WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Multi Media, LLC v. One and One Private Registration, 1&1 Internet, Inc. / Papadad Manaloto
Case No. D2018-0952
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 One and One Private Registration, 1&1 Internet, Inc. of Chesterbrook, Pennsylvania, United States / Papadad Manaloto of Binangonan, Riz, Philippines.
2. The Domain Name and Registrar
The disputed domain name <chàturbate.com> (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2018. On April 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 3, 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 May 7, 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 May 8, 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 May 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 6, 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 states that it “owns and operates the website located at the domain <chaturbate.com> and has used its domain for several years in connection with the provision of streaming audio, visual, and audiovisual material and other entertainment services to its users via the World Wide Web.” Complaint further states that its website, “[a]ccording to Alexa Internet… is the 114th most popular website on the World Wide Web.” A printout of the home page of Complainant’s website included as an annex to the Complaint contains the tagline, “the art of masturbating while chatting online.”
Complainant states, and provides evidence to support, that it owns a federal trademark registration, United States Reg. No. 4,288,943, for the mark CHATURBATE for use in connection with, inter alia, “[s]treaming of audio, visual and audiovisual material via a global computer network” (first used in commerce on June 30, 2011; filed June 28, 2012; registered February 12, 2013) (the “CHATURBATE Trademark”).
The Disputed Domain Name was registered on January 28, 2018. According to Complainant, the Disputed Domain Name “resolves to an inactive page” and is being used “to send fraudulent email communications from “[…]@chàturbate.com” pretending to be a CHATURBATE customer support representative in an apparent phishing scheme.”
Complainant sent a demand letter to Respondent on April 11, 2018, regarding the Disputed Domain Name, but, according to Complainant never received a response.
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the CHATURBATE Trademark because, inter alia, the domain name “is legally identical to Complainant’s CHATURBATE mark, adding only the diacritic mark “à” to the CHATURBATE mark”; “diacritics and punctuation marks typically do not significantly affect the appearance of words”; and “the addition of the diacritic mark “à” does nothing to mitigate the likelihood of confusion.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “no evidence indicates that Respondent is known by the text of the [Disputed] Domain Name, and the Panel should presume that Respondent is not known by the text of the [Disputed] Domain [Name]”; “[t]he [Disputed] Domain [Name] resolves to an inactive page, which fails to demonstrate any non-commerical [sic] or fair use rights”; Respondent “is engaged in a fraudulent phishing scheme, intended to damage the Complainant’s goodwill and interfere with its relationships with customers”; and “Respondent is impersonating Complainant’s customer service representatives, in an attempt to obtain customer information.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent clearly hoped to create a likelihood of confusion between Complainant’s legitimate customer support and the fraudulent customer support communications offered by Respondent, despite the fact that the [Disputed] Domain Name is not currently in use”; “[g]iven the absence of any relationship between the Respondent and the Complainant, it is difficult to imagine what legitimate use the Respondent could make of the disputed domain name”; “Respondent has failed to justify its use of Complainant’s CHATURBATE mark in response to Complainant’s cease and desist letter”; and “Respondent is using an email account affiliated with the Infringing Domain Name to impersonate Complainant’s customer service representatives.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the CHATURBATE Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CHATURBATE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “chàturbate”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Here, the Disputed Domain Name is a so-called “internationalized” domain name. As described by ICANN,1 “Internationalized Domain Names (IDNs) enable people around the world to use domain names in local languages and scripts. IDNs are formed using characters from different scripts, such as Arabic, Chinese, Cyrillic or Devanagari. These are encoded by the Unicode standard and used as allowed by relevant IDN protocols.”
Numerous previous panels under the Policy have evaluated IDNs and often found them confusingly similar to the relevant trademarks. See, e.g., Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2211 (finding the domain name <ıĸea.com> confusingly similar to the trademark IKEA because the domain name “is naturally read as containing the entirety of the Complainant’s well-known and registered trademark” and “the use of Punycode to create a domain name indistinguishable from a well-known trademark manifestly does not prevent a finding of identity or confusing similarity between the two”). See also WIPO Overview 3.0, section 1.9, which states that a domain name containing an “intentional misspelling of a trademark” is confusingly similar to the mark, including when the typos consist of “different letters that appear similar in different fonts” or “the use of non-Latin internationalized or accented characters.”
Here, it is obvious that differences between the Disputed Domain Name and the CHATURBATE Trademark are similarly indistinguishable, that is, that the Disputed Domain Name is visually nearly identical to the CHATURBATE Trademark because the only obvious difference is that the Disputed Domain Name contains a letter “a” with an accent symbol instead of an unembellished letter “a”.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “no evidence indicates that Respondent is known by the text of the [Disputed] Domain Name, and the Panel should presume that Respondent is not known by the text of the [Disputed] Domain [Name]”; “[t]he [Disputed] Domain [Name] resolves to an inactive page, which fails to demonstrate any non-commerical [sic] or fair use rights”; Respondent “is engaged in a fraudulent phishing scheme, intended to damage the Complainant’s goodwill and interfere with its relationships with customers”; and “Respondent is impersonating Complainant’s customer service representatives, in an attempt to obtain customer information.”
WIPO Overview 3.0, section 2.1, states: “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.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
This section is derived, of course, largely from the landmark decision on passive holding in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As applied to the instant proceeding, the Panel finds that the CHATURBATE Trademark is highly distinctive; that Respondent has failed to submit a response; that Respondent masked its identity by using a privacy or proxy service; and that it is implausible there would be any good faith use to which the Disputed Domain Name may be put.
Furthermore, although the Disputed Domain Name may not be associated with an active website, Complainant has stated, and provided evidence in support thereof (which has not been contradicted by Respondent) that Respondent has used the Disputed Domain Name in connection with a phishing scheme targeting Complainant’s customers. As stated in section 3.1.4 of WIPO Overview 3.0, use of a domain name for phishing purposes “is manifestly considered evidence of bad faith.”
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <chàturbate.com> be transferred to the Complainant.
Douglas M. Isenberg
Date: June 18, 2018
1 https://www.icann.org/resources/pages/idn-2012-02-25-en (visited June 18, 2018)