WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Multi Media LLC v. Private Registration, Account Privacy / Suren Akopian
Case No. D2017-2440
1. The Parties
Complainant is Multi Media LLC of Longwood, Florida, United States of America ("United States"), represented by Walters Law Group, United States.
Respondent is Private Registration, Account Privacy of Tampa, Florida, United States / Suren Akopian of Yerevan, Armenia.1
2. The Domain Names and Registrar
The disputed domain names <chatrubate.com> and <chatubate.com> are registered with Nettuner Corp. DBA Webmasters.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 12, 2017. On December 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 December 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 12, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 26, 2018. 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 is a company with legal domicile in the United States that owns and operates the website at "www.chaturbate.com" providing for streaming adult content such as audio, visual, and audio-visual material and other adult entertainment services. Complainant has provided evidence that it owns the following trademarks relating to the designation "Chaturbate" with protection in the United States:
- Word mark CHATURBATE, United States Patent and Trademark Office ("USPTO"), Registration No. 4,288,943, Registration Date: February 12, 2013, Application Date: June 28, 2012, First Use in Commerce: June 30, 2011, First Use: April 30, 2011, Status: Active;
- Word/design mark CHATURBATE, USPTO, Registration No. 4,988,208, Registration Date: June 28, 2016, Application Date: November 3, 2015, First Use in Commerce: June 30, 2011, First Use: June 30, 2011, Status: Active.
Furthermore, Complainant owns the domain name <chaturbate.com>, which was first registered on February 26, 2011 and has been in use ever since.
Respondent, who according to the WhoIs information for the disputed domain names is a resident of Armenia, has registered both disputed domain names on July 22, 2011. As of the time of the rendering of this decision, the disputed domain names redirect to a website at "www.amateurcams.com" providing for several kinds of adult content such as adult entertainment videos.
On November 29, 2017, Complainant sent a cease and desist letter relating to both disputed domain names to Respondent at the contact details provided for in the WhoIs information of the disputed domain name <chatubate.com>, to which Respondent did not reply.
Complainant requests that the disputed domain names be transferred to Complainant.
5. Parties' Contentions
Complainant contends that besides its national United States trademarks CHATURBATE, Complainant has developed extensive common law rights in the CHATURBATE trademark throughout the world that accrued even before Respondent registered the disputed domain names on July 22, 2011. Furthermore, Complainant states that in 2017, "www.chaturbate.com" was amongst the most popular websites in the world, placing it securely within the top 1,000 websites for overall traffic.
Complainant submits that the disputed domain names are confusingly similar to Complainant's CHATURBATE trademark as they both consist of the latter, simply switching the letters "ur" to "ru" in the domain name <chatrubate.com> and simply omitting the letter "r" in the domain name <chatubate.com>, thus, constituting typical typo squatted domain names.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names, since (1) on Complainant's information and belief, Respondent is not commonly known as "Chaturbate" or any similar terms, (2) Complainant's CHATURBATE trademark is a novel, invented term and not a word in any language, (3) the disputed domain names contain almost the entirety of Complainant's CHATURBATE trademark with only slight deviations in spelling to form typo squatted domain names, (4) Respondent is not making a legitimate, noncommercial or fair use of the disputed domain names since they redirect to Respondent's website that has been presumably set up for commercial gain and (5) Respondent is obviously financially profiting from the goodwill of Complainant's CHATURBATE trademark as both disputed domain names redirect Internet users to a website that offers similar adult-themed live webcam services as does Complainant.
Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith, since (1) Complainant started to use its CHATURBATE trademarks in June 2011, which was a month before Respondent registered the disputed domain names in July 2011, (2) Respondent clearly hoped to attract Internet users to its websites by creating a likelihood of confusion between Complainant's services and the similar infringing services offered by Respondent, (3) Respondent has failed to justify its use of Complainant's CHATURBATE trademarks in response to Complainant's cease and desist letters transmitted on November 29, 2017, (4) the CHATURBATE trademark is unique and arbitrary such that it is unlikely that Respondent devised the terms <chatrubate.com> and <chatubate.com> on its own, (4) Respondent is clearly attempting to exploit Complainant's goodwill and brand name recognition for its own gain, (5) Respondent's act of typo squatting, by misspelling Complainant's CHATURBATE trademark, was clearly designed to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation or endorsement of Respondent's infringing website.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <chatrubate.com> and <chatubate.com> are confusingly similar to the CHATURBATE trademark in which Complainant enjoys rights, at least by means of the aforementioned trademark registrations with the USPTO.
The disputed domain names incorporate the CHATURBATE trademark in its entirety with two simple misspellings, namely the switching of the letters "ur" in the disputed domain name <chatrubate.com> and the omission of the letter "r" in the disputed domain name <chatubate.com>. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). The fact that the disputed domain names obviously include simple misspelling of Complainant's CHATURBATE trademark is not at all inconsistent with such finding of confusing similarity. Typo squatted domain names are, on the contrary, intended to be confusing so that Internet users, who unwittingly make common type errors, will enter the typo squatted domain name instead of the correct spelled trademark (see e.g. National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
In this context, the Panel notes that there is a consensus view among UDRP panels according to which the fact that a domain name has been registered before a complainant has acquired trademark rights does not by itself preclude a complainant's standing to file a UDRP case, nor a panel's finding of identity or confusing similarity under the first element, provided that complainant's trademark rights are in existence at the time the complaint is filed which obviously here is the case given Complainant's CHATURBATE trademark registrations with the USPTO (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.1.3).
