WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bright Imperial Ltd. v. Domain Administrator, Fundacion Private Whois / INTEvraccddhb2fe
Case No. D2013-0292
1. The Parties
The Complainant is Bright Imperial Ltd. of Wanchai, Hong Kong, China, represented by Sheppard, Mullin, Richter & Hampton LLP, United States of America.
The Respondent is Domain Administrator, Fundacion Private Whois / INTEvraccddhb2fe, of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <redtubeporn.org> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 11, 2013. On February 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name.
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 February 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2013.
The Center appointed James Bridgeman as the sole panelist in this matter on March 15, 2013. 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 the owner of the REDTUBE trademark and has submitted evidence of its rights in a large portfolio of registered trademarks including the following: in Australia trademark REDTUBE, registration number 1228767, registered on March 10, 2008, for services in classes 38, 41 and 42; Community Trade Mark REDTUBE, registration number 007408297, filed on November 19, 2008 and registered on February 4, 2013, in classes 28, 35, 42; in the United States trademark REDTUBE, registration number 3843119 registered on August 31, 2010, for goods and services in international classes 10, 28, 41 and 45; and also in the United States trademark REDTUBE, registration number 3884412, registered on November 30, 2010, for goods and services in international classes 9, 35, 38, 41 and 42.
A number of the trademark registrations relied upon by the Complainant appear to be registered in the name of a third party, Jaeger & Polacek, GMBH that the Complainant states is its predecessor in interest. These include the Hong Kong registered trademark REDTUBE, registration number 301305017 registered on March 17, 2009, for goods and services in classes 9, 35, 38, 41 and 42; International Trademark registration number 1003812 registered on April 22, 2009, for goods and services in classes 9, 35, 38, 41 and 42; in Mexico, trademark registration number 1177204 registered on August 31, 2010; in New Zealand trademark registration number 803428, registered on October 2009; in Norway trademark registration number 253860 registered on December 9, 2009; in Singapore trademark registration number T0902260E registered on August 27, 2009; and in Switzerland trademark registration number 589771, registered on August 3, 2009.
The Complainant is also the owner of the domain name <redtube.com> that resolves to a commercial website operated by the Complainant to provide adult video content.
As no Response or other communication has been received from the Respondent, there is no information available about the Respondent except for that provided in the Complaint and the publicly-available WhoIs. The disputed domain name was registered on April 12, 2011, and also resolves to a website with adult content.
5. Parties’ Contentions
A. Complainant
The Complainant relies on its rights in its portfolio of registered trademarks including those listed above, and submits that the earliest of the above listed trademarks was registered three years prior to the registration of the disputed domain name.
The Complainant also relies on its rights at common law through extensive use of the REDTUBE trademark on the Internet
The Complainant submits that it and its predecessor in interest in the REDTUBE mark have been providing high quality adult entertainment videos in interstate and international commerce since at least July 2006, and has submitted evidence of use of the REDTUBE mark on the Internet since August 2007.
The Complainant claims to have thereby acquired common law trademark rights in the REDTUBE trademark in a number of countries, including but not limited to, the United States, the United Kingdom of Great Britain and Northern Ireland, Canada and Australia by virtue of: (i) the Complainant’s use of the REDTUBE mark to identify to products and services in interstate and worldwide commerce; (ii) the Complainant’s investment in publicising and advertising its products under the REDTUBE mark and creating an exclusive association between the REDTUBE mark and the Complainant’s products; and (iii) the association on the part of the public of the REDTUBE mark with products and services developed and marketed by the Complainant.
The Complainant submits that the extent of the reputation relied upon can be illustrated by the fact that there were 644,712,255 visits to its website in the seven month period from August 8, 2007, to March 21, 2008. This amounted to approximately 2,720,305 visits per day. Since the month of March 2008, the website to which the <redtube.com> domain name resolves has continued to gain in popularity, and there were over 9 billion visits to the website between April 1, 2008, and June 22, 2011, amounting to approximately 8,059,536 visits per day. In about July 2009, the Complainant’s website at the <redtube.com> domain name was ranked as the 63rd most popular website overall on the Internet, and the third most popular adult website. The Complainant submits that in the month of March 2011, which it notes was just one month prior to the date on which the disputed domain name was registered, the Complainant’s “www.redtube.com” website was receiving average traffic of more than 8 million visits per day. In support of these assertions the Complainant has provided a copy of the Google analytics pages and Alexa pages for the website to which the <redtube.com> domain name resolves.
