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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Multi Media, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / John Holmes

Case No. D2020-1213

1. The Parties

The Complainant is Multi Media, LLC, United States of America (“United States”), represented by Walters Law Group, United States.

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / John Holmes, Australia.

2. The Domain Name and Registrar

The disputed domain name <chaturbatevideos.net> 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 May 13, 2020. On May 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 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 May 19, 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 May 21, 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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2020.

The Center appointed Jane Seager as the sole panelist in this matter on June 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 a United States company operating an adult-entertainment website at “www.chaturbate.com” (the “Complainant’s website”). The Complainant registered the domain name <chaturbate.com> on February 26, 2011.

For use in connection with its provision of audiovisual streaming services via the Internet, the Complainant has acquired rights in the CHATURBATE trademark, including:

- United States Trademark Registration No. 4288943, CHATURBATE, registered on February 12, 2013 (first use in commerce on June 30, 2011); 1 and

- United States Trademark Registration No. 4988208, CHATURBATE (stylized), registered on June 28, 2016 (first use in commerce on June 30, 2011).

The disputed domain name was registered by the Respondent on July 2, 2013, using a privacy service. The disputed domain name resolves to a website (the “Respondent’s website”) that contains links allowing Internet users to download copyright-protected content that has been uploaded to the Complainant’s website.

On May 6, 2020, the Complainant’s representative sent a cease-and-desist letter to the Respondent via the privacy service through which the disputed domain name had been registered, putting the Respondent on notice of the Complainant’s rights, and requesting, inter alia, the voluntary transfer of the disputed domain name. The Respondent did not reply to the Complainant’s cease-and-desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant asserts registered rights in the CHATURBATE trademark, as well as common-law rights in the same, dating from June 30, 2011, at which date the Complainant’s website went live. The Complainant submits that the disputed domain name is confusingly similar to its CHATURBATE trademark, and that the addition of the descriptive term “videos” does not eliminate the confusing similarity.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the disputed domain name contains the entirety of the Complainant’s trademark, and that the Respondent is thus incapable of using the disputed domain name for a legitimate purpose. The disputed domain name resolves to a website that contains links to download infringing recordings of copyright-protected content that has been broadcast on the Complainant’s website. The Complainant asserts that the Respondent receives commercial benefit from using the Complainant’s trademark in conjunction with the distribution of infringing content. The Complainant argues that encouraging Internet users to pirate the copyright-protected content of the Complainant’s users and depriving the Complainant and its users of compensation for that content cannot be characterized as a legitimate interest. The Complainant asserts that the Respondent cannot argue that it is making a legitimate noncommercial or fair use of the disputed domain name, nor is there any evidence that the Respondent is commonly known by the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that at the time the disputed domain name was registered on July 2, 2013, the Complainant had already been making use of its CHATURBATE trademark for more than two years, and that it had filed a trademark application for the same in June 2012. The Complainant submits that the Respondent registered the disputed domain name with knowledge of the Complainant and of the goodwill associated with the Complainant’s CHATURBATE trademark. The Complainant argues that the Chaturbate brand is unique and arbitrary, such that it is unlikely that the Respondent devised the disputed domain name on its own. The Complainant further submits that the Respondent desired to disrupt the Complainant’s business by diverting Internet traffic away from the Complainant’s website. The Complainant asserts that the registration of the disputed domain name was intended to create a likelihood of confusion among the relevant public as to the source, sponsorship, affiliation, or endorsement of the Respondent’s infringing website. The Complainant notes that the Respondent appears to have been the named Respondent in a previous UDRP decision, in which the Panel ordered the transfer of numerous domain names, indicating a pattern of bad-faith registration on the part of the Respondent. The Complainant submits that the Respondent is using the disputed domain name in bad faith by making available content pirated from the Complainant’s website. The Complainant further submits that the Respondent’s registration of the disputed domain name using a privacy service, and the Respondent’s failure to reply to the Complainant’s cease-and-desist letter, are further evidence of the Respondent’s bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the CHATURBATE trademark by virtue of its registration and use, the details of which are provided in the factual background above.

