WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MFCXY, Inc. v. Domain Administrator, See PrivacyGuardian.org / Inga Ivanova
Case No. D2020-0750
1. The Parties
The Complainant is MFCXY, Inc., United States of America (“United States” or “USA”), represented by Walters Law Group, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Inga Ivanova, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name < myfreecams.app> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2020, 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 April 6, 2020, 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 April 7, 2020.
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 April 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 6, 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 operates the website available at <myfreecams.com> which has been in use since 2002 in connection with the provision of streaming audio, visual and audiovisual material and other entertainment services via the Internet.
It is the owner of the United States trademark registration No. 3,495,750 for the word mark MYFREECAMS.COM, registered on September 2, 2008, in class 38 (Annex E to the Complaint).
The disputed domain name <myfreecams.app> was registered by the Respondent on September 23, 2019. No active webpage resolves from the disputed domain name.
5. Parties’ Contentions
The Complainant asserts that its <myfreecams.com> is one of the most popular websites in the USA and the world, being ranked by Alexa Internet within the top 500 most popular websites in the USA and the 1,258th most popular website on the Internet (Annex H to the Complaint).
According to the Complainant, the disputed domain name is identical to the Complainant’s trademark, altering only the generic Top-Level Domain (“gTLD”) from “.com” to “.app”, which does not create a distinct mark capable of overcoming a claim of identical or confusing similarity.
Also according to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not commonly known as “MYFREECAMS”;
(ii) the Respondent has no rights in respect of the disputed domain name;
(iii) the Respondent is passively holding the disputed domain name; and
(iv) the Respondent failed to reply to the cease and desist letter sent by the Complainant (Annex F to the Complaint) prior to this proceeding.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent should have constructive knowledge of the Complainant, especially in view of the fact that the Respondent is a cybersquatter who has engaged in a pattern of bad faith conduct, having been named in a previous UDRP case (Multi Media, LLC v. Whois Agent, Whois Privacy Protection Services, Inc. / Inga Ivanova, WIPO Case No. D2016-1108). In addition to that, according to the Complainant, the Respondent’s bad faith can also be corroborated by the use of a privacy service seeking to hide its true identity and the lack of reply to the cease and desist letter sent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established rights in the MYFREECAMS.COM trademark, duly registered.
The Panel finds that the disputed domain name <myfreecams.app> reproduces the relevant part of the Complainant’s mark in its entirety, being the alteration of the gTLD from “.com” to “.app” insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicates a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice 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 in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark 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 trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, corroborate with the indication of the absence of a right or legitimate interest.
Two other elements to be taken into account are the absence of any reply to the warning letter sent to the Respondent and the lack of any apparent use made of the disputed domain name which is being passively held by the Respondent.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the WIPO Overview 3.0 states that “[f]rom 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”.
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name.
Four other factors corroborate the finding of the Respondent’s bad faith conduct in this case: the registration of a domain name by the Respondent which is identical to the Complainant’s mark but has merely changed the applicable gTLD, the Respondent’s lack of reply to the warning letter (Annex F to the Complaint), the use of a false address in the WhoIs data, and the fact that the Respondent has already been found guilty of bad faith registration and use of a domain name in a past UDRP case.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to 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 disputed domain name <myfreecams.app> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: May 20, 2020