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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Spizoo, LLC, v. Andrey

Case No. D2019-3193

1. The Parties

The Complainant is Spizoo L.L.C., United States of America (“United States” or “U.S.”), represented by Keohane & D’Alessandro, United States.

The Respondent is Andrey, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <spizoo.net> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2019. On December 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 31, 2019, 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 January 13, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was February 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on February 4, 2020.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 26, 2020. 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 is an adult entertainment company specializing in the production of adult entertainment videos.

The Complainant is the owner of a trade mark registration for the SPIZOO mark in the United States (U.S. Trademark Registration No. 5,895,020), registered on October 29, 2019.

The Complainant also owns the <spizoo.com> domain name which contains the word SPIZOO.

The Respondent registered the Disputed Domain Name on July 6, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark SPIZOO, which has been wholly incorporated into the Disputed Domain Name;

(b) the Respondent was not commonly known by the Disputed Domain Name and the Complainant has never authorised or given permission to the Respondent, who is not connected or affiliated with the Complainant in any way, to use its SPIZOO trade mark, therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name; and

(c) the Respondent had registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant, and intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website, therefore the Respondent is acting in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the SPIZOO trade mark, based on its trade mark registration in the United States which indicates that the Complainant has been using the SPIZOO trade mark since as early as June 29, 2008.

The Disputed Domain Name is identical to the Complainant’s SPIZOO trade mark, but for the addition of the generic Top-Level Domain (“gTLD”) suffix “.net”. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the gTLD extension (“.net” in this case) may be disregarded. See section 1.11 of the WIPO Overview Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s SPIZOO trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainant has not authorised the Respondent to use the SPIZOO mark, and that there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the SPIZOO mark. Accordingly, the Panel is of the view that a prima facie case has been made and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. There is also no evidence to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that it has become known by the Disputed Domain Name.

Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. UDRP panels have generally found that domain names identical to a complainant’s trade mark carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has been using its SPIZOO trade mark since 2008, i.e. approximately 10 years prior to the registration of the Disputed Domain Name. The website to which the Disputed Domain Name resolves appears to be highly similar to the Complainant's official website, prominently displays and uses the Complainant's logo, and makes available for download full-length versions of the Complainant’s copyrighted video content. Therefore, the Panel accepts that the Respondent must have been aware of the Complainant at the time it registered the Disputed Domain Name, and sought to register and use the Disputed Domain Name in order to take advantage of the Complainant's reputation and its SPIZOO mark to cause confusion, mislead Internet users and divert traffic to the Respondent’s website.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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 <spizoo.net> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: March 11, 2020

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