The disputed domain name comprises the Complainant’s CHATURBATE trademark, followed by the descriptive term “videos”, under the generic Top-Level Domain (“gTLD”) “.net”. The Panel finds that the Complainant’s CHATURBATE trademark is readily recognizable as the leading element of the disputed domain name, and that the addition of the descriptive term “videos” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also Multi Media, LLC v. Whois Privacy Protection Service, Inc. / Rheigne Cruz, WIPO Case No. D2019-1724 (<chaturbateteam.com>).

The gTLD “.net” may be disregarded under the first element confusing similarity test; see WIPO Overview 3.0, section 1.11.1.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s CHATURBATE trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted screen captures indicating that the Respondent’s website displays copyright-protected content that has allegedly been misappropriated from the Complainant’s website. The Respondent has not come forward to dispute the Complainant’s assertions in this regard.

The Complainant’s trademark is prominently displayed on the Respondent’s website, giving the impression that the Respondent’s website is operated by or otherwise affiliated with the Complainant, when in reality the Respondent is not connected to the Complainant in any manner. There is nothing on the Respondent’s website to indicate the Respondent’s lack of authorization to make use of the Complainant’s trademark. In the circumstances, the Complainant does not consider the Respondent’s use of the disputed domain name to amount to a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy.

The Respondent registered the disputed domain name using a privacy service, and the underlying registrant of the disputed domain name is listed as “John Holmes”, which bears no resemblance to the disputed domain name. There is no evidence of the Respondent having acquired any reputation in the disputed domain name, independent from any perceived connection with the Complainant’s trademark. The Panel finds that the Respondent is not commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

The Panel further finds that the Respondent’s use of the Complainant’s trademark in the disputed domain name and on Respondent’s website, to provide free of charge what appears to be content that was originally uploaded to the Complainant’s website, does not amount to a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.

For reasons set out above, the Panel considers that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Despite having been duly notified of this proceeding, the Respondent has not come forward with any evidence to rebut the Complainant’s evidence or assertions, in the absence of which the Complainant may be deemed to have satisfied the requirements of the second element; see WIPO Overview 3.0, section 2.1.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on July 2, 2013, over two years after the Complainant’s website was launched, a year after the Complainant first applied for its trademark on June 28, 2012, and some four months after the first registration of the Complainant’s trademark on February 12, 2013. Since then, the Complainant’s website has gained substantial popularity in its field of activity. The term “chaturbate” is a coined term, and appears to be exclusively associated with the Complainant. Noting that one of the Complainant’s primary activities consists of making available audiovisual content via its website, the disputed domain name consisting of the Complainant’s trademark together with the descriptive term “videos” carries a high risk of implied affiliation with the Complainant. The Panel infers from the use to which the disputed domain name has been put, as described above, that the Respondent was well-aware of the Complainant’s trademark rights in CHATURBATE, and registered the disputed domain name with a view to creating a misleading impression of association with the Complainant, in bad faith; see WIPO Overview 3.0, section 3.8.2.

The Panel further finds that the Respondent’s use of the Complainant’s trademark, in the disputed domain name and on the Respondent’s website, has created a likelihood of confusion with the Complainant’s trademark, as to the source of the videos available for download on the Respondent’s website. The apparent misappropriation of copyright-protected content from the Complainant’s website and resulting diversion of Internet traffic that would otherwise be destined for the Complainant disrupts the Complainant’s business and deprives the Complainant and its users of revenue. The Panel finds that the Respondent is using the disputed domain name in bad faith.

The Respondent’s registration of the disputed domain name making use of a privacy service in an effort to hide its identity, together with the Respondent’s failure to come forward to produce any evidence of actual or contemplated good-faith use of the disputed domain name in response to the Complainant’s cease-and-desist letter, serve as further evidence of the Respondent’s bad faith.

The Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <chaturbatevideos.net> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: July 10, 2020

1 The Panel notes that this trademark registration was originally registered by the Complainant’s predecessor in interest, ZMediaNow, LLC. The Complainant has provided evidence that this trademark registration has been duly assigned to the Complainant.

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