The Complainant has also presented copies of articles from newspapers and magazines referring to its services under the REDTUBE mark which range in dates from February 7, 2008, to September 7, 2011, as evidence of the notoriety that it has achieved in the use of its mark on a global scale.
The Complainant submits that its REDTUBE trademark is inherently distinctive particularly in the context of the goods and services with which the mark is used.
The Complainant argues that the disputed domain name is confusingly similar to its REDTUBE trademark as it incorporates the Complainant’s REDTUBE trademark in its entirety, adding only the generic term for the Complainant services “porn” to the end of the mark. The Complainant submits that the addition of the generic word “porn” to the trademark is immaterial, particularly as the additional word relates to the Complainant’s goods and services.
In support of this argument the Complainant refers to previous decisions under the Policy and argues that a number of panels have decided that a domain name is identical or confusingly similar to a trademark for the purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. Wal-Mart Stores Inc. v. Richard McLeod d/b/a For Sale,
WIPO Case No. D2000-0662. UDRP panels have also determined that, “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark.” Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,
WIPO Case No. D2010-0240. Furthermore the Complainant argues that the addition of generic terms to a domain name has little effect on a determination of confusing similarity between the domain name and the trademark relied upon. Quixtar Investments, Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253.
The Complainant further argues that the mere addition of a generic or descriptive term generally does not exclude the likelihood of confusion. PRL USA Holdings, Inc. v Spiral Matrix,
WIPO Case No. D2006-0189.
Specifically addressing its REDTUBE mark, the Complainant further submits that UDRP panels, have already found a number of Internet domain names registered by third parties, specifically incorporating the REDTUBE trademark in combination with additional generic or descriptive lettering or numbers, as in the present case, to be confusingly similar to the Complainant’s mark. The Complainant cites the decisions of the panels in Bright Imperial Ltd. V. Domain Admin, PrivacyProtect.org/Private Registration,
WIPO Case No. D2010-1078 (finding the domain name <redtubeblog.com> to be confusingly similar to the REDTUBE trademark); Bright Imperial Ltd. v. Senja Dumpin,
WIPO Case No. D2009-1619 (finding the domain name <hqredtube.com> to be confusingly similar to the REDTUBE trademark); Bright Imperial Ltd. v. Ho Nim,
WIPO Case No. D2010-0321 (finding the domain name <redtubehentai.com> to be confusingly similar to the REDTUBE trademark); and Bright Imperial Ltd. v. PROXHOST International, Herr Carlos Torres,
WIPO Case No. D2012-1816 (finding the domain name <redtube8.net> to be confusingly similar to the REDTUBE trademark).
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name; that the Respondent has not received a license or permission from the Complainant to use the REDTUBE trademark in any way or to register any domain name incorporating the mark. The Complainant submits that its own exclusive rights to the REDTUBE mark under the Policy are clearly established by virtue of the Complainant's trademark registrations for REDTUBE and its common law trademark rights. The Complainant cites Sydney Markets Limited v. Nick Raids trading as Shell Information Systems,
WIPO Case No. D2001-0932 (domain name transferred where complainant had Australian trademark registrations); and Tuxedos By Rose v. Hector Nunez, NAF Claim No. 95248 (domain name transferred to complainant where complainant had common law trademark rights).
The Complainant argues that there is no indication from the publicly-available WhoIs database record for <redtubeporn.org > that the Respondent is commonly known by the name or mark REDTUBE or ”Redtubeporn” and, thus, the Respondent has no rights or legitimate interests in the disputed domain name on that basis.
The Complainant states that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. Instead, as explained in more detail below, the Respondent is generating revenue by using the disputed domain name as the address of a website, which targets the same class of consumers as the Complainant, to post videos and advertisements that direct visitors to the websites of Complainant's competitors. Such use is commercial and cannot be classified as legitimate, as it causes Complainant economic harm and gives economic benefit to the Respondent and Complainant's competitors. The Complainant cites Oly Holigan, L.P. v. Damir Kruzicevic, NAF Claim No. 97353 (respondent's use of domain name for a portal site which redirected consumers to commercial web sites did not demonstrate legitimate non-commercial rights or fair use).
