WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Docler IP S.à r.l., DuoDecad IT Services Luxembourg S.à r.l. v. Privacy.co.com, Savvy Investments, LLC Privacy ID# 911498,
Case No. D2019-1712
1. The Parties
The Complainants are Docler IP S.à r.l., Luxembourg, and DuoDecad IT Services Luxembourg S.à r.l., Luxembourg, represented by Docler Services S.à r.l., Luxembourg.
The Respondent is Privacy.co.com, Savvy Investments, LLC Privacy ID# 911498, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name, <jasminlive.com> (the “Domain Name”), is 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 19, 2019. On July 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 2019, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on July 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on July 26, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 26, 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.
While there are multiple Complainants (two in number), they are members of the same group of companies, one being the owner of the trade mark upon which the Complaint is based, and the other being the licensee. The Panel recognizes their claim that they have a common grievance in that the registration and use of the Domain Name has affected them in similar fashion. The Panel accepts that it would be equitable and procedurally efficient to permit consolidation of their complaints. For the purposes of this decision, the Panel treats them as one.
4. Factual Background
The Complainants operate adult entertainment websites, one of them connected to the Complainants’ domain name, <livejasmin.com>.
The Complainants are the proprietor/licensee of several trade mark registrations covering the names “jasmin” and “livejasmin”, the earliest of which appear to be:
United States Trade Mark Registration No. 3129772 LIVEJASMIN (standard character mark), registered August 15, 2006 (application filed September 12, 2005), for services identical to those covered by the Canadian registration below. The registration features a first use in commerce claim of August, 2003.
Canadian Trade Mark Registration No. TMA680639 LIVEJASMIN (word mark), registered January 30, 2007 (application filed November 7, 2005), for the following services, namely “electronic transmission of adult oriented entertainment in the nature of streaming audio, streaming video, and streaming media transmitted via a global communications network”. The registration features a first use claim in Canada of July 1, 2004.
These registrations are currently registered in the name of WebMindLicenses Kft. of Budapest, Hungary, but the Complainants have annexed to the Complaint a declaration to the effect that ownership of the registrations were transferred to the first-named Complainants on May 13, 2019.
The Complainants’ trade mark registrations covering JASMIN (device mark) are European Union trade mark registrations with registration dates in 2015.
The Complainants are the registrants of the following domain names, namely <jasmin.com> (created November 11, 1998), <livejasmin.com> (created November 11, 2001), <jasmin.tv> (created January 13, 2003), <jasmin.xxx> (created December 1, 2011), <livejasmin.tel> (created March 23, 2009).
The Complainants have produced evidence to satisfy the Panel that the Complainants’ business has been very successful and that a significant reputation and goodwill attaches to the trade mark LIVEJASMIN.
The Domain Name was registered on November 18, 2003, and redirects users to the Complainants’ website at “www.livejasmin.com”.
On June 21, 2019, the Complainants sent a cease and desist email to the Respondent drawing the Respondent’s attention to the Complainants’ trade mark rights and seeking transfer of the Domain Name. The email invited a reply within ten (10) calendar days. Not having received a reply, the Complainants sent a formal reminder to the Respondent on July 5, 2019, but with no better success.
5. Parties’ Contentions
The Complainants contend that the Domain Name is confusingly similar to the Complainants’ trade mark LIVEJASMIN; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises at the second level (for the purposes of this assessment the generic Top-Level Domain identifier may be ignored) the words “jasmin” and “live”. Both the Complainants’ trade marks JASMIN and LIVEJASMIN being readily recognizable in the Domain Name, the Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainants have rights.
C. Rights or Legitimate Interests
On the evidence of the Complainants (verified by the Panel), the Respondent is using the Domain Name to redirect users to the Complainants’ website at “www.livejasmin.com”. There is no evidence before the Panel as to when this redirection commenced. However, it is not on its face a use likely to give rise to any rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.
The Respondent has a case to answer, but has elected not to provide an answer. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainants’ contention under this element of the Policy is that the Respondent registered the Domain Name in bad faith, and is using it in bad faith because (a) the Domain Name “wholly incorporates the Complainants’ well-known trademark JASMIN” and (b) “The Complainants’ trade marks are well known in the adult industry” and “[i]n the present case, the Respondent cannot in any way argue that he did not know the website www.livejasmin.com of the Complainant[s]’, as he has been redirecting the internet users to the official website of the Complainants.” The Complaint concludes: “Therefore, the Complainants shall be considered as having satisfied their burden of showing bad faith registration of the disputed domain name by the Respondent.” That articulation of the test fails to recognize the importance of establishing that the Respondent was aware of the Complainants’ business at the date of registration of the Domain Name.
