WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Márton Fülöp (for Docler IP S.à.r.l.), Mr. Karoly Papp (for DuoDecad IT Services Luxembourg S.a r.l.), Mr. Andrejkovics Zoltán (for WebMindLicenses Korlátolt Felelősségű Társaság) v. Live Jasmin, Private Person
Case No. D2018-0880
1. The Parties
Complainants are Mr. Márton Fülöp (for Docler IP S.à.r.l.), Mr. Karoly Papp (for DuoDecad IT Services Luxembourg S.a r.l.) of Luxembourg, Luxembourg, and Mr. Andrejkovics Zoltán (for WebMindLicenses Korlátolt Felelősségű Társaság) of Budapest, Hungary (cumulatively referred to as “Complainants”), represented by Docler Holding S.à r.l., Luxembourg.
Respondent is Live Jasmin, Private Person of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <jasmin.pro> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2018. On April 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. In response to a notification dated April 23, 2018 by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 25, 2018.
The Center verified that the Complaint together with the amendment to 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 April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 31, 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
Complainants operate the websites at the domain names <jasmin.com> and <livejasmin.com>.1 These platforms offer Complainants’ clients the possibility to receive services like private chats and shows, notably adult entertainment shows, from models – mostly cam girls, in exchange for a price. Complainants state that their web platform on “www.livejasmin.com” has over 8 million visitors each day, while the “www.jasmin.com” platform has over eighty thousand visitors per day. Together, both platforms have over 28 million active members.
Complainant WebMindLicenses Korlátolt Felelősségű Társaság owns United States Trademark LIVEJASMIN, Reg. No. 3129772, Reg. Date August 15, 2006, filed on September 12, 2005, covering “Electronic transmission of adult oriented entertainment in the nature of streaming audio, streaming video, and streaming media transmitted via a global communications network” in International Class 38. First use / First Use in Commerce in August 2003. This Complainant also owns Canadian Trademark LIVEJASMIN, Reg. No. TMA680639, registered on January 30, 2007, and filed on November 7, 2005, covering “Electronic transmission of adult oriented entertainment in the nature of streaming audio, streaming video, and streaming media transmitted via a global communications network.” Used in Canada since July 1, 2004.
Complainant Docler IP S.à r.l. owns Benelux Trademark LIVEJASMIN, Reg. No. 0948833, registered on December 20, 2013, and filed on December 18, 2013, covering “Data search in computer ﬁles for others; data processing for business purposes; rental of advertising space; preparing advertisements, namely, publicity columns preparation; systemization of information into computer databases; compilation of information into computer databases; on-line advertising on a computer network in International Class 35, “Electronic transmission of adult oriented entertainment in the nature of streaming audio, streaming video, and streaming media transmitted via a global communications network; electronic mail; providing user access to a global network; information about telecommunication; communications by computer terminals; cable television broadcasting, communications by fiber optic networks; providing telecommunication connections to a global computer network; paging services via radio; telephone or other means of electronic communication; computer aided transmission of messages and images” in International Class 38, and “Conversion of data or documents from physical to electronic media, not physical conversion; hosting computer websites; data conversion of computer programs and data, not physical conversion; installation of computer software; duplication of computer programs; computer rental; recovery of computer data; computer system design; computer systems analysis; consultancy in the field of computer hardware; computer software design; updating of computer software; rental of computer software; computer programming; maintenance of computer software; creating and maintaining web sites for others” in International Class 42. This Complainant also owns Community Trademarks JASMIN, Reg. No. 013809504, Reg. Date July 27, 2015, and Reg. No. No 013809587, Reg. Date July 31, 2015 covering “Electronic transmission of adult oriented entertainment in the nature of streaming audio, streaming video, and streaming media transmitted via a global communications network; providing users access to a global network related to adult entertainment; communications by computer terminals related to adult entertainment; cable television broadcasting, communications by fiber optic networks related to adult entertainment; providing telecommunication connections to a global computer network related to adult entertainment; paging services via radio, telephone or other means of electronic communication related to adult entertainment; computer aided transmission of messages and images related to adult entertainment”, in International Class 38, and “Entertainment services, namely, providing a website featuring adult entertainment; entertainment services, namely, providing a website featuring photographs, videos, related film clips, and other multimedia materials in the field of adult entertainment”, in International Class 41.
