WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gamma Entertainment Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Andrey

Case No. D2021-1613

1. The Parties

The Complainant is Gamma Entertainment Inc., Canada, represented by Silverstein Legal, United States of America (“United States”).

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Andrey, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <21sextury.org> 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 24, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2021, 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 31, 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 amendment to the Complaint on June 1, 2021.

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 June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on July 7, 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 Complainant operates a website located at the domain name <21sextury.com> which it uses in connection with the provision of adult entertainment content under the brand 21SEXTURY.

The Complainant’s predecessor-in-interest registered the <21sextury.com> domain name on April 2, 2003 and the evidence shows the domain name <21sextury.com> was been used in relation to adult entertainment content from at least November 2, 2015.

The Complainant owns the following registered trademarks for 21SEXTURY in the United States and Canada. It filed these applications on April 13, 2018:

These are collectively referred to as the “21SEXTURY Mark”.

The disputed domain name <21sextury.org> was registered on July 6, 2018.

As with the Complainant’s domain name <21sextury.com>, the disputed domain name <21sextury.org> resolves to a website featuring non-downloadable adult entertainment videos available to be streamed from the internet.

As with the Complainant’s website at <21sextury.com>, the website at the disputed domain name features a logo of the words “21SEXTURY” in the top left-hand corner in block capital letters. The numbers 21 are in red font, whereas the word SEXTURY is in bolded white capital letters. The background of both websites is black, and thumbnails for various videos are displayed on the homepage.

5. Parties’ Contentions

A. Complainant

There are four aspects to the complaint.

First, the Complainant asserts its registered rights in the 21SEXTURY Mark which it says existed from the date it filed its trademark applications on April 13, 2018. Because this is only a few months before the disputed domain name was registered on July 6, 2018 the Complainant also refers to common law rights it says were held by its predecessor-in-interest who registered the domain name <21sextury.com> in 2003 and used it in combination with the (then unregistered) 21SEXTURY Mark in relation to adult entertainment from at least November 2, 2015. The Complainant has filed evidence in support of these claims. It says its rights in the 21SEXTURY Mark clearly pre-date the Respondent’s registration of the disputed domain name.

Second, the Complainant states the disputed domain name is identical to its 21SEXTURY Mark. It says the disputed domain name is a complete and exact reproduction of its 21SEXTURY Mark. Although the Complainant notes the difference in the generic Top-Level Domain (“gTLD”) “.org”, it states this should be ignored as noted in the in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.2. It further says the Respondent’s use of the “.org” gTLD in the disputed domain name does not sufficiently distinguish the disputed domain name from the Complainant’s 21SEXTURY Mark.

Third, the Complainant asserts the Respondent has no rights or legitimate interests in the disputed domain name. It says that the Respondent has registered and used the disputed domain name in bad faith and therefore cannot establish rights or legitimate interests. The Complainant states the Respondent will be unable to provide credible evidence that it has rights or legitimate interests in the disputed domain name and that there is no legitimate basis for the Respondent’s registration or use of the disputed domain name. This is because:

(a) The Respondent registered the disputed domain name after the Complainant applied to register the 21SEXTURY Mark and long after the Complainant began using the Mark in November 2015.

(b) The Mark is an arbitrary term that has no meaning outside its use to identify the Complainant as a source of certain products and services.

(c) The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s Mark for any purpose.

(d) The Respondent is not commonly known as “21sextury”.

(e) The disputed domain name currently resolves to a website site that hosts adult entertainment content in direct competition with the Complainant’s services and using a disputed domain name to host commercial websites that offer goods and services in direct competition with the trademark owner cannot give rise to legitimate rights or interests.

(f) An internet user might be misled into thinking that the disputed domain name is related to or even operated by the Complainant.

(g) The Respondent is using an identical or confusingly similar domain name to redirect internet users to its website for commercial gain through revenue generated by clicks activated through the disputed domain name, which is not a bona fide offering of goods or services.

Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. In support of its submission the Complainant states that at the time the Respondent registered the disputed domain name on July 6, 2018, the Complainant had been using its (then unregistered) 21SEXTURY Mark for approximately three years and had applied for trademarks in the United States and Canada. The Complainant further says the Respondent therefore ought to have known of the Complainant, its domain name and website, and its 21SEXTURY Mark. Because the designation 21SEXTURY is unique and arbitrary the Complainant argues it is unlikely the Respondent devised the term “21sextury” on its own. It states it can be inferred the Respondent had actual knowledge of the Complainant’s 21SEXTURY Mark and website because it registered an identical domain name and operates a website that hosts content in direct competition with the Complainant. The Complainant asserts that the Respondent is using the disputed domain name to capitalize on consumer recognition of the 21SEXTURY Mark and its association with the categories of goods/services listed on the Complainant’s website. The Complainant states the Respondent is likely using the disputed domain name to generate click-through fees. The Complainant notes the Respondent hid its identity from the public behind a WhoIs privacy wall, which may be indicative of bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Each of these elements will be addressed in turn.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registrations in relation to the 21SEXTURY Mark in the United States and Canada. The Panel finds that the Complainant has clearly and sufficiently demonstrated its registered rights in the 21SEXTURY Mark which existed from April 13, 2018 (the filing date). The filing date of a trademark is regarded as the effective date of registration (see for example Little House Publishing Limited v. Mr. Keith Davis, WIPO Case No. D2004-0508; The Planetary Society v. Salvador Rosillo Domainsforlife.com, WIPO Case No. D2001-1228). The Complainant’s rights therefore pre-date the Respondent’s registration of the disputed domain on July 6, 2018. The Panel further notes that under the first URDP element the Complainant only needs to show it had rights at the time the complaint was filed (see WIPO Overview 3.0, section 1.1.3). The Panel is satisfied the Complainant clearly had rights in the 21SEXTURY Mark on May 24, 2021, and further that since late 2015, the Complainant has been known (in at least the United States and Canada) by “21SEXTURY” as a provider of adult entertainment on its website.

