WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Licensing IP International S.À R.L v. Michael Ott, OIM24 GMBH & CO K.G/ Whoisguard Protected of Whoisguard Inc.
Case No. DTV2016-0002
1. The Parties
The Complainant is Licensing IP International S.À R.L of Luxembourg, Luxembourg, represented by SafeNames Ltd., United Kingdom of Great Britain and the Northern Ireland.
The Respondent is Michael Ott, OIM24 GMBH & CO K.G of Juechen, Germany / Whoisguard Protected of Whoisguard Inc. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name, <youporn.tv> (the "Domain Name"), is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2016. On February 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2016 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 22, 2016 and copied in the Respondent.
On February 22, 2016 the Respondent sent an informal email to the Center in German1.
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 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 15, 2016.
On March 20, 2016 the Center received an email from an email address not on the record for the Respondent, but which appears from the context of the communication to be as previous registrant of the disputed domain name. The email indicated that the writer sold the domain name 2-3 years ago and had no continuing interest in the Domain Name and was happy for it to be transferred to the Complainant.
On March 22, 2016 the Center emailed the Parties and the sender of the above email inviting clarification as to the identity of the sender to enable the Center to verify that the email should be admitted into this administrative proceeding. No substantive reply was received.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 30, 2016. 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.
The need for an amended Complaint stemmed from the fact that at the date of the Complaint the Domain Name was held in the name of a privacy service and that in response to the Center's request for Registrar verification the Registrar identified the underlying registrant as being the above named Michael Ott, OIM24 GMBH & CO K.G. In this decision all references to the "Respondent" are references to the said Michael Ott, OIM24 GMBH & CO K.G.
4. Factual Background
The group of companies of which the Complainant is a part is a major player in the online supply of adult-related services. One of the Complainant's brands is "YouPorn", a service product, which was first launched in 2006, but acquired by the Complainant from its previous owner in 2011.
The "YouPorn" service is provided by way of the Complainant's "www.youporn.com" website, which has been rated as the 161st most visited website in the world.
The Complainant is the proprietor of several trade mark registrations covering the name "YouPorn" coloured pink and black and in stylized form, one such registration being Swiss Registration No. 592402 registered October 19, 2009 (application filed July 10, 2009) in class 41 for adult-related entertainment services.
The Domain Name was first registered on July 21, 2006. It is connected to a website offering an adult-related service. The Panel has no information on when this service commenced.
The papers in the case file do not indicate precisely when the Respondent acquired the Domain Name. The Complainant has produced evidence to show that the Domain Name is likely to have been acquired from his predecessor when it was transferred into the name of Whoisguard Protected, the privacy service employed by the Respondent (see sections 1 and 3 above). In the absence of any challenge from the Respondent the Panel finds for the purposes of this decision that the Domain Name was acquired by the Respondent in 2013.
On May 12, 2015 the Complainant emailed the Respondent2 drawing attention to the Complainant's trade mark rights and seeking inter alia transfer of the Domain Name. There was no reply to that email.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to a trade mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
Absent the ".tv" country-code Top Level Domain identifier, which in this case serves no distinctive function and therefore may be ignored for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Domain Name comprises the name "youporn".
The Complainant's YOUPORN trade mark is a device mark and appears to be limited to the colours pink and black. Nonetheless, the name "youporn" stands out and phonetically the Domain Name and the trade mark are identical.
The Panel finds that the Domain Name is confusingly similar to the Complainant's trade mark.
C. Rights or Legitimate Interests
The date upon which the Respondent acquired the Domain Name is not known, but the Panel has found as a fact (see section 4 above) that it was in the course of 2013 i.e. some six or seven years after the Complainant's "YouPorn" product was launched and two years after that product was acquired by the Complainant.
The Respondent's product provided by way of the Domain Name appears to the Panel to be substantially identical to that of the Complainant.
The Complainant contends that the Respondent adopted the Domain Name for his service to attract customers on the back of the fame of the Complainant's "YouPorn" product. The Complainant contends that adoption and use of a domain name for such a purpose cannot constitute a use giving rise to any right or legitimate interest under paragraph 4(a)(ii) of the Policy. The Complainant points out that the Respondent is not commonly known by the Domain Name.
The Panel finds that the Complainant has made out a prima facie case calling for an answer from the Respondent.
In the absence of an answer from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
On the evidence before the Panel and in the absence of any explanation from the Respondent, the Panel finds that the Respondent acquired the Domain Name because it was substantially identical to the Complainant's trade mark and with a view to attracting custom on the back of the fame of the Complainant's product.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name, <youporn.tv>, be transferred to the Complainant.
Date: April 7, 2016
1 The email asks inter alia that the Center correspond with the Respondent in German. On February 23, 2016, the Center informed the Respondent that the language of the proceeding in this case was English.
2 The email was addressed to the privacy service then being used by the Respondent.