The disputed domain name was registered on November 11, 2013.
Presently, the disputed domain name does not resolve to any active website. Complainants submitted evidence showing that the disputed domain name previously resolved to a website with adult content, i.e. offering competing services.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is identical to Complainants’ trademark JASMlN, except that the disputed domain name adds the generic Top-Level Domain (“gTLD”) “.pro”. In addition, the disputed domain name fully incorporates the distinctive and dominant element “jasmin” of the inherently distinctive trademark LIVEJASMIN, as it consists of terms unrelated to the services it covers. There is no doubt that the trademarks JASMlN and LlVEJASMIN, and the disputed domain name will be considered by Internet users as owned by the same company or associated companies. Internet users who ﬁnd the disputed domain name on search engines are likely to be misled into thinking that Complainants are associated with the disputed domain name. The website at the disputed domain name the graphical chart of the Complainants’ famous websites “www.jasmin.com” and “www.livejasmin.com” (i.e., a look at the table in showing a comparison between the Respondent’s website “www.jasmin.pro” and Complainants’ website “www.jasmin.com” confirms this reproduction and the confusion. The website “www.jasmin.pro” displays on its homepage the famous logo of Complainants (the European Union word & design trademark JASMIN). This red and white logo is well recognizable by Internet users as belonging to Complainants.
Respondent has no rights or legitimate interest in respect of the disputed domain name. Complainants gave Respondent no authorization to use the name “jasmin” or to include their trademark JASMIN, or the distinctive element “jasmin” of their trademark LIVEJASMIN, in any domain name registration.
For some time, “A[…] V[…]”, a person that Complainants had reasons to believe is Respondent, had a relationship with Complainants as he subscribed to the “www.awempire.com” platform. “A[…] V[…]” opened an AWEmpire account, with the purpose of promoting Complainants’ business relating to the Web Platforms. However, Complainants have not authorized “A[…] V[…]” to use the name “jasmin” in a domain name. Pursuant to Complainants’“www.awempire.com” terms of service, duly accepted by “A[…] V[…]”, any promotion of Complainants’ brands and business with squatting domain names is forbidden. Complainants sent “A[…] V[…]” a letter warning that any squatting is a forbidden practice by the “www.awempire.com” terms of service, which practice, if not ended, may result in immediate termination of the respective AWEmpire account (what ﬁnally occurred). Moreover, Complainants noticed that Respondent not only registered the squatting domain name <jasmin.pro>, but on his website, “www.jasmin.pro” also promotes the websites of Complainants’ competitor “www.chaturbate.com”. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. Complainants sent several cease and desist letters at an email address at the disputed domain name requesting “A[…] V[…]” to refrain from using the trademarks LIVEJASMIN and JASMlN, to delete any reference to these trademarks on the website “www.jasmin.pro”; to refrain from using Complainants’ copyrights and graphical charter of the websites “www.jasmin.com” and “www.livejasmin.com”; to stop using these domain names for redirection towards the Chaturbate’s website, which is a competitor in the adult entertainment field, and to immediately transfer the disputed domain name to Complainants. There was no reply to Complainants’ cease and desist letters and Complainants immediately terminated “A[…] V[…]”’s account on www.awemgire.com. Presently, Complainants have no relationship with “A[…] V[…]” whatsoever.
There is no evidence that Respondent is commonly known by the disputed domain name or any similar name, or that the disputed domain name derives from any name by which the Respondent appears to be known. According to public records, Respondent does not have any trademarks, service marks or any other trading name or product with any likeness to the terms “jasmin” or “livejasmin”. Respondent’s name on WhoIs databases is “Live Jasmin”, while his name in reality is “A[…] V[…]”. Respondent is making an illegitimate use of the disputed domain name for commercial gain. By choosing “Live Jasmin” as registrant`s name, Respondent is usurping Complainants` trademarks and misleading their customers.
Respondent has intentionally sought to profit from the success of the business of Complainants and from the clicks, streams or visitors who seek Complainants’ websites. Respondent currently is profiting from an affiliated program of Chaturbate (Complainants’ biggest competitor} through a variety of links located on the “wvwv.jasmin.pro” website. These links compete with or capitalize on the reputation and goodwill of Complainants’ trademarks, or otherwise mislead lntemet users. The Chaturbate’s affiliated program has a “pay-per-click” structure, in which Respondent makes revenues based on the number of times that visitors click on the links disclosed on the website at the disputed domain name.
