name resolves to a website almost identical to Complainant's REDTUBE website, including a red and white logo "REDTUBE XXX" similar to the Complainant's logo. Furthermore, Complainant states that the website layout looks like the Complainant's REDTUBE website.
In addition, the Complainant alleges that the Respondent – to support evidence giving the appearance of a "genuine service" – also created social media pages similar to the Complainant's pages.
The Complainant also mentions that a further indication of bad faith is the fact that its trademark was already well-established and accessible from a wide geographical reach before the registration of the domain name, which means that the Respondent knew or should have known the REDTUBE mark.
The Complainant states that the domain name misleads the general public seeking the Complainant's services since they would mistakenly believe that the Respondent's website which the domain name resolves to, is an official website of the Complainant.
Finally, the Complainant requests the transfer of the domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 in bad faith.
A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of the trademark REDTUBE in various jurisdictions. Also, the Complainant registered its own domain name and has been using its website "www.redtube.com". The Panel finds that the Complainant has trademark rights for purposes of the Policy.
Also the domain name comprises the Complainant's trademark REDTUBE. The addition of the descriptive term ".xxx" does not avoid confusing similarity between the domain name and the Complainant's trademark. Also, the suffix ".xxx" not only is descriptive but also indicates the adult nature of the website, which makes even more association with the Complainant's mark.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademark
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant's trademark or to register domain names containing the trademark REDTUBE.
There is no evidence that the Respondent is commonly known by the domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name or that before any notice of the dispute the Respondent has made 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. Instead, there is evidence that the Respondent developed a website and social media pages including a logo in the red and white colors, similar to the Complainant's logo and also with a similar layout, so that the public may be confused with the Complainant's mark.
Based on the evidence in the Complaint, the Panel finds that the use of the domain name, which incorporates the Complainant's trademark, does not correspond to a bona fide use under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademark REDTUBE is registered by the Complainant in many jurisdictions around the world and was already well established before the registration of the disputed domain name.
The disputed domain name resolves to display videos of adult content and is comprised of the REDTUBE trademark in addition to the descriptive suffix ".xxx" appearing twice, which does not only avoid confusion with the Complainant's trademark but also make more association with it, taking into consideration that such suffix indicates the adult nature of the website, as per the Complainant's services.
Therefore, this Panel finds that the Respondent obviously knew of the Complainant's mark when the Respondent registered the domain name and has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's trademark. Furthermore, Respondent is misleading Internet users to believe that the website which the disputed domain name resolves to belongs to or is associated with the Complainant.
This Panel finds that the Respondent's intention of taking undue advantage of the trademark REDTUBE as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.
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 <redtubexxx.xxx> be transferred to the Complainant.
Mario Soerensen Garcia
Date: July 18, 2017