WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MG Licensing Europe S.A.R.L. v. Privacy.co.com, Inc Privacy ID# 948463, Privacy.co.com, Inc Privacy ID# 965346, Privacy.co.com, Inc Privacy ID# 965300, Privacy.co.com, Inc Privacy ID# 965302, Privacy.co.com, Inc Privacy ID# 965308
Case No. D2018-1468
1. The Parties
The Complainant is MG Licensing Europe S.A.R.L. of Luxembourg, Luxembourg, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Privacy.co.com, Inc Privacy ID# 948463, Privacy.co.com, Inc Privacy ID# 965346, Privacy.co.com, Inc Privacy ID# 965300, Privacy.co.com, Inc Privacy ID# 965302, Privacy.co.com, Inc Privacy ID# 965308 of Cheyenne, Wyoming, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <mdirtyhobby.com>, <mydirrtyhobby.com>, <mydirthobby.com>, <mydirtyhoby.com>, and <mydrityhobby.com> (the “Domain Names”) are registered with Sea Wasp, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 2, 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 owns the MY DIRTY HOBBY brand. The brand was initially launched in 2006, and according to the evidence provided by the Complainant the website was active since November 16, 2006, at least. It offers adult video and social network services. The main website, “www.mydirtyhobby.com”, offers an extensive catalogue of content produced and uploaded daily by the community members themselves. Up to 4 million pictures, more than 390,000 videos and 5000 girls are online in live webcams daily. The Complainant has over 5 million registered members as of January 2017. The Complainant’s website features services free of charge or at a fee, such as the chat and cam services. The Complainant also offers users the opportunity to join their community using the “Become an Amateur” portal.
The Complainant holds several registered trademarks for MY DIRTY HOBBY, such as Swiss trademark registration number 646301, registered July 17, 2013, International trademark registration number 1207304, registered August 22, 2013, European Union trademark registration number 005686787, registered December 3, 2007, and Canadian trademark registration number TMA974923, registered April 7, 2017.
In addition to the trademarks, the Complainant has registered several domain names, such as <mydirtyhobby.de>, <mydirtyhobbie.com>, and <dirtyhobbymobile.com>. The Complainant further documents that it as early as 2006 had an active web page under “www.mydirtyhobby.com”. The Complainant is also present on social media websites, such as Twitter and Instagram. It has received press coverage and awards.
The Registrar has not indicated the date on which the current Registrant registered (or acquired the registration of) the Domain Names, but stated the registration dates of the Domain Names to be between December 7, 2006 and November 27, 2007, and that the registrations were all updated on April 24, 2018. At the time of filing the Complaint, and at the time of drafting this decision, the Domain Names resolved to a competing webpage with pornographic content.
5. Parties’ Contentions
The Complainant provides trademark registrations and submits that its trademark is well-known in the adult entertainment industry. The Complainant argues that the Domain Names are misspellings of the Complainant’s trademark and confusingly similar to the Complainant’s trademark. The Domain Name <mydrityhobby.com> differs slightly with the “r” and “i” being interchanged, <mdirtyhobby.com> omits the character “y”, <mydirrtyhobby.com> consists of an additional “r”, <mydirthobby.com> omits the “y” and lastly, <mydirtyhoby.com> omits the character “b”. The Complainant requests the Panel to disregard the “.com” extension as it is a standard registration requirement.
The Complainant argues that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s trademark. To the Complainant’s knowledge, the Respondent has not registered the Domain Names as a trademark or acquired common law rights. The Respondent has no prior rights or legitimate interests in the Domain Name. The Respondent has not been commonly known by the Domain Name. The Domain Names redirect to an adult website known as “www.cams4free.com”. This website is directly competing with the Complainant’s services. Such use cannot be considered as a bona fide offering of services, as the Respondent is using typo variations of the MY DIRTYY HOBBY mark to cause customer confusion.
As to bad faith, the Complainant argues that the Respondent acquired the Disputed Domain Names on March 8, 2018. On that day each of the Domain Names changed their WHOIS details to Privacy.co.com and using the Registrar SeaWasp, LLC. This change has occurred on the same day for all Domain Names. Moreover, the Domain Names are hosted on the same servers, and share the same IP address, as well as the same Internet Service Provider. The Domain Names are all misspellings of the Complainant’s name, and the Domain Names resolve to a competing adult entertainment web page. Consequently, the Respondent must have been aware of the Complainant when it registered the Domain Names. The Respondent has registered and is using the Domain Names to profit from unsuspecting Internet users, who are intending to find the Complainant’s official website and instead are redirected to the Respondent’s competing services. It is likely that the Respondent is benefiting financially from this deception. The Respondent is a competitor of the Complainant in terms of offering adult content. The Domain Names take advantage of the Complainant’s goodwill and valuable reputation. Finally, the Complainant asserts that the Respondent has engaged in an abusive pattern of conduct. The Respondent has registered five domain names containing the Complainant’s trademark. UDRP Panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.2).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark MY DIRTY HOBBY.
The test for confusing similarity involves the comparison between the trademark and the Domain Names. In this case, the Domain Names are misspellings of the Complainant’s trademark and confusingly similar to the Complainant’s trademark. The misspellings are minor and do not provide sufficient distinction from the Complainant’s mark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (gTLD) “.com”, see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register domain names containing its trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired common law rights. The Domain Names redirect to an adult website competing with the Complainant’s services. This use cannot be considered as a bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent registered the Domain Names between December 7, 2006 and November 27, 2007. Taking into account that Complainant launched its service in 2006 before the registration of the Domain Names, that all the Domain Names consist of misspellings of the Complainant’s trademark and the fact that all the Domain Names resolve to a competing adult entertainment web page, the Panel considers that it is more likely than not that the Respondent knew of the Complainant and its mark when the Respondent registered the Domain Names. The misspellings of the Domain Names mislead consumers. The Respondent has registered and is using the Domain Names to profit from unsuspecting Internet users, who are intending to find the Complainant’s website and instead are redirected to the Respondent’s competing services. It is likely that the Respondent benefits financially. The Domain Names seem to be used to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s trademark.
The above finding of bad faith is supported by the fact that the Respondent has failed to respond to the Complainant’s cease and desist letter and the Complaint.
For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Names <mdirtyhobby.com>, <mydirrtyhobby.com>, <mydirthobby.com>, <mydirtyhoby.com>, and <mydrityhobby.com> be transferred to the Complainant.
Date: August 7, 2018