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant's undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent obviously has not been authorized to use Complainant's CHATURBATE trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the term "Chaturbate", which according to Complainant's contentions is a novel, invented term and not a word of any language. Finally, Respondent obviously has neither used the disputed domain names for a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. On the contrary, both disputed domain names obviously are typo squatted versions of Complainant's CHATURBATE trademark and both redirect to a website at "www.amateurcams.com" which offers adult content entertainment services directly competing with Complainant's business.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain names. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the disputed domain names (see WIPO Overview 3.0, section 2.1). Given that Respondent defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
Given that the term "Chaturbate" has been invented or created by Complainant itself and in light of the fact that both disputed domain names are obviously typo squatted versions thereof used by Respondent to offer adult entertainment services in direct competition with Complainant's business, it is evident that by the time of the registration of the disputed domain names on July 22, 2011, Respondent at least somehow was aware of said invented term and Complainant's making use thereof in a specific commercial context.
The question remains whether or not Complainant at this point of time already enjoyed trademark rights in the "Chaturbate" term, and – if not so – how that influences the finding for or against bad faith on the part of Respondent under the UDRP.
Complainant's CHATURBATE trademarks registered with the USPTO were applied for only on June 28, 2012 (USPTO 4,288,943) and November 3, 2015 (USPTO 4,988,208), thus clearly after the registration of the disputed domain names took place. On the basis of the facts brought before this Panel by Complainant, it is unclear whether or not Complainant enjoyed the claimed common law rights in the designation "Chaturbate" already back in April 2011. This is because (1) according to the USPTO trademark database, Complainant's CHATURBATE trademark was first used on April 30, 2011 and first used in commerce on June 30, 2011, and (2) Complainant's own domain name <chaturbate.com> was first registered on February 26, 2011. Complainant, however, has not provided sufficient evidence that at least on or before July 22, 2011, the term "Chaturbate" had already become a distinctive identifier associated with Complainant or its goods and services due to e.g. the duration and nature of use of this trademark, the amount of sales under it, the nature and extend of advertising using this trademark, the degree of actual public recognition and/or consumer surveys (see WIPO Overview 3.0, section 1.3). The Panel, therefore, assumes that the registration of the disputed domain names took place before Complainant indeed acquired rights, whether registered or unregistered, in the CHATURBATE trademark.
However, there is a consensus view among UDRP panels that in certain limited circumstances it may be justified to find that a respondent has acted in bad faith even if a complainant acquired trademark rights only after the domain name was registered provided that the facts of the case still establish that a respondent's intent in registering the disputed domain name was to unfairly capitalize on the complainant's nascent (typically as yet unregistered) trademark rights; such scenarios include the registration of a domain name e.g. shortly before or after announcement of a corporate merger, further to a respondent's insider knowledge or following a complainant's filing of a trademark application (see WIPO Overview 3.0, section 3.8.2). All of these scenarios have in common that the respondent under the facts to the case somehow anticipated the complainant's trademark rights and, therefore, allow to conclude that a respondent unfairly took advantage of the complainant's not yet existing, but soon to come trademark rights. The Panel recognizes clear analogies between the case at hand and these scenarios. Complainant apparently registered its own domain name <chaturbate.com> as early as February 26, 2011 and soon thereafter started using the "Chaturbate" term on April 30, 2011 and in commerce on June 30, 2011, thus well before the registration of the disputed domain names took place. Taking into account that the term "Chaturbate" apparently has no meaning in any language and has been invented by Complainant and, furthermore, recognizing that the disputed domain names both constitute misspellings of said term, the Panel not only concludes that Respondent apparently knew of Complainant and its making use of the "Chaturbate" term, but, moreover, that Respondent attempted from the very beginning to somehow profit from Complainant's business undertaking in connection with the "Chaturbate" term, which is evidenced by the fact that Respondent offered in the past and still offers services under the disputed domain names that directly compete with Complainant's business. The Panel, therefore, holds that Respondent apparently anticipated Complainant's CHATURBATE trademark rights and unfairly took advantage thereof when registering the disputed domain names on July 22, 2011 at a point that those trademark rights were not yet in existence, thus, the Panel despite of this timing is not hindered in general to find for a registration and making use of the disputed domain names by Respondent in bad faith.
Having said so, the redirection of the disputed domain names, which are both confusingly similar to Complainant's CHATURBATE trademark, to a website at "www.amateurcams.com" providing for several kinds of adult content such as adult entertainment videos, thus directly competing with Complainant's business, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant's CHATURBATE trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Paragraph 4(b)(iv) of the Policy provides that such circumstances are evidence of registration and use of the disputed domain names in bad faith. In connection with this finding, it also carries weight in the eyes of the Panel that Respondent made use of a WhoIs Privacy Shield, apparently in an attempt to conceal its true identity. This fact at least throws a light on Respondent's behavior which supports the conclusion of a bad faith registration and use of the disputed domain names.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by 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 disputed domain names <chatrubate.com> and <chatubate.com> be transferred to Complainant.
Stephanie G. Hartung
Date: February 2, 2018
1 It is evident from the case file that Private Registration, Account Privacy of Tampa, Florida, United States is a privacy protection service and that Suren Akopian of Yerevan, Armenia is the underlying registrant of the disputed domain names. Therefore, unless otherwise indicated, the term "Respondent" is used by the Panel in the case at hand to refer to the latter underlying registrant only.