WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bright Imperial Ltd. v. Ho Nim

Case No. D2010-0321

1. The Parties

The Complainant is Bright Imperial Ltd. of Hong Kong, SAR of the People's Republic of China, represented by Sheppard, Mullin, Richter & Hampton, United States of America.

The Respondent is Ho Nim of Shanghai, the People's Republic of China.

2. The Domain Name and Registrar

The disputed domain name <redtubehentai.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2010. On March 2, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 3, 2010, Above.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 29, 2010.

The Center appointed Linda Chang as the sole panelist in this matter on April 6, 2010. 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.

Due to special circumstances, the Panel required an extension until April 28, 2010 to render the decision.

Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is English. The language of the administrative proceeding shall be English.

4. Factual Background

The Complainant operates the adult video website RedTube, at the domain name <redtube.com>.

The Complainant owns the following trademark registrations:

The Respondent registered the disputed domain name <redtubehentai.com> on October 15, 2009.

5. Parties' Contentions

A. Complainant

The Complainant contends that due to the success and efforts of the Complainant, the REDTUBE mark has acquired extraordinary distinctiveness and fame worldwide and its products and services offered under the REDTUBE mark have earned widespread notoriety and has set forth in the Complaint examples of publications and media outlets that have mentioned the Complainant with respect to its products and services offered under the REDTUBE mark.

The Complainant also contends that through the RedTube website, the Complainant provides high quality adult entertainment videos to millions of unique visitors from around the world every day. The Complainant also contends that shortly before the <redtubehentai.com> was registered, the Complainant's adult video website RedTube, at the domain name <redtube.com> was the 63^rd most trafficked website on the Internet worldwide according to Alexa.com, a provider of Internet traffic metrics, and within the top 100 most popular sites in many countries around the world also according to Alexa.com. The Complainant also contends that among adult websites, RedTube was the 3^rd most popular website on the Internet worldwide.

The Disputed Domain Name Is Confusingly Similar to the Complainant's Mark

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

The Complainant also contends that “hentai” is a generic word referring to Japanese animation with an erotic subject matter and that the Complainant offers an entire section of hentai videos through its adult entertainment website, at the subdomain “http://redtube.com/redtube/hentai”.

The Complainant asserts that the disputed domain name, fully incorporating a well-recognized trademark as a domain name plus an additional generic word, has routinely been found to be confusingly similar under the Policy and cites various cases in support of this assertion, including a panel decision involving the Complainant where the panel found that the domain name <hqredtube.com> to be confusingly similar to the REDTUBE trademark (citing, Bright Imperial Ltd. v. Senja Dumpin, WIPO Case No. D2009-1619).

The Respondent Has No Rights Or Legitimate Interests in the Disputed Domain Name

The Complainant contends that the Respondent has no rights or legitimate interests with respect to the <redtubehentai.com> domain name.

The Complainant states that it has not licensed the REDTUBE mark or the <redtubehentai.com> domain name to the Respondent and contends that the Respondent has made no bona fide offering of goods or services on the “www.redtubehentai.com” website and that the Respondent has simply registered the domain name with the intention of using it for advertising revenue.

Moreover, the Complainant contends that the Respondent is not commonly known by the disputed domain name and, thus, does not have any rights or legitimate interests in the disputed domain name on that basis. There is no indication on the “www.redtubehentai.com” website or on the Above.com WhoIs database that the Respondent is commonly known by the name or mark REDTUBE or REDTUBEHENTAI.

The Complainant also contends that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, but rather is simply using the site to post links and advertisements that direct visitors to other websites that are in direct competition with the Complainant.

Registered and Used in Bad Faith

The Complainant contends that Redtube is a well-known adult website worldwide and that the Respondent is simply using the site to post links and advertisements that direct visitors to other websites that are in direct competition with the Complainant and that the Respondent uses the disputed domain name to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark REDTUBE.

The Complainant contends that the Respondent has actual and constructive knowledge of the Complainant's trademark and rights and had chosen the disputed domain name to free ride on the Complainant's reputation and customer goodwill.

The Complainant contends that the Respondent has engaged in a pattern of registering infringing domain names by pointing to evidence showing that the Respondent's contact details are associated with over 100,000 active domain registrations when its contact details are entered into the Registrant search engine at DomainTools.com. Further, the Complainant also contends that its searches of the Above.com WhoIs database indicate that the Respondent also owns a number of other domains that are meant to capitalize off of the fame of others' well-known domain names or trademarks, such as <mastercard-vl.com> (incorporating the famous MASTERCARD trademark), <chatroullet.com> (a misspelling of <chatroulette.com>), <nestle-coffeecrisp.com> (incorporating the famous NESTLE trademark), <avgantivirusfreedownload.com> (including the AVG trademark) and <moviefoene.com> (a misspelling of the MOVIEFONE trademark).

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:

(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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the trademark REDTUBE in various jurisdictions. Compared to the Complainant's trademark, the disputed domain name <redtubehentai> completely reproduces the trademark with the only difference being the mere addition of a generic word, “hentai” after “redtube”. “Hentai” is a subset of erotic subject matter that would reasonably be associated with an adult website such as that operated by the Complainant (and “hentai” as a product category is indeed offered by the Complainant via the Complainant's sub domain “http://redtube.com/redtube/hentai”). It is not unreasonable to believe that individuals searching for the category of “hentai” adult entertainment would search for this in association with one of the three most trafficked adult websites in the world. Given the well-known nature of the Complainant's trademark and high traffic ranking among Internet adult websites and the descriptive nature of the term “hentai”, the disputed domain name is confusingly similar to the Complainant's trademark.

The Panel holds that the disputed domain name is confusingly similar to the Complainant's trademark and the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain name. There is nothing in the record to suggest 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, to suggest that it has been commonly known by the disputed domain name, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant's claims.

The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The files on record have shown that:

- The Complainant's REDTUBE mark has acquired distinctiveness and fame worldwide and its products and services offered under the REDTUBE mark have earned widespread notoriety;

- The Complainant is a leading adult website and is well-known in its field;

- The word “hentai” is a generic word related directly to the type of products that the Complainant's trademarks would reasonably be associated with;

- The Complainant's trademark REDTUBE is extensively registered in various jurisdictions around the world;

- The Respondent did not respond to the Complainant's contentions;

- The Respondent has registered many other domain names corresponding and/or confusingly similar to other third parties trademarks, thus it would appear that the Respondent purposely chose to select and register domain names corresponding to registered trademarks, indicating a pattern of conduct giving rise to bad faith registration and use of the domain name <redtubehentai.com>; and

- The disputed domain name is used to post links and advertisements that direct visitors to other websites that are in direct competition with the Complainant.

These circumstances lead the Panel to conclude that the Respondent's use and registration of the domain name fall within the circumstances of bad faith registration and use of domain names, as provided in paragraph 4(a)(iii).

7. Decision

For all 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 <redtubehentai.com> be transferred to the Complainant.

Linda Chang
Sole Panelist

Dated: April 28, 2010