WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Docler IP S.à r.l.and DuoDecad IT Services Luxembourg S.à r.l. v. Uu
Case No. D2021-0366
1. The Parties
The Complainant are Docler IP S.à r.l., Luxembourg, and DuoDecad IT Services Luxembourg S.à r.l., Luxembourg, represented internally.
The Respondent is Uu, Japan.
2. The Domain Names and Registrar
The disputed domain names <livejasmin.host>, <livejasmin.press>, <livejasmin.tech> are registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021. On February 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2021 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 February 14, 2021.
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 February 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2021.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 19, 2021. 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 Complainants, Docler IP S. à r. l. and DuoDecad IT Services Luxembourg S. à r. l., as well as the Complainants’ authorized representative, Docler Services S. à r. l., belong to a group of companies, the “Docler Group”. The disputed domain names and Complainant’s trademarks on which the present Complaint is based are owned by Docler IP S. à. r. l., whereas DuoDecad IT Services Luxembourg S. à r. l. is operating such domain names under its trademark rights, subject to a license agreement between Docler IP S. à r. l. and DuoDecad IT Services Luxembourg S. à r. l. (collectively as the “Complainants”).
The Complainants operate a web platform under the domain name <livejasmin.com> (the “Web Platform”) and owns the following domain names: <jasmin.com> registered on November 11, 1998; <livejasmin.com> registered on November 11, 2011; <jasmin.tv> registered on January 13, 2003; and <livejasmin.tel> registered on March 23, 2009. The Complainants operate the Web Platform offering services associated with adult entertainment shows, from models, mostly cam girls. According to SimilarWeb, the Web Platform has some 300 million visitors each month in the second half of 2020. According to Alexa the WebPlatform is ranked as the world’s 51 most visited website and the world’s 19 most visited website in the Adult Category in 2020. The WebPlatform has a Wikipedia page and the Complainant’s business under the LIVEJASMIN mark had a turnover of over EUR 400 million in 2020.
The Complainants owns several trademark registrations for the LIVEJASMIN marks, including but not limited to the following: LIVEJASMIN (Registration No. 3129772) registered on August 15, 2006 in United States of America; and LIVEJASMIN (Registration No. TMA680639) registered on January 30, 2007 in Canada.
The disputed domain names, <livejasmin.host>, <livejasmin.press> and <livejasmin.tech>, were registered on November 4, 2020, and resolved to an active website of pedo-pornographic nature. Currently, the disputed domain names are inactive.
5. Parties’ Contentions
The Complainants’ contentions include the following:
The Complainants argue that the disputed domain names are confusingly similar to the Complainants’ registered LIVEJASMIN mark as the disputed domain names wholly incorporate the LIVEJASMIN mark along with generic Top-Level Domains (“gTLD”) “.host”, “.press” and “.tech” that are insufficient to avoid confusing similarity.
The Complainants also argue that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names.
The Complainants further argue that the disputed domain names were registered and are being used in bad faith by registering the disputed domain names in order to prevent the Complainants from reflecting the mark in a corresponding domain name and for illegitimate commercial gain by creating a likelihood of confusion with the Complainants’ LIVEJASMIN mark and thereby disrupting the business of the Complainants.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainants to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain names wholly integrate the Complainants’ LIVEJASMIN mark in its entirety. It is also well established that the addition of the gTLDs “.host”, “.press” and “.tech”, as a standard registration requirement, is disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.1.
Consequently, the Panel finds that the Complainants have shown that the disputed domain names are confusingly similar to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
Once the Complainants establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (see WIPO Overview 3.0, section 2.1).
In the present case, the Complainants have demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Complainants have provided evidence that they own trademark registrations long before the disputed domain names were registered and that they are not affiliated with nor have they licensed or otherwise permitted the Respondent to use the Complainants’ trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
There is also no evidence on record showing that the Respondent is commonly known by the disputed domain names (see WIPO Overview 3.0, section 2.3). Moreover, the disputed domain names resolve to a website related to pedo-pornography content, which does not constitute a legitimate or bona fide use (see WIPO Overview 3.0, section 2.9).
Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Complainants must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainants have submitted evidence showing that the disputed domain names redirect to an active website related to pedo-pornography content. The websites that resolved to the disputed domain names appeared to have attempted to ride on the reputation the Complainants’ have in their mark in view of the use of Complainants’ LIVEJASMIN marks which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainants’ WebPlatform. Previous UDRP panels ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095; See also Docler IP S.àr.l., DuoDecad IT Services Luxembourg S.àr.l., WebMindLicenses Korlàtolt Felelösségu Társaság v. Domain Admin / Zoran Savic, WIPO Case No. D2015-1186). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent also did not submit a Response in this proceeding. This may be a further indication of the Respondent’s bad faith, which was considered by the Panel.
Based on the evidence presented to the Panel, including the registrations of the disputed domain names long after the registration of the Complainants’ trademarks, the confusing similarity between the disputed domain names and the Complainants’ trademarks, the Respondent’s use of the disputed domain names, and the failure of the Respondent to submit a response, the Panel draws the inference the Respondent had specifically targeted the Complainants and that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met its burden under 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 names, <livejasmin.host>, <livejasmin.press> and <livejasmin.tech>, be transferred to the Complainant Docler IP S.a.r.l.
Date: May 3, 2021