In comparing the 21SEXTURY Mark to the disputed domain name, it is well established that the gTLD, in this case “.org” may be excluded from consideration as being a generic or functional component of the domain name (see WIPO Overview 3.0, section 1.11.1). The 21SEXTURY Mark is wholly incorporated and clearly recognizable in the disputed domain name. The Panel is therefore satisfied that the disputed domain name is identical to the Complainant’s 21SEXTURY Mark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name by, among other circumstances, showing any one of the following elements:

(i) that before notice of the dispute, the Respondent used or made 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) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or

(iii) that 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 overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. However, UDRP panels have found that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel is satisfied the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, which currently resolves to a website that imitates and directly competes with the Complainant’s website.

The Panel has considered whether it is possible that the Respondent might be commonly known by the disputed domain name and by the term “21sextury” (which it uses as a logo on the website the disputed domain name resolves to). However, because registration and use of a domain name in bad faith cannot establish rights or legitimate interests (see N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387), for the reasons discussed below, and no evidence has been provided showing that the Respondent is commonly known by the name within the meaning of paragraph 4(c)(ii) of the Policy, the Panel is not satisfied the Respondent has rights or legitimate interests in the disputed domain name.

Furthermore, the nature of the disputed domain name, being identical to the Complainant’s trademark, carries a high risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

Accordingly, the Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:

(i) The Panel finds that the Respondent was aware of the Complainant, its domain name, and 21SEXTURY brand, and its associated goodwill at the time of registration of the disputed domain name.

(ii) The Panel considers the Respondent knew or ought to have known about the Complainant’s applications for a 21SEXTURY trademark in the United States and Canada at the time the disputed domain name was registered. Paragraph 2 of the Policy puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […] to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party […]. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights”. A trademark or any online search of existing domain names prior to the Respondent registering the disputed domain name would have revealed the Complainant’s rights.

(iii) The Panel finds on the balance of probabilities that, because the disputed domain name is identical to the Complainant’s 21SEXTURY Mark, the disputed domain name was registered for the purpose of capturing and diverting internet users seeking out the Complainant’s website using the incorrect gTLD (i.e., “.org” not “.com”).

(iv) The Panel adopts the Complainant’s submission that the sign 21SEXTURY is purely fanciful and that it is unlikely that a third party would legitimately choose the word unless seeking to create an association with the Complainant and its services and Mark.

(v) A further cumulative factor demonstrating bad faith on these facts is that the disputed domain name was anonymously registered. See WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, WIPO Case No. D2012-0033.

The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:

(i) The Panel accepts the Respondent’s use of the disputed domain name creates a strong likelihood of confusion with the Complainant’s website and 21SEXTURY Mark, and therefore misleads internet users as to the source, sponsorship, affiliation or endorsement of the website.

(ii) To add to this confusion the website to which the disputed domain name resolves imitates the Complainant’s website by displaying the 21SEXTURY Mark, a logo similar to the Complainant’s, a black background, and similar content. It is likely internet users familiar with the Complainant’s 21SEXTURY Mark would be confused about which website was genuinely associated with the Complainant and its 21SEXTURY Mark. The Panel is therefore satisfied in accordance with paragraph 4(b)(iv) of the Policy, that on the balance of probabilities, the Respondent has intentionally attempted to attract internet users to the Respondent’s website for commercial gain (through revenue-generated by clicks activated through the disputed domain name). It is well established that such conduct constitutes use in bad faith. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.

(iii) The Respondent’s use of the disputed domain name may tarnish the Complainant’s Mark for reasons outside the Complainant’s control.

(iv) The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business under paragraph 4(b)(iii) of the Policy because the Respondent uses the disputed domain name to display videos in direct competition with the Complainant and to capitalize on consumer recognition of the 21SEXTURY Mark and its association with the categories of goods/services listed on the Complainant’s website. This disruption of the Complainant’s business is a further indicator of use in bad faith. See LEGO Juris A/S v. Aamir Abdul Wahid, Spiro Line Media, WIPO Case No. D2019-0245.

(v) The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent and draws an adverse inference from this.

Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

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 <21sextury.org> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: July, 21 2021