ADMINISTRATIVE PANEL DECISION
Multi Media, LLC v. Fedor Nikolov
Case No. D2018-0059
1. The Parties
The Complainant is Multi Media, LLC of Longwood, Florida, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Fedor Nikolov of Almere, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <chaturbatemales.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2018. On January 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2018, 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 the Complainant on January 17, 2018 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 January 18, 2018.
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 January 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 27, 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
The Complainant is the owner of a website that provides streaming audiovisual entertainment services and interconnection facilities to adult users. The Complainant’s business is conducted under the trademark CHATURBATE, which is registered as follows:
CHATURBATE, word mark, United States Patent and Trademark Office (“USPTO”), Principal Register, filed June 28, 2012, registered February 12, 2013, registration number 4288943, classes 38, 42;
CHATURBATE, stylised, USPTO, Principal Register, filed November 3, 2015, registered June 28, 2016, registration number 4988208, classes 38, 42.
The Respondent has not provided any background information about itself. However the disputed domain name, which was registered on December 19, 2014, resolves to a website that facilitates the exchange of adult images and videos.
5. Parties’ Contentions
The Complainant contends that it has registered trademark rights in the trademark CHATURBATE. Copies of online registration documents in respect of the Complainant’s trademarks are produced together with a trademark assignment document recording the transfer of trademark number 4288943 from the Complainant’s previous name to its present name on December 31, 2013.
The Complainant says that prior to the registration of its trademark it accrued common law rights in the trademark through commercial usage at the website “www.chaturbate.com”, for which the domain name was registered on February 26, 2011 and which went live on or about June 30, 2011. That website was recently ranked by Alexa as the 128th most popular website.
The Complainant says the disputed domain name is identical or confusingly similar to its trademark. The generic Top-Level Domain (“gTLD”) “.com” is of no consequence and the generic or descriptive word “males” that follows the entirety of the Complainant’s trademark does not eliminate the confusing similarity. Furthermore the Complainant’s own website is also registered under the “.com” gTLD.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent would be unable to establish that it does. The Respondent’s use of the disputed domain name is not legitimate because it directs visitors to a website offering services similar to those the Complainant offers under its own trademark. The use of the disputed domain name is clearly commercial. The Respondent is not believed to be commonly known as “Chaturbate” or by the disputed domain name, which is not in legitimate noncommercial or fair use. The Complainant’s trademark is an invented word.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant says the registration of the disputed domain name in December 2014 was in bad faith because the Complainant had acquired registered rights in its trademark in June 2012, and had been using the trademark since June 2011. The Respondent must have known about the Complainant when it registered the disputed domain name. The Complainant asserts that the Respondent should be deemed to have had at least constructive knowledge of the Complainant’s trademark when registering the disputed domain name and is unlikely to have devised the disputed domain name <chaturbatemales.com> independently.
The Complainant says that by using the disputed domain name the Respondent has intended to attract Internet users to its website for its own commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Respondent’s website appears to be offering some video material pirated from the Complainant’s website.
The Complainant sent a cease, desist and transfer letter by email via the Respondent’s privacy service (see below) on November 29, 2017. The Complainant says there has been no reply and that this is further evidence of the Respondent’s bad faith.
The Complainant has submitted a number of previous decisions under the Policy that it considers to support its position, including decisions transferring the domain names <chaturbate.online>, <chaturbate-chat.com> and <chaturbate.video> to the Complainant.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
The Complaint initially cited the privacy service WhoisGuard Protected / WhoisGuard, Inc., as the Respondent. The Registrar has disclosed the contact details on record for the underlying registrant of the disputed domain name. The Amended Complaint cites solely the underlying registrant as the Respondent.
The Notification of Complaint and Commencement of Administrative Proceedings was sent to the email address and the Written Notice of the proceedings was sent to the physical address provided by the Respondent. Courier records show that the Written Notice was not successfully delivered because the address of record was insufficient. The attempt to contact the Respondent by email failed. A copy of the Written Notice sent to the privacy service by courier was not successfully delivered and the attempt to contact the privacy service by email failed.
As pointed out by the panelist in the decision in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, the Center “goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent’s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance”.
The Panel is satisfied in this case that the Center has fulfilled its obligations to attempt to contact the Respondent in order to notify the Complaint in accordance with paragraph 2 of the Rules.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
B. Identical or Confusingly Similar
The Panel is satisfied by the evidence produced that the Complainant is the holder of the registered trademark CHATURBATE. Whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark requires a direct comparison. The disputed domain name <chaturbatemales.com> may be read as the Complainant’s trademark CHATURBATE followed by the generic word “males”; the gTLD “.com” may generally be disregarded in the determination of confusing similarity.
The Panel finds the disputed domain name to comprise predominantly the Complainant’s trademark, and finds the word “males” not to be distinguishing. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you 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 (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 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”.
In anticipation of any reply by the Respondent under paragraph 4(c) of the Policy, the Complainant has submitted that the Respondent cannot have rights or legitimate interests in the disputed domain name embodying the Complainant’s trademark because it is in use to offer services similar to the Complainant’s own; and that the Respondent is not believed to be commonly known by the disputed domain name, which is not in noncommercial or fair use. The Respondent has not replied to the contrary and the Panel finds for the Complainant under paragraph 4(a)(ii)of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
According to the screen capture evidence produced by the Complainant, the disputed domain name resolves to a website featuring numerous sources of personal videos and facilitates contact with their producers. Each video source had an identification string comprising a producer pseudonym, a date, a time, and then the words “male Chaturbate”. The Complainant’s trademark is registered for, among other things, “streaming of ... audiovisual material via a global computer network” and “providing a website that gives computer users the ability to up-load, exchange and share photos, videos ....”
The Panel finds on the evidence that the disputed domain name exhibits the Complainant’s trademark and is in use for a website that liberally features the Complainant’s trademark in areas of commerce for which the Complainant’s trademark is registered. The Panel further finds on the balance of probabilities that visitors or intending visitors to the website to which the disputed domain name resolves are likely to believe it to be endorsed by, related to, or to be an operation of, the Complainant, and finds it implausible that the Respondent’s operations are conducted other than for commercial gain. This finding is compounded by the addition of the word “males” to the Complainant’s trademark in the disputed domain name, as the word “males”, in the context of the Complainant’s business, is likely to exacerbate confusing similarity by implying some division or branch of the Complainant’s business. Accordingly, on the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been used in bad faith under paragraph 4(b)(iv) of the Policy, and to have been registered for the purpose for which it has been used, constituting registration and use in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant’s cease and desist letter sent to the Respondent on November 29, 2017 was evidently not replied to. Commonly UDRP panels may find a failure to reply to a cease and desist letter to be an aggravating factor in bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). In this instance, however, the letter was sent by email via the Respondent’s privacy service and it is not known whether or not it was forwarded to the Respondent.
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 <chaturbatemales.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 5, 2018