Several facts show that Respondent was aware of the JASMlN and LIVEJASMlN trademarks and of the famous websites of the Complainants at the time of registration. First, subscribing to the service of “www.aweempire.com”. Second, registering a domain name with the registrants name “Live Jasmin”, which is quasi identical to Complainants LlVEJASMIN trademarks. Third, the notoriety of Complainants’ trademarks in the adult entertainment sphere (See Docler IP S.à.r.l., DuoDecad IT Services Luxembourg S.à.r.l., WebMindLicenses Korlàtolt Felelösségu Társaság v. Domain Admin / Zoran Savic, WIPO Case No. D2015-1186: “Complainants have also demonstrated to the satisfaction of the Panel that the name and mark LIVEJASIWN is well-known in the adult entertainment sphere and distinctive of the Complainants’ services”). The fact that Complainants receive on their website huge traffic each day is, of course, very attractive to try to catch the traffic directed to JASMIN and LIVEJASMIN, to obtain a very signiﬁcant amount of money each month through Internet users’ clicks.
The disputed domain name was registered and is being used in bad faith. The disputed domain name wholly incorporates Complainants’ well-known trademarks JASMIN. By using the disputed domain name, Respondent is intentionally attempting to attract for commercial gain Internet users to its URL. Respondent’s purpose clearly is to create a likelihood of confusion with the trademarks of the Complainants and make the Internet’s users believe that the website at the disputed domain name is the official website of Complainants. Complainants’ trademarks are well-known in the adult industry. Complainants have been developing and operating the Web Platforms, as well as related intellectual property rights since 2001, at least. To develop the software on which the Web Platforms are based and gain notoriety and fame, as well as a recognized image in the adult industry, the Complainants have been doing and still do substantial, intellectual, creative, as well as financial efforts that justify copyright protection. The platform of the Complainants is available in 19 languages from everywhere in the world. The Web Platforms are well-known by the people seeking the services of adult entertainment. The business of the Complainants has experienced a strong growth in terms of notoriety and profit since the creation of the Web Platforms. Respondent is earning money every time an Internet user clicks on the links displayed on his website and is redirected to the website of Complainants’ competitor.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
A. Preliminary Issue: Consolidation of the Three Complainants
The three Complainants assert they have a common grievance against Respondent and therefore, a common legal interest in the relevant intellectual property rights allegedly affected by Respondent in the present case, and therefore request consolidation. The Panel, sharing the opinion of a prior panel that accepted a similar request for consolidation from the same Complainants, grants their request for consolidation. See Docler IP S.à r.l., DuoDecad IT Services Luxembourg S.à r.l., WebMindLicenses Korlátolt Felelösségü Társaság v. Peter Williams, WIPO Case No. D2017-0953 (“The three Complainants filed the Complaint against the Respondent asserting to have a common interest as the Respondent’s registration and use of the disputed domain name affects all of them. In exercising its powers under paragraph 10 of the Rules, the Panel accepts the Complainants’ request for consolidation since i) they have a specific common grievance against the Respondent and the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion, and ii) it would be equitable and procedurally efficient to permit the consolidation. See paragraph 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).”)
B. Identical or Confusingly Similar
By submitting printouts of the corresponding official trademark databases, Complainants have shown to the satisfaction of the Panel that they own trademark registrations for JASMIN and LIVEJASMIN. See section 4 above.
The Panel notes that the disputed domain name consists of the JASMIN mark in its entirety, with the sole addition of the technically necessary gTLD “.pro”. Accordingly, the Panel finds that the disputed domain name is identical to Complainants’ trademark JASMIN. Because the disputed domain name lacks the dictionary term “live”, the Panel also finds that the disputed domain name is confusingly similar to Complainants`trademark LIVEJASMIN, See Duodecad IT Services Luxembourg S.à.r.l. v. Dragos Neagu, WIPO Case No. D2016-1051, finding that the domain name <jasmin.cc> is confusingly similar to the LIVEJASMIN mark (“The disputed domain name reproduces the element “Jasmin”, being the distinctive and dominant element of the Complainant’s LIVEJASMIN trademark, being confusingly similar therewith. For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.”)
