WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Multi Media, LLC v. Valentin Makarov

Case No. D2017-2063

1. The Parties

The Complainant is Multi Media, LLC of Florida, United States of America (“United States”), represented by Walters Law Group, United States.

The Respondent is Valentin Makarov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <chatrubate.online> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2017. On October 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Russian. On October 31, 2017, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center’s communication regarding the language of the proceeding or the Complainant’s submission.

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, in both English and Russian and the proceedings commenced on November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both English and Russian on December 8, 2017.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on December 28, 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 Complainant owns and operates the website located at “www.chaturbate.com” and had used its domain name for several years in connection with the provision of streaming audio, visual and audiovisual materials and other entertainment services. Its website went live on or about June 30, 2011. It is one of the most popular websites and numbers 142 on the Internet placing it within the top 1,000 website for overall traffic.

The Complainant has a registered trademark CHATURBATE (word mark) filed on June 28, 2012 and registered on February 12, 2013 in classes 38 and 42 (United States Registration No. 4,288,943) through the assignation of the trademarks in connection to the change of name of the Complainant from ZMediaNow, LLC. In addition the Complainant has a registered trademark CHATURBATE with a logo for classes 38 and 42 in the United States filed on November 3, 2015 and registered on June 28, 2016 (United States Registration No. 4,988,208).

The Complainant registered the domain name <chaturbate.com> on February 26, 2011.

The Respondent registered the disputed domain name <chatrubate.online> on January 27, 2017. According to the evidence provided by the Complainant the disputed domain name redirects to a website that offers similar services to the Complainant’s services.

5. Parties’ Contentions

A. Complainant

a) Identical or Confusingly Similar

The Respondent disputed domain name <chatrubate.online> is identical or confusingly similar to the Complainant trademark CHATURBATE. The switching of two letters from “chaturbate” to “chatrubate” and adding the generic Top-Level Domain (“gTLD”) does not create a distinctive mark capable of overcoming a claim of confusing similarity. The Respondent actions constitute a classic instance of “typosquatting”. The domain names that are based on misspelling of trademarks are often deemed to be confusingly similar (Deutsche Bank Aktiengesellschaft v. New York TV Tickets, Inc., WIPO Case No. D2001-1314).

b) Rights or Legitimate Interests

The Respondent is using the disputed domain name <chatrubate.online> for redirecting the Internet users to a website offering competing services similar to the one provided by the Complainant. The Respondent is not commonly known as “Chaturbate” or any similar names. The Respondent cannon claim that it is making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is clearly being used for commercial proposes and the Respondent is undoubtedly is acting for commercial gain. This does not constitute a legitimate use or interest, which is a typical case of a “typosquatter” who redirect users to website with intention of earning click through revenue (Byram Healthcare Centers, Inc. v. ICS Inc. / Contact Privacy Inc., WIPO Case No. D2014-0027). The Respondent is profiteering from the Complainant reputation and damaging goodwill of the Complainant.

c) Registered or Used in Bad Faith

It is evident that the Respondent registered the disputed domain name in January 2017 while the Complainant has been using its common law mark since June 2011 and registered trademark since June 2012. The Respondent registered the disputed domain name because it knew of the Complainant and its goodwill associated with its CHATURBATE marks and hoped to profit from it. The Respondent clearly hoped to attract the Internet users to its website by creating a likelihood of confusion. The Respondent is taking advantage of this confusion by intentionally redirecting visitors to another website for personal financial gain. It is inconceivable that the Respondent was not aware of the Complainant’s mark. The Respondent is clearly seeking to profit from and exploit the trademark of another (Rockstar Games v. Texas International Property Associates, WIPO Case No. D2007-0501). By attempting to exploit the Complainant’s goodwill and his recognition the Respondent therefore registered the disputed domain name and is using it in bad faith.

B. Respondent

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

6. Discussion and Findings

In this case, the Respondent was given notice of this proceeding in accordance with the Rules, paragraph 2(a) in English and Russian languages.

