WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Multi Media, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Mikhail Kovalevskiy
Case No. D2017-2035
1. The Parties
The Complainant is Multi Media, LLC, c/o Walters Law Group of Longwood, Florida, United States of America ("United States"), represented by Walters Law Group, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. Panama / Mikhail Kovalevskiy of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <chaturbate.online> (the "Domain Name") is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2017. On October 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 20, 2017, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 27, 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 October 27, 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 November 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 22, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on December 8, 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 owns and operates a website at "www.chaturbate.com" and has used this domain name for a number of years in connection with the provision of the streaming of audio, visual and audiovisual material, and other entertainment services. In providing its services, the Complainant has made use of the CHATURBATE trademark.
The Complainant has a trademark registration for CHATURBATE (word mark) in International Class 38 and International Class 42 (United States Registration No. 4,288,943; Filing Date, June 28, 2012; Registration Date, February 12, 2013). Such registration was originally in the name of ZMediaNow, LLC (the name by which the Complainant was originally known). The registration was assigned to the Complainant on March 10, 2014. The Complainant also has a logo mark registration for CHATURBATE (United States Registration No. 4,988,208; Filing Date, November 3, 2015; Registration Date, June 28, 2016).
The Respondent registered the Domain Name <chaturbate.online> on November 13, 2016. As of August 10, 2017, the Domain Name resolved to a website providing the streaming of audio, visual and audiovisual material, and other entertainment services. Currently, the Domain Name does not resolve to an active website.
The Complainant sent a cease and desist letter on October 3, 2017, asking the Respondent to stop using the Domain Name and to transfer it to the Complainant. The Respondent did not respond.
5. Parties' Contentions
The following is a summary of the main contentions of the Complainant.
The Complainant's rights:
The Complainant registered its <chaturbate.com> domain name on February 26, 2011, and its website went live on or about June 30, 2011. The Complainant has been using the CHATURBATE mark in international commerce in connection with the streaming of audio and video services on the World Wide Web since at least 2011. Thus, in addition to the Complainant's registered rights in the CHATURBATE mark, it has extensive common law rights throughout the world, accruing at the latest, 2011. The Complainant's rights thus pre-date the Respondent's registration of the Domain Name (on November 13, 2016).
The Complainant's website at "www.chaturbate.com" is now one of the most popular websites in the world. According to Alexa Internet, it is the 142nd most popular website on the World Wide Web. Because it is one of the most visited websites in the world, it has become a prime target for cybersquatters wishing to profit from the goodwill that the Complainant has garnered in the CHATURBATE mark. The Respondent is one such cybersquatter.
The Domain Name is identical or confusingly similar to the Complainant's CHATURBATE mark:
The Domain Name is identical to the Complainant's CHATURBATE mark, adding only the generic top-level domain ("gTLD") <.online>, which does not serve to distinguish the Domain Name and mark, particularly given that the Complainant's services are offered online.
The Domain Name is identical or, at the very least, confusingly similar to the Complainant's CHATURBATE mark.
The Respondent has neither rights nor legitimate interests in the Domain Name:
The registration and use of a domain name in bad faith cannot establish rights or legitimate interests.
The Respondent would be unable to provide credible evidence that it has legitimate rights or a legitimate interest in the Domain Name. The Respondent is using the Domain Name to offer the same services that the Complainant offers under its CHATURBATE mark. The Respondent did not offer these services using the Domain Name until well after the Complainant had acquired registered rights in the CHATURBATE mark. The Respondent is operating a counterfeit site with a similar layout to that of the Complainant's site.
The Respondent is not commonly known as "Chaturbate". A respondent's past use of a domain name in connection with its commercial website cannot support a finding that the respondent is commonly known by that domain name. This is particularly so given that the Respondent sought to hide its identity from the public behind a WhoIs privacy wall.
The Domain Name contains the entirety of the Complainant's CHATURBATE mark and offers services virtually identical to, and therefore competitive with, the Complainant's services. The Respondent is thus incapable of using the Domain Name for a legitimate purpose.
The Respondent cannot argue that it is making a legitimate noncommercial or fair use of the Domain Name. It is clearly being used for a commercial purpose. Not only does it provide the same services as the Complainant, it also provides links to other competitors of the Complainant. The Respondent is undoubtedly compensated for these links.
The Complainant's mark is a novel, invented term and not a word in any language. There is no obvious connection between the word "chaturbate" and the streaming of audio and audiovisual services. The CHATURBATE mark is therefore entitled to the strongest amount of trademark protection.
Not only is the Respondent incapable of good faith use of the Domain Name, it is intentionally profiting from the goodwill the Complainant has established in the CHATURBATE mark, with an ability to damage that goodwill.