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant states that upon learning of the Respondent's registration and use of the disputed domain name, and in an effort to resolve this matter amicably, the Complainant sent a letter to the Respondent on November 8, 2011, by email to the address listed in the WhoIs database, requesting the immediate deactivation of the website to which the disputed domain name resolved, and further requesting that the Respondent transfer to the Complainant the disputed domain name and any others domains it owned containing the REDTUBE trademark. The Complainant received no response.
On October 23, 2012, the Complainant sent a follow-up letter reiterating its demands. The Complainant again received no response, and a further reminder was sent on November 8, 2012, which also met with no response. On January 24, 2013, in a final effort before filing this Complaint, the Complainant sent an email to the Respondent's company requesting the Respondent's cooperation with regard to the disputed domain name. As of the date of the Complaint, the Complainant had not received any response to its efforts to reach Respondent. The Complainant has annexed copies of the correspondence to the Complaint.
The Complainant has submitted printouts from the website to which the disputed domain name resolved as of February 5, 2013, attached as an exhibit the Complaint. On the website at the disputed domain name, the Respondent is displaying prominent advertisements of Complainant's competitors in vertical banners on the right side of the webpage. The Complainant states that if a user clicks on the advertisements, they are immediately directed to a competitor's website. The Complainant submits that the Respondent acquired and uses the disputed domain name to target the same class of consumers and users of Complainant's products and services. The Complainant submits that on information and belief, the Respondent receives revenues from the advertisements that appear on the website at the disputed domain name and pay-per-click revenue from directing consumers to the websites of Complainant's competitors by to free riding on the Complainant's reputation and goodwill in the REDTUBE mark. The Complainant submits that the Respondent is therefore making use of the disputed domain name with intent for commercial gain and to misleadingly divert consumers and dilute the REDTUBE trademark. Specifically the Respondent is using the disputed domain name as the address of a competing website on which embedded videos from “www.videosz.com”, one of the Complainant's competitors.
The Complainant submits that the disputed domain name was registered in order to create an impression of association between the disputed domain name and the Complainant. Because the Complainant’s own website at the <redtube.com> domain name is, and has been, one of the most trafficked adult websites in the world, the Respondent must have been aware of the Complainant's REDTUBE mark at the time it registered the disputed domain name on April 12, 2011. Furthermore, because the Complainant’s website was, and is, one of the top adult sites in the world, anyone operating in the adult industry (including the Respondent) would undoubtedly be aware of its mark and domain name. The Respondent's registration of the disputed domain name that includes the Complainant's famous trademark and domain name, for services in the same industry, was plainly calculated to misappropriate and trade off of the goodwill developed by Complainant in the REDTUBE mark. As such, the Respondent's registration and use of the disputed domain name, with actual knowledge of Complainant's trademark for REDTUBE, is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc.,
WIPO Case No. D2000-1551 ("Actual or constructive knowledge of the Complainant's rights in the Trademarks is a factor supporting bad faith.").
Furthermore, the Complainant argues that any routine Internet search would have revealed the Complainant's website at the domain name <redtube.com> and its REDTUBE mark. Accordingly, there is no doubt that the Respondent either knew, or should have known, of the Complainant's prominent use of the REDTUBE mark. Ticketmaster Online-CitySearch, Inc. v. Alex Vlasov, NAF Claim No. 94739 (complainant's widespread use of its mark raises the inference that respondent had actual or at least constructive notice of complainant's prior use of the mark); Edmunds.com, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319 (respondent either knew or should have known of complainant's trademark rights since complainant was a well known online company and respondent was an operation in the domain name area). Further, a trademark search on the date of registration of the disputed domain name would have revealed the REDTUBE registered trademark in a number of countries around the world, owned by Complainant or its predecessor-in-interest. Failure to heed such constructive notice is evidence of bad faith. Young Genius Software AB v. MWD, James Vargas,
WIPO Case No. D2000-0591 (respondent had a duty to check on the availability of complainant's trademark and failure to do so was evidence of bad faith).