However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case and finds no exceptional circumstances why it could not do so; and the Panel will proceed to a decision based on the Complaint in accordance with paragraph 5(f) of the Rules.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that the three following elements are satisfied:

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

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

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

Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

A. Language of Proceeding

Paragraph 11 of the Rules states that the language of the proceeding shall be the language of the Registration Agreement subject to the authority of the Panel determines otherwise.

The Complainant has requested English as the language of the proceeding for the following reasons: (a) the Complaint has been submitted in English; (b) the Registrar publishes the text of the agreements both in Russian and English; (c) the Respondent would certainly have to understand English as his website shows; d) otherwise substantial burden and expense would be imposed on the Complainant, which could cause undue delay.

Further, given that the Respondent’s choice was not to comment on the language of the Proceedings or not to reply to the submission of the Complainant about English as the language of the proceedings, the Panel proceeds to render its decision in English.

B. Identical or Confusingly Similar

The Complainant has registered the CHATURBATE trademark in the United States of America and is

well-known all over the world. The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark. The disputed domain name incorporates the CHATURBATE trademark in its entirety with difference in combination of two letters resulting in “chatrubate”.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety even with a typo can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802).

The changing of the sequence of two letters in the word “chaturbate” is a clear case of “typosquatting” and the Respondent has slightly misspelled the CHATURBATE trademark to attract and divert internet traffic. The practice of “typosquatting” has been regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant trademark.

Adding of the gTLD does not create a distinctive mark capable of overcoming a claim of confusing similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CHATURBATE.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy as the first element of the Policy.

C. Rights or Legitimate Interests

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

Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

A respondent may show its rights or legitimate interests, non-exhaustively, by producing evidence to support the circumstances under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests.

The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services and currently the disputed domain name is linked to another website for allegedly profiteering purposes by using the confusing similarity of the disputed domain name to the Complainant’s trademark and name.

The above described use of the dispute domain name, in the Panel’s view, prove that the Respondent was not involved in bona fide offering of goods and services in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name in January 2017. The Complainant asserts that the activity under the trademark has continued since 2012 and earlier – under common law mark since 2011. CHARURBATE trademark and the Complainant’s activity is widely known and recognized as a top brand within its industry.

Therefore, as the disputed domain name has been registered almost five years after the registration of the Complainant’s trademark, it is totally inconceivable that the Respondent known as Valentin Makarov of Moscow has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.

There is no further evidence that the Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. Moreover, the Respondent is currently using the disputed domain name for profit. Therefore, paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain name and it is unrebutted by the Respondent accordingly the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy as the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with the Respondent’s knowledge of the Complainant’s trademark and reputation.

The Complainant’s first use and first registration of its CHATURBATE common law mark and trademark predate the registration of the disputed domain name. The disputed domain name was registered in 2017 approximately five years after Complainant’s first use of its trademarks. Additionally, the Complainant registered the domain name and began operating its website at “www.chaturbate.com” many years before the Respondent registered the disputed domain name in this case. The Respondent was aware of Complainant’s trademarks, domain name and website before it registered the disputed domain name. Moreover, the disputed domain name <chatrubate.online> almost entirely copies the Complainant’s registered domain name <chaturbate.online>.

In addition, the Complainant’s CHATURBATE trademarks are widely known and have been for many years. The Respondent’s registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests.

It is the Panel’s view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

The Panel finds that the Respondent’s registration of the disputed domain name shows the Respondent’s intent to rely on a risk of confusion with the Complainant’s activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and website associated with it.

The fact that the disputed domain name is used to link to another website supposedly for the purposes of gaining profit, in the Panel’s view, supports a finding of bad faith under the present circumstances.

These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Respondent lack of reaction to a cease and desist letter send by the Complainant to him on October 3, 2017, in the Panel view, is additional evident of bad faith of the Respondent.

The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as the third element of the Policy.

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 <chatrubate.online> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Date: January 18, 2018