C. Rights or Legitimate Interests
Complainants contend that Respondent had no authorization from Complainants to use the name “jasmin” or to include the term “jasmin” in any domain name registration. For some time Respondent promoted Complainants’ business relating to the Web Platforms operated by Complainants. However, Respondent later registered the disputed domain name and started to promote via redirection the websites of Complainants’ competitor “www.chaturbate.com”, also active in the adult entertainment industry. Respondent failed to reply to Complainants’ cease and desist letter and Complainant`s terminated Respondent’s account as a promoter.
In the opinion of the Panel, Complainants’ account of these facts is supported by the available evidence, in particular the printouts from the website at the disputed domain name showing Respondent clearly has slavishly imitated the look and feel of Complainants’ platforms on their official websites “www.jasmin.com” and “www.livejasmin.com”. In the Panel`s view, this use of the disputed domain name without any authorization from Complainants, is not connected with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), nor is a legitimate noncommercial or fair use without intent to misleadingly divert consumers under Policy paragraph 4(c)(iii). Whether or not Respondent’s real name is – as contended by Complainants – “A[…] V[…]”, according to the relevant WhoIs data the name of the registrant of the disputed domain name is “Live Jasmin”. Since there is no evidence or suggestion on the casefile allowing to conclude that Respondent is known – commonly or otherwise – by such name, Policy paragraph 4(c)(ii) does not apply.
The Panel believes that Complainants’ contentions and evidence are sufficient to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent failed to provide the Panel with any element or explanation suggesting that it might have at least some right or legitimate interest. Accordingly, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1 (“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”)
D. Registered and Used in Bad Faith
The Panel notes that Complainants’ LIVEJASMIN trademarks were registered several years before the disputed domain name was registered in November 2013: Complainants’ United States trademark LIVEJASMIN was registered in 2006 (with a stated date of first use in August 2003) and Canadian trademark LIVEJASMIN was registered in 2007 (with a stated date of first use in July 2004).
Complainants also have shown that their web platforms at the <jasmin.com> and <livejasmin.com> domain names are visited by a large public, and that their trademarks JASMIN and LIVEJASMIN enjoy considerable reputation in the adult entertainment field. Moreover, the fact that Respondent chose as registrant’s name “Live Jasmin” reveals that he was quite aware of Complainants’ marks JASMIN and LIVEJASMIN, as well as of Complainants’ services, and targeted them at the time of registering the disputed domain name. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.
Further, Complainants have shown that Respondent used the disputed domain name on a website imitating the look and feel of Complainant’s platforms on the websites “www.jasmin.com” and “www.livejasmin.com”, without any authorization from Complainants, to attract Internet users, presumably searching for Complainants’ authentic services. In other words, by using the disputed domain name as shown, Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location. This is a circumstance of registration and use of the disputed domain name in bad faith, according to Policy paragraph 4(b)(iv).
Previously, Complainants had sent to an email address at the disputed domain name a cease-and-desist letter and two reminders to a “A[…] V[…]” requesting him to refrain from using the trademarks LIVEJASMIN and JASMIN in any ways, to delete any reference to these trademarks on the website “www.jasmin.pro” to refrain from using Complainants’ copyrights / graphical charter of their websites, to stop using Complainants trademarks in the domain names for redirecting purposes, and to immediately transfer the litigious domain names to Complainants. The Panel notes that these emails – presumably received at the email address at the disputed domain name - were left unanswered. In addition, Respondent failed to respond to the Complaint and to provide any element whatsoever in this proceeding. In addition, presently the disputed domain name does not resolve to any active website. In the view of the Panel, these facts together suggest that Respondent does not contemplate any use of the disputed domain name other than creating confusion with Complainants’ marks and services, presumably for profit. This is additional evidence that Respondent is acting in bad faith.
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 <jasmin.pro> be transferred to Complainant Docler IP S.à.r.l.
Date: June 12, 2018
1 The entry for “LiveJasmin” on the Wikipedia (visited on June 11, 2018) begins by stating, “LiveJasmin is an adult website providing live webcam performances by camgirls, typically featuring nudity and sexual activity ranging from striptease and dirty talk to masturbation with sex toys. Models include individuals and couples. The website was founded in 2001 by György Gattyán, a Hungarian e-commerce entrepreneur. It is one of the largest adult camming websites competing with largest American camming site Chaturbate and largest European camming site BongaCams.”