WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baruti Investments LTD. v. Domain Admin / Whois Privacy Corp.

Case No. D2015-1848

1. The Parties

The Complainant is Baruti Investments LTD. of Belize City, Belize, represented internally.

The Respondent is Domain Admin / Whois Privacy Corp. of Nassau,, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <dpstream-series.com> is registered with TLD Registrar Solutions Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2015. On October 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 proceeding commenced on October 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2015.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on November 25, 2015. 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 operating under a web portal at <dpstream.net>. The Complainant's website frames, streams and shares links to videos posted elsewhere on the Internet. The Complainant's website is presented in French and directs its services to French speakers.

The Complainant owns a number of trademarks that incorporate the term "dpstream" throughout the world, including:

- French trademark No. 4104108 DPSTREAM and design registered on June 26, 2014 in classes 9, 38 and 41;

- French trademark No. 4104119 DPSTREAM and design registered on June 26, 2014 in classes 9, 38 and 41;

- Community trademark No. 013593991 "DPSTREAM" registered on April 8, 2015 in classes 9, 38 and 41.

The Complainant's domain name <dpstream.net> has been registered on August 28, 2009 and has about eight million users per months.

The disputed domain name <dpstream-series.com> was created on June 26, 2012. On the day of the present decision, the disputed domain name results to a blank page.

5. Parties' Contentions

A. Complainant

First of all, the Complainant states that its "DPStream" website is a "User generated content" platform, where media content is submitted by users. This content is shared by users using the Complainant's "iFrame technique", where users submit links from third-parties websites or services that are not owned or controlled by the Complainant.

The Complainant contends that the disputed domain name is confusingly similar to the trademark DPSTREAM in which the Complainant has rights.

The Complainant considers that the DPSTREAM mark remains the distinctive and main part of the disputed domain name, despite the addition of the mention "-series" which does not alter the risk of confusion with this trademark.

The Complainant adds that the Complainant's and the Respondent's websites are in French and the disputed domain name offers the same activities as the Complainant.

The Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that the Respondent registered and used the disputed domain name with the intention of imitating the Complainant's activities and website.

According to the Complainant, the disputed domain name has been registered to take advantage of the associations of the term "dpstream" with the Complainant's business and mark.

Indeed, the Complainant adds that the disputed domain name was registered on June 26, 2012, 3 years after the registration of the Complainant's domain name <dpstream.net>, which has about eight million users per month and was already known as "the reference of the streaming service in France and all over the world".

Moreover, the Complainant highlights that there is no evidence which demonstrates any good faith of the use of the disputed domain name.

Finally, according to the Complainant, the Respondent is using the disputed domain name in order to make benefits, through advertising services. According to the Complainant, the Respondent offers illegal services by allowing its website's users to download media contents.

Lastly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith.

The Complainant considers that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's website, by creating confusion with the DPSTREAM marks.

The Complainant stated that its website was already well known in June 2012, at the date the Respondent registered the disputed domain name <dpstream-series.com>. The Complainant adds that the Respondent necessary knew it will create confusion by registering <dpstream-series.com> and by offering the same activity as the Complainant

The Complainant considers that the Respondent is making financial benefits with the disputed domain name, through advertising services, and offers some illegal services (download of media content).

In addition, the Complainant highlights the fact that the Complainant tried to reach the Respondent on May 4, 2015 to warn him of the illegal use of the DPStream marks, but the Respondent did not answer.

Finally, the Complainant points out the fact that the confusion created by the Respondent prejudices the Complainant, who is trying to eradicate every illegal offers on its website.

The Complainant observes that in similar UDRP cases brought by the Complainant (Baruti Investments Ltd v. DPStream, WIPO Case No. DCC2015-0001; Baruti Investments Ltd v. Ayoub Salimi, WIPO Case No. D2015-0680; Baruti Investments Ltd v. Ayoub Salimi, WIPO Case No. DPW2015-0002 and Baruti Investments Ltd v. DPStream, WIPO Case No. DCC2015-0001), the Complainant has obtained transfer of the domain names reproducing its trademark.