The case is not straightforward. While it appears from the evidence that the Complainants’ business commenced in 2001 in Hungary, there is no evidence before the Panel as to how extensive that business was in the early years up to November 2003 when the Domain Name was registered. The first use claim relating to the United States trade mark registration (section 4 above) is August, 2003, a mere three months prior to registration of the Domain Name, and the first use claim in respect of the Canadian trade mark registration (section 4 above) is July 2004. There is no evidence before the Panel as to what, if any, use was made of the Domain Name by the Respondent prior to the current use. Virtually all the supporting evidence as to the phenomenal growth and success of the Complainants’ business is for the last few years although it appears that the Complainants’ business has been attracting nominations for industry chat site awards since 2007. The only piece of evidence referring to the early history of the Complainants’ business is a Wikipedia entry reading:
“The website was first founded in 2001 as jasmin.hu, with a focus on the domestic Hungarian audience. In 2003, the website experienced significant growth and eventually went global with Jasmin Media Group as its holding company. In 2012, American hip-hop artist Flo Rida released a tribute titled ‘Hey Jasmin’.”
The Complainants have not sought to explain the 16-year delay in taking action in respect of the Domain Name.
The gaps in the Complainants’ evidence admit of the possibility that when the Respondent, a resident of the United States, registered the Domain Name, it was unaware of the existence of the Complainants’ business and had other plans for it than the current use. Up to 2003, the Complainants’ business was targeted at the Hungarian audience. The Complainants’ trade mark registrations upon which they rely all postdate registration of the Domain Name, and there is nothing before the Panel to help the Panel to assess the extent of the Complainants’ claimed first use of their LIVEJASMIN trade mark in the United States from August 2003. Was it so significant between August and November 2003 that the Panel can safely infer that the Respondent must have had the Complainants’ (then unregistered) trade mark rights in mind when registering the Domain Name? If the current use of the Domain Name was the use to which the Domain Name was put at the outset, then it would have been easy to draw the necessary inferences of bad faith, but the Complainant has made no attempt to demonstrate when the Respondent adopted the current use.
On the other side of the coin, it is the case that despite having been given several opportunities to respond to the Complainants’ allegations in response to the cease and desist letter as well as the Complaint, the Respondent has declined to do so. If it had a reasonable explanation for its choice of domain name, it could easily have produced it.
The Panel accepts that the current use of the Domain Name to redirect visitors to the Complainants’ website is a bad faith use. It demonstrates that the Respondent is targeting the Complainants and while, on its face, it appears to be causing the Complainants no damage, it is outside the control of the Complainants, it could be changed at any time and as such represents an abusive threat hanging over the head of the Complainants. Moreover, although this was not argued in this case by the Complainants, it is conceivable that the Respondent is deriving commercial revenue from its current use of the Domain Name. In a previous case which the Complainants brought under the Policy, namely 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, involving the domain name, <livejasmine.com>, which redirected users to the Complainants’ website, the panel found on the basis of an argument put forward by the Complainants in that case, that the Respondent was likely to be deriving “revenues each time users click on the URL address containing the disputed domain name and are redirected to the Complainants’ website.” Whether or not that is true of the current use of the Domain Name, either way the current use is plainly abusive.
However, bad faith use on its own is insufficient. For the Complainants to succeed under this element of the Policy, the Panel must be satisfied, on the evidence before it and on the balance of probabilities, that the Domain Name was registered in bad faith. It is for the Complainants to prove their case, not for the Respondent to prove its defence.
The Panel comes down on the side of the Complainants. The Panel notes with interest that the disputed domain name in the case quoted above involving <livejasmine.com>, a very similar domain name to the Domain Name, was registered on October 11, 2003, by a resident of the United States about three weeks before the Domain Name. The Panel concludes that for two domain names so similar to that of the Complainants to have been registered at that time, the notoriety of the Complainants’ business under and by reference to its “livejasmin” name through its website at “www.livejasmin.com” must have been sufficiently high by late 2003 to have generated such an opportunistic following in the United States. The Panel takes comfort in the fact that the panel in the <livejasmine.com> case in similar circumstances had no difficulty in making a finding of bad faith registration and use.
The Panel finds that the Domain Name was registered and is 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 Name, <jasminlive.com>, be transferred to the Complainants.
Date: August 27, 2019