WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PB Web Media B.V. v. Litterate Ario, Personal
Case No. D2019-0223
1. The Parties
Complainant is PB Web Media B.V. of Longwood, Florida, United States of America (“United States”), represented by Walters Law Group, United States.
Respondent is Litterate Ario, Personal, of Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <lupoporno.mobi> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 31, 2019 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 1, 2019.
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 Respondent of the Complaint, and the proceedings commenced on February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The hosting provider of the Domain Name sent informal email communications on January 31, 2019, and February 1, 2019; however Respondent did not submit any formal response. Accordingly, the Center notified the Parties on February 25, 2019, that it would proceed to the panel appointment.
The Center appointed Clive L. Elliott QC. as the sole panelist in this matter on March 5, 2019. 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
According to the publicly available WhoIs information, the Domain Name was registered on March 16, 2016. At the time of the filing of the Complaint, the Domain Name resolved to an adult entertainment site offering identical services to those of Complainant.
Complainant owns and operates a website, located at the domain <lupoporno.com>, which promotes the services of others by providing a web page featuring links to the websites of others; and providing a search engine for searching of photographs, audio, videos, and multimedia materials in the field of adult entertainment services. The domain name <lupoporno.com> was registered on April 7, 2011.
Complainant is also the registered owner of the trade mark LUPOPORNO, reg. No. 0989779, since January 29, 2016 (“Complainant’s Mark”).
5. Parties’ Contentions
Complainant states that it owns and operates the website <lupoporno.com> in the adult entertainment area and has done so since approximately 2011.
Complainant contends that it has used the distinctive Complainant’s Mark extensively, continuously, and deliberately to designate its adult entertainment website and its domain name has averaged over 150,000 visitors daily.
Complainant goes on to state that whilst it registered the <lupoporno.com> domain name on April 7, 2011, and that the website went live on or about July 8, 2011. When the website launched, it looked largely as it does today – containing Complainant’s logo and the ability for users to utilize advertising and directory services, providing a web page featuring links to the websites of others; and providing a search engine for searching a range of adult entertainment services.
Complainant asserts that the Domain Name is identical or confusingly similar to Complainant’s Mark in that it contains Complainant’s Mark in its entirety with the addition of the generic top-level domain (“gTLD”) “.mobi.”.
Complainant further asserts that Respondent is operating a website that directs Internet users to a website offering the same or similar goods and services to Complainant’s website, which exacerbates the confusion based on similarity.
Complainant states that it sent a cease and desist letter by email to Respondent on December 7, 2018, requesting Respondent to stop using the Domain Name and to transfer it to Complainant, to which Respondent did not respond.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name as it is operating a counterfeit site that offers the same services and prominently displays adult entertainment videos, similar to Complainant. On information and belief, Respondent is not commonly known as “LUPOPORNO” or any similar terms.
Complainant points out that Complainant’s Mark is a novel, invented term and not a word in any language. There is no obvious connection between LUPOPORNO and its advertising and directory services. Complainant argues that Respondent is intentionally profiting from the goodwill Complainant has established in Complainant’s Mark with an ability to damage that goodwill.
Complainant submits that when Internet users arrive at Respondent’s site, they may believe that they have reached Complainant’s LUPOPORNO site or simply remain on Respondent’s site since it offers services that are identical to Complainant’s site. Complainant therefore submits that Respondent is using the Domain Name to poach Internet users from Complainant and to profit from the goodwill of Complainant’s Mark and Complainant’s website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant’s Mark has been used and registered and that Complainant has marketed and sold a range of adult entertainment services under and by reference to Complainant’s Mark.
Complainant contends that the Domain Name reproduces Complainant’s Mark in its entirety, save for the addition of the gTLD “.mobi”. The addition of the “mobi” gTLD quite obviously does nothing to detract from the distinctive character of Complainant’s Mark.
There is clearly substance to Complainant’s arguments and it is found that:
a) Complainant has rights in respect of Complainant’s Mark.
b) Apart from the gTLD “mobi”, the Domain Name is for all intents and purposes identical to Complainant’s Mark, but certainly confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant argues that Respondent is not commonly known as “Lupoporno” or any similar terms. More significantly however, it contends that Respondent is operating a copycat site that offers the same services and prominently displays adult entertainment videos, similar to Complainant.
In the absence of any response from Respondent, the Panel finds that Complainant’s complaints are well-founded. That is, that Respondent is wrongly redirecting Internet users to a website resolving to the Domain Name.
Accordingly, on the material before the Panel, it is found that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
Given Complainant’s use and registration of Complainant’s Mark, and its established business in the adult entertainment area, the same area of interest to Respondent, the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name.
The Panel thus finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s business and interest in Complainant’s Mark at the time of registration of the Domain Name and since, and that Internet users might reasonably but wrongly believe that the Domain Name is somehow associated with or endorsed by Complainant.
The Panel thus finds that the third element of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <lupoporno.mobi> be transferred to Complainant.
Clive L. Elliott QC.
Date: March 19, 2019