The Complainant submits that it has no control over the nature and quality of any goods or services marketed or provided via the disputed domain name or any other activities that the Respondent may engage in with respect to the domain name. The Complainant submits that in the circumstances the Respondent's activity has no doubt deceived, and will certainly continue to deceive, Internet users; that the Respondent's activity has diluted and diminished the valuable goodwill associated with Complainant's REDTUBE mark; and any illegal activity occurring at website to which the disputed domain name resolves may tarnish the REDTUBE mark.
The Complainant finally submits that the Respondent's bad faith registration and use of the disputed domain name is demonstrated by each of the following: (a) the Respondent's registration and use of the disputed domain name to redirect and divert Internet users to third-party web sites in exchange for advertising revenues; (b) the Respondent's registration and use of the disputed domain name after having actual and constructive notice of Complainant's rights in the REDTUBE mark; and (c) the Respondent's lack of any rights or legitimate interests in the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(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 has furnished sufficient evidence of its rights in the REDTUBE trademark and service mark both through the above-mentioned trademark registrations and at common law through extensive use of the mark in the provision of adult website content since at least 2007.
This Panel accepts the Complainant’s arguments that the disputed domain name <redtubeporn.com> is confusingly similar to the trademark REDTUBE in which the Complainant has rights. The disputed domain name is composed of four elements viz. the words “red”, “tube”, and “porn” and the gTLD “.org” extension. The Complainant’s trademark is distinctive and is composed of the words “red” and “tube” in combination. It is well established under the Policy that the gTLD “.org” extension may be disregarded for the purpose of the comparison under this element of the Policy.
The Panel finds that the additional word “porn” does not distinguish the domain name from the Complainants mark. Taken in combination the words “red” and “tube” constitute a distinctive trademark and are the dominant element of the disputed domain name because the word “porn” is generic and descriptive. In the present context the element “porn” is not only descriptive of the content on the Respondent’s website, to which the disputed domain name resolves, but is also descriptive of the business in which the Complainant has acquired a significant goodwill.
This Panel finds therefore that the disputed domain name is confusingly similar to the Complainant’s trademark and the Complainant has therefore succeeded in the first element, paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant has provided evidence that it is the owner of the REDTUBE mark and has acquired a substantial reputation, around the world, in the trademark through its website to which its <redtube.com> domain name resolves. The Complainant’s website has received billions of visitors and is ranked among the most popular websites in the world. The Complainant has asserted that it has not granted any rights or licence to the Respondent to use its trademark or any mark or domain name similar to its trademark. Furthermore on the evidence available the Respondent is not known by the disputed domain name <redtubeporn.org> or any similar name. The Respondent is making a commercial use of the disputed domain name, but not a legitimate noncommercial use as it is taking advantage of the Complainant’s trademark and reputation and such use cannot be considered fair or legitimate.
It is well established that when a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in the domain name the burden of production shifts to the respondent. In the present case as there has been no Response filed and no other communications from the Respondent. Therefore the Panel finds that the Respondent has failed to discharge the burden and the Complainant is entitled to succeed in the second element, paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
On the evidence before this Panel the Complainant has acquired a substantial reputation in the REDTUBE mark in the provision of adult content materials over the Internet. This Panel accepts the Complainant’s argument that it is unlikely that the Respondent was not aware of the REDTUBE mark and the Complainant’s associated reputation when the disputed domain name was registered. In fact, the adoption of the combination of the Complainant’s REDTUBE trademark and the word “porn” as a domain name indicates that not only was the Respondent aware of the Complainant’s reputation, but that the disputed domain name was chosen because of its similarity with the Complainant’s trademark, website address and domain name.
This Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith order to take predatory advantage of the Complainant’s reputation.
Furthermore on the evidence before this Panel, it appears that by maintaining the website to which the disputed domain name resolves the Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant's REDTUBE mark as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on that web site.
In the circumstances, this Panel finds that the disputed domain name was registered and is being used in bad faith and having succeeded therefore in the third and final element in paragraph 4 of the Policy, the Complainant is entitled to succeed in this Complainant.
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 <redtubeporn.org> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Date: March 25, 2013
