WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Docler IP S.à r.l., DuoDecad IT Services Luxembourg S.à r.l., WebMindLicenses Korlátolt Felelösségü Társaság v. Peter Williams
Case No. D2017-0953
1. The Parties
The Complainants are Docler IP S.à r.l. of Luxembourg, Luxembourg, DuoDecad IT Services Luxembourg S.à r.l. of Luxembourg, Luxembourg, and WebMindLicenses Korlátolt Felelösségü Társaság of Budapest, Hungary, represented internally.
The Respondent is Peter Williams, of Cerritos, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <livejasmine.com> is registered with Gandi SAS (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2017. On May 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2017, 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 proceedings commenced on May 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on June 30, 2017. 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. (hereinafter "the first Complainant"), DuoDecad IT Services Luxembourg S.à r.l. (hereinafter "the second Complainant") and WebMindLicenses Korlátolt Felelösségü Társaság (hereinafter "the third Complainant") belong to the Docler Group, an international group of companies with subsidiaries in Europe, United States of America and Asia.
The first Complainant is the owner of the following trademark registrations:
- Benelux trademark No. 0948833 for LIVEJASMIN (word mark), registered on December 20, 2013, in classes 35, 38 and 42;
- European Union trademark No. 013809587 for JASMIN (figurative mark), registered on July 31, 2015, in classes 38 and 41;
- European Union trademark No. 013809504 for JASMIN (figurative mark), registered on July 27, 2015, in classes 38 and 41.
The first Complainant is also the registrant of the following domain names: <jasmin.com>, registered on November 11, 1998 and <jasmin.tv>, registered on January 13, 2003.
The third Complainant is the owner of the following trademark registrations:
- Canadian trademark No. TMA680639 for LIVEJASMIN (word mark), registered on January 30, 2007, in class 38;
- United States trademark No. 3129772 for LIVEJASMIN (word mark), registered on August 15, 2006, in class 38.
The second Complainant is entitled to use the marks owned by the first and the third Complainant based on license agreements with both companies. It is also the registrant of <livejasmin.com>, registered on November 12, 2001, and operates worldwide under the licensed trademarks in relation with the web platforms available at <jasmin.com>, <livejasmin.com> and <new.livejasmin.com>. Said web platforms consist of online adult entertainment websites that focus on live cam streaming.
The disputed domain name <livejasmine.com> was registered on October 11, 2003 and redirects users to Complainant's website "www.livejasmin.com".
5. Parties' Contentions
The Complainants state that they have a common grievance against the Respondent, as they are directly concerned by the trademark infringement materialized by the registration and exploitation of the disputed domain name.
They inform the Panel that:
- The Docler Group started operating the domain name <livejasmin.com> in 2001 in relation to its web platforms;
- The number of subscriptions per day on their web platforms is an average of 9,000;
- Their web platform at <livejasmin.com> has more than 10 million visitors each day and is the world's 46th most visited website according to Alexa Internet;
- The annual turnover of the second Complainant is more than EUR 230 million;
- The second Complainant pays royalties to the first and third Complainant for the exploitation of the intellectual property rights related to the Complainants' web platforms.
The Complainants contend that the disputed domain name is virtually identical and confusingly similar to the trademark LIVEJASMIN, as it contains the trademark in its entirety with the sole addition of the letter "e" and the generic Top-Level Domain (gTLD) ".com".
The Complainants also state that the Respondent does not have a legitimate interest in the disputed domain name since i) the Complainants have not authorized the Respondent to use the trademark LIVEJASMIN, nor to include the trademark in any domain name, and the Respondent is not a licensee of the Complainants and has no relationship or association with them; ii) there is no evidence that the Respondent might be commonly known by the disputed domain name or any similar name; and iii) the Respondent is making an illegitimate use of the disputed domain name for commercial gain as it subscribed to an affiliated program with a "pay-per-click" structure offered by a third party service provider, which provides revenues to the Respondent based on the number of times that visitors click on its link, for example through a Google search or typing directly "www.livejasmine.com" in the address bar of their browser. The Complainants also state that, when users enter "www.livejasmine.com" , Internet users are immediately redirected to the Complainant's official website.
The Complainants contend that the Respondent's bad faith can be inferred from the virtual identity of the disputed domain name with the Complainants' trademark and the use of the disputed domain name to redirect users to the Complainants' website, which would demonstrate the Respondent's intention to attract users for commercial gain by creating a likelihood of confusion with the Complainants and induce users to believe that the disputed domain name be owned by the Complainants. The Complainants also state that the Respondent cannot argue that it did not know the Complainants as it has been pointing the disputed domain name to the Complainants' official website and earning each month a significant amount of money through such a process.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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.
A. Preliminary procedural issue: consolidation of multiple complainants
The three Complainants filed the Complaint against the Respondent asserting to have a common interest as the Respondent's registration and use of the disputed domain name affects all of them.
In exercising its powers under paragraph 10 of the Rules, the Panel accepts the Complainants' request for consolidation since i) they have a specific common grievance against the Respondent and the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion, and ii) it would be equitable and procedurally efficient to permit the consolidation. See paragraph 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
B. Identical or Confusingly Similar
The Complainants have established rights in the trademark LIVEJASMIN based on the trademark registrations owned by the first and third Complainants and licensed to the second Complainant cited in Section 4 above.
The Panel finds that the disputed domain name is confusingly similar to the Complainants' trademark as it encompasses the trademark in its entirety with the mere addition of the letter "e", which is not sufficient to distinguish the trademark from the disputed domain name, and the gTLD ".com", which can be disregarded for the purpose of assessing identity or confusing similarity.
As stated in paragraph 1.9 of the WIPO Overview 3.0, "A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant".
Therefore, the Panel finds that the Complainants have met the requirement prescribed by paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel finds that the Complainants have made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, the Complainants have not authorized the Respondent to register or use its trademarks or the disputed domain name.
Moreover, there is no evidence that the Respondent might have been commonly known by the disputed domain name and the Panel finds that the Respondent's use of the disputed domain name to redirect users to the Complainants' website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Therefore, the Panel finds that the Complainants have proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In light of the prior registration and use of the trademark LIVEJASMIN in connection with the Complainants' adult entertainment website "www.livejasmin.com", the confusing similarity of the disputed domain name with the Complainants' trademark, from which it differs only for the addition of a single letter, and the Respondent's redirection of the disputed domain name to the Complainants' website, the Panel finds that the Respondent was very likely aware of the Complainants and their trademark rights when it registered the disputed domain name.
As to the use of the disputed domain name, the Complainants stated that the Respondent subscribed to an affiliate program of a third party which enables it to derive revenues each time users click on the URL address containing the disputed domain name and are redirected to the Complainants' website.
In view of the above, and in the absence of a Response, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by causing a likelihood of confusion with the Complainants' trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and correspondent website pursuant to paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel finds that the Complainants have proven that the Respondent registered and is using the disputed domain name in bad faith.
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 <livejasmine.com> be transferred to the Complainants.
Date: July 14, 2017