The Complainant therefore requests the Panel to order that the disputed domain name <dpstream-series.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel observes that the Complainant has provided evidence that it has rights in the DPSTREAM marks, and the domain name <dpstream.net> since 2012.

In this case, the disputed domain name <dpstream-series.com> is composed of the distinctive element "dpstream", which is the exact reproduction of the Complainant's DPSTREAM marks, to which is added the generic terms "-series" and the generic Top-Level Domain ("gTLD") extension ".com".

First of all, when determining whether a domain name and a trademark are identical or confusingly similar, the gTLD extension may generally be disregarded.

Furthermore, the Panel concurs with the opinion of several prior UDRP panel decisions which have held that, when a domain name wholly incorporates a complainant's registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059).

As a consequence, regarding the disputed domain name <dpstream-series.com>, the Panel finds that the addition of the suffix "-series" to the trademark DPSTREAM is not sufficient to avoid confusing similarity.

Moreover, with regards to the media sharing activity of the Complainant, the addition of the generic terms "series", would rather enhance the risk of confusion with the Complainant's trademark.

In view of the above, the Panel considers that the Complainant has proved that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy outlines circumstances (Policy, paragraph 4(c)), that if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice to the Respondent 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, even if he has acquired no 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.

According to prior UDRP panel decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Complainant has made a prima facie showing that the Respondent has no authorization or license from the Complainant to use the Complainant's trademarks, that there is no business relationship existing between the Complainant and the Respondent and that the Respondent is not itself commonly known under the disputed domain name.

Moreover, the Panel adds that, in adopting the term "dpestream" as part of the disputed domain name, the Respondent wanted to take advantage of the association of that term with the Complainant's activities and trademark.

The Respondent did not reply to the Complainant's contentions and thus has provided no evidence of the circumstances specified in paragraph 4(c) of the Policy, nor any circumstances giving rise to a right or legitimate interest in the disputed domain name.

In view of the above, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy outlines non-exclusive circumstances (Policy, paragraph 4(b)) which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith.

The Panel has established that the disputed domain name is confusingly similar to the DPSTREAM mark of the Complainant. Taking into account (i) that the domain name of the Complainant has been registered in 2008, four years before the registration of the disputed domain name by the Respondent and (ii) that the Respondent chose to add the term "series" to the Complainant's trademark in the composition of the disputed domain name, which is an expression commonly used in the area of streaming to designate online media contents, it is likely that the Respondent has registered the disputed domain name with the Complainant and its mark in mind.

Therefore, for all the above mentioned reasons, the Panel concludes that the Respondent has registered the disputed domain name in bad faith.

Concerning the criteria of bad faith in the use of the disputed domain name, the Complainant contends that the Respondent used the disputed domain name in order to offer the same type of services as the Complainant and in the same language (French). The Panel considers that this could constitute a use of the disputed domain name for the purpose of attracting for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's trademarks.

According to the sections 4(b)(iii) and (iv) of the Policy, it should be considered as a use of the disputed domain name in bad faith (see Ticketmaster Corporation v. netAfrik, WIPO Case No. D2001-0906, the domain names and the services offered were similar such that there was"no doubt the Respondent deliberately chose the disputed domain names"; EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368, "the Respondent registered and used the domain name <eebay.com> in bad faith to promote competing auction sites.")

However, the Panel is concerned about the lack of evidence of such a use of the disputed domain name. That is why the Panel wishes to underline that, in any event, on the day of the present decision, the disputed domain name is connected to an inactive page, which demonstrates that it is passively held by the Respondent.

The Panel concurs with UDRP decisions which consider that the passive holding of a domain name that incorporates a widely known trademark without obvious use for an Internet purpose could constitute bad faith use (see Schneider Electric S.A. v. LLC "All-Energy", WIPO Case No. D2015-0388; Confédération Nationale du Crédit Mutuel v. Bryna Cytrynbaum, WIPO Case No. D2010-0165). The lack of response to the Complaint is further circumstance demonstrating bad faith use.

Thus, in view of the above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

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 <dpstream-series.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: December 10, 2015