WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MFCXY Inc. v. Registration Private, PrivacyGuardian.org / Josh Pendergrass
Case No. D2017-1928
1. The Parties
Complainant is MFCXY Inc. of Longwood, Florida, United States of America (“United States”), represented by Walters Law Group, United States.
Respondent is Registration Private, PrivacyGuardian.org of Phoenix, Arizona, United States / Josh Pendergrass of Lapu-Lapu City, Cebu, Philippines, self-represented.
2. The Domain Name and Registrar
The disputed domain name <myfreecamshow.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2017. On October 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2017, 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 Complainant on October 4, 2017, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 4, 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 October 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2017. Respondent submitted informal email communications on October 4, 6 and 12, 2017 but did not submit any formal response. Accordingly, the Center notified the Parties on November 2, 2017 that it would proceed to panel appointment.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 15, 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 offers adult entertainment over the Internet at “www.myfreecams.com”. Complainant registered the mark MYFREECAMS.COM with the United States Patent and Trademark Office on September 2, 2008 (Reg. No. 3495750). At the time of filing, “www.myfreecams.com” was ranked the 747th most popular website on the World Wide Web and the 400th most popular in the United States by Alexa.
Respondent registered the disputed domain name <myfreecamshow.com> on June 17, 2015. The disputed domain name currently resolves to the adult entertainment website “www.myfreewebcamshows.com” and before the Complaint was filed, it resolved to the adult entertainment website “www.myfreecamshow.com”.
5. Parties’ Contentions
Complainant alleges that it has offered its services under the mark MYFREECAMS.COM since 2002 and that over the past 15 years consumers have come to associate the mark with Complainant’s services. Complainant argues that by registering a domain name that is confusingly similar to Complainant’s mark – differing only by the addition of “how” to “myfreecams” – Respondent has attempted to divert business from Complainant. According to Complainant, Respondent has taken advantage of the customer confusion created by the similarity of the disputed domain name to Complainant’s mark for its own commercial gain and thus is not engaged in a bona fide or noncommercial fair use of the disputed domain name. Further, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because, considering the well-known nature of Complainant’s mark, Respondent was likely aware of Complainant’s rights when he registered the disputed domain name and is using the disputed domain name to misdirect users to his own competing website.
Respondent did not formally reply to the Complainant’s contentions but did submit informal email communications in which he asserted that the disputed domain name was not related to Complainant’s mark and that the website to which the disputed domain name resolves makes no reference to MYFREECAMS.COM and does not look similar to Complainant’s website.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark. The disputed domain name incorporates Complainant’s mark in its entirety; the only difference being the addition of “how”. This addition does nothing to avoid the confusion created by the entire reproduction of Complainant’s mark. Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has established a prima facie case showing that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to rebut Complainant’s case. There is no evidence to show that Respondent has been commonly known by the disputed domain name. Rather, the record shows that Complainant has not authorized Respondent to use Complainant’s mark and that Respondent is using the disputed domain name for commercial gain in direct competition with Complainant. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant has also satisfied paragraph 4(a)(iii) of the Policy. Considering the substantial traffic to Complainant’s website and Respondent’s adoption of a domain name that incorporates Complainant’s mark in its entirety to offer the same content as Complainant, the Panel finds it reasonable to infer that Respondent was aware of Complainant’s mark and rights at the time he registered the disputed domain name. Moreover, the record indicates that Respondent, by using a domain name confusingly similar to Complainant’s mark, is seeking to divert visitors searching for Complainant’s website to his own website to further his own commercial interests. Accordingly, the Panel finds that the disputed domain name was 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 <myfreecamshow.com> be transferred to Complainant.
Lawrence K. Nodine
Date: December 6, 2017