WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Multi Media, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Ershin Vasya

Case No. D2018-1806

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Ershin Vasya of Vladivostok, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <chatur2018.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 22, 2018.

The Center verified that the Complaint together with the amended 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 August 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2018.

The Center appointed David Taylor as the sole panelist in this matter on September 26, 2018. 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 a company with legal domicile in the United States that owns and operates the website at "www.chaturbate.com" providing for streaming adult content such as audio, visual, and audio-visual material and other adult entertainment services.

The Complainant has the following registered trade mark rights in the term CHATURBATE:

- United States Trade Mark No. 4,288,943, for the word mark CHATURBATE, registered on February 12, 2013, applied for on June 28, 2012, first used in commerce on June 30, 2011 (classes 38 and 42); and

- United States Trade Mark No. 4,988,208, for the logo CHATURBATE, registered on June 28, 2016, applied for on November 3, 2015, first used in commerce on June 30, 2011 (classes 38 and 42).

The Respondent appears to be an individual based in Russia. No additional information about the Respondent is known.

The Domain Name was registered on March 2, 2018. The Domain Name doesn’t resolve to any active website currently. According to the Complaint and relevant evidence, the Domain Name was resolving to a website displaying CHATURBATE mark and providing streaming adult content. After the Complainant sent a cease and desist letter asking the Respondent to stop using the Domain Name and to transfer it to the Complainant, the content displayed on the Domain Name was removed. Shortly thereafter, the Respondent relaunched the website and began forwarding it to a site offering streaming adult content.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has developed a strong name and reputation in relation to streaming audio and video services on the World Wide Web since at least 2011. The Complainant contends that its CHATURBATE trade mark is a distinctive indicator of the source of its services. As evidence, the Complainant has supplied a copy of its trade mark registration certificates. The Complainant also states that its rights have been recognized in other UDRP decisions.

Furthermore, the Complainant submits that it registered the <chaturbate.com> domain name on February 26, 2011 and that its website, containing the Complainant’s distinctive logo and enabling its users to stream video and audio content, is now the 108th most popular website on the World Wide Web.

In response to each of the requirements under the Policy, the Complainant asserts as follows:

(i) The Domain Name is confusingly similar to the Complainant’s trade mark

The Complainant states that at the time when the Respondent registered the Domain Name on or about March 2, 2018, the Complainant had already been using the CHATURBATE mark for several years.

The Complainant contends that the Domain Name contains the majority of the Complainant’s CHATURBATE mark and adds the generic numbers “2018” after CHATUR, followed by the generic Top-Level Domain (“gTLD”) “.com.” and therefore, the Domain Name is very similar to the Complainant’s mark within the meaning of the Policy. According to the Complainant, the Domain Name fully incorporates the unique term “CHATUR” which is the dominant portion of the Complainant’s mark and the addition of a generic reference to the current year “2018” in the Domain Name does not purge it of confusing similarity.

Furthermore, the Complainant asserts that the Respondent has obviously attempted to create a likelihood of confusion with the Complainant’s mark by using the dominant portion of the mark in the Domain Name, along with use of the Complainant’s full CHATURBATE mark on the Respondent’s website, in the attempt to divert customers to pirated content recorded from the Complainant’s website. According to the Complainant, the Respondent’s intent to infringe on the Complainant’s intellectual property rights, based on the content displayed on the website, helps demonstrate confusing similarity.

(ii) The Respondent has no rights or legitimate interests in the Domain Name

The Complainant claims that registration and use of a domain name in bad faith cannot establish rights or legitimate interests. Moreover, the Complainant argues that once the Complainant asserts that the Respondent has no rights or legitimate interests with respect to a domain name, the burden of proof then shifts to the Respondent.

The Complainant also submits that the Respondent will be unable to provide credible evidence that it has rights or a legitimate interests in the Domain Name as the Respondent has used the Domain Name on multiple occasions to compete with the Complainant, and offer similar services to those which the Complainant offers under the CHATURBATE mark. The Complainant avers that on its information and belief, the Respondent is not commonly known as “CHATURBATE” or any similar terms including typographical error variants of those terms.

Furthermore, the Complainant claims that the Domain Name has been used for commercial purposes and that the Respondent’s site initially offered the Complainant’s pirated content, and thereafter began redirecting Internet users to a website offering services similar to those provided by the Complainant, presumably for commercial gain. The Complainant adds that its mark is a novel, invented term and not a word in any language and that there is no obvious connection between CHATURBATE and streaming audio and audiovisual services. Therefore, the Complainant states that it is entitled to the strongest amount of trade mark protection. According to the Complainant, not only is the Respondent incapable of good faith use of the Domain Name, but it is intentionally profiting from the goodwill the Complainant has established in the CHATURBATE mark.

(iii) The Domain Name was registered and is being used in bad faith

The Complainant argues that the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating confusion based on minor modifications of the Complainant’s Mark.

Furthermore, the Complainant submits that because of the fact that the Complainant has used the CHATURBATE mark in connection with a website offering streaming video and audio for several years and the Respondent’s website has directed to different adult-oriented social networking websites offering similar services, it is inconceivable that the Respondent was not aware of the Complainant’s mark when the Respondent registered the Domain Name.

The Complainant also makes reference to a previous UDRP case in which the domain name <chaturbate2018.com> was transferred to the Complainant. The Complainant suspects that the Respondent in the present case is affiliated with the domain name <chaturbate2018.com>.

The Complainant avers that Respondent’s failure to respond to Complainant’s cease and desist letters is further evidence of bad faith.

Moreover, according to the Complainant