The Respondent registered and used the Domain Name not because it refers to or is associated with the Respondent, but because the Domain Name is identical or confusingly similar to the <chaturbate.com> domain name and CHATURBATE marks used by the Complainant. The Respondent is profiting financially from the Domain Name and from the goodwill of the Complainant's CHATURBATE marks. The Respondent's failure to reply to the Complainant's cease and desist letter only goes to support the contention that the Respondent lacks rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith:
The Complainant refers generally to paragraph 4(b) of the Policy which outlines a non-exclusive list of circumstances suggesting that registration of a domain name has taken place in bad faith. It includes: (1) circumstances indicating that the person who registered the disputed domain name did so for the purpose of selling the domain name to the complainant to whom the mark to which it is similar or identical belongs; (2) the person registered the domain name with the purpose of preventing the complainant from registering the mark in a corresponding domain name; (3) the registrant intended to disrupt the business of a competitor; and (4) the registrant attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's mark.
Regardless of the application of these circumstances, the Respondent's conduct amounts to bad faith.
Bad faith registration:
By the time of registration of the Domain Name, the Complainant had been using its mark for over five years (having acquired registered rights over four years before registration of the Domain Name).
The Respondent registered the Domain Name because it knew of the Complainant and the goodwill associated with its CHATURBATE mark and hoped to profit from it. The Respondent clearly hoped to attract Internet users to its website by creating a likelihood of confusion between the Complainant's services and the infringing services offered by the Respondent. After registering the Domain Name, the Respondent "parked" it for a period of time with the Registrar. A short time after the Complainant sent its cease and desist letter to the Respondent, the present use began. Given the Complainant has used the CHATURBATE marks in connection with a website offering streaming video and audio for several years, and the exact same services are now offered by the Respondent on a "copycat" site, it is inconceivable that the Respondent was not aware of the Complainant's mark when registering the Domain Name.
Even if the Respondent argues that it did not have actual knowledge of the CHATURBATE mark at the time of registration of the Domain Name, constructive knowledge of a mark can properly be applied in UDRP proceedings.
The Respondent's use of a privacy service prior to the Complaint being filed is additional evidence of bad faith. As the Respondent registered the Domain Name to, inter alia, direct Internet users to the Complainant's competitor, it should be concluded that the Respondent used a privacy service in a bad faith attempt to hide its identity and conceal its intellectual property infringement.
The Respondent has failed to justify its use of the Complainant's CHATURBATE mark in response to the Complainant's cease and desist letter and the Respondent's failure to respond is further evidence of bad faith.
The Respondent's use of the Complainant's CHATURBATE mark to redirect Internet users to its own website that offers overlapping services, presumably for commercial gain, also amounts to bad faith registration (and use).
Moreover, the CHATURBATE brand, as used with the relevant services, is unique and arbitrary such that it is unlikely that the Respondent devised the term "chaturbate.online" independently.
Given the widespread recognition enjoyed by the Complainant in the adult-themed advertising industry, it is virtually certain that the Respondent chose to register the Domain Name with the bad faith intent to profit from the Complainant's established reputation and trademark rights. The Respondent is clearly attempting to exploit the Complainant's goodwill and brand name recognition for its own gain.
Bad faith use:
The Respondent intended to disrupt the Complainant's business and divert Internet traffic away from the "www.chaturbate.com" site when Internet users searched for "chaturbate". Thus, the Respondent's registration and use of the Domain Name was clearly designed to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of the Respondent's infringing website. This is particularly so given that the Respondent's website offers the same services as that of the Complainant. When Internet users arrive at the Respondent's infringing, competing site, they may believe that they have reached the Complainant's Chaturbate site or simply remain on the Respondent's site given that it offers the same services as those of the Complainant. The Respondent is using the Domain Name to poach Internet users from the Complainant and to profit from the goodwill in the Complainant's marks and website.
The Respondent has listed the Domain Name for sale at a price of USD 11,819, attempting to intentionally profit from the goodwill the Complainant has established in the CHATURBATE mark, but also with the ability to damage that goodwill.
There are no plausible circumstances in which the Respondent could legitimately register or use the Domain Name.
The Domain Name was registered and is being used by the Respondent in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the CHATURBATE mark for the purposes of the Policy by virtue of not just its trademark registrations, but also common law due to its long standing use of the mark.
Ignoring the generic Top-Level Domain ".online" (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant's CHATURBATE trademark. Given trademark and Domain Name are identical, the issue of confusing similarity need not be considered.
The Panel thus finds that the Domain Name is identical to the CHATURBATE trademark for the purposes of the Policy and thus the requirement of paragraph 4(a)(i) has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. Here, however, the Respondent is not known by the Domain Name and given the nature of the website to which the Domain Name resolves, the Panel would not accept that there is legitimate noncommercial or fair use. Moreover, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that "rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant". That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a (non-authorized) website to which a domain name resolves, which so obviously takes advantage of the renown of the trademark of another (such that Internet users may well be misled), could amount to a bona fide offering.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy and is satisfied that there is nothing inappropriate in such a finding.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
The Respondent was clearly aware of the Complainant's CHATURBATE trademark given the use to which the Domain Name has been put. The purpose behind the registration appears to have been to attract Internet users to the Respondent's website using a domain name identical (or confusingly similar) to the Complainant's CHATURBATE trademark. In other words, precisely the circumstances envisaged above. Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name <chaturbate.online> be transferred to the Complainant.
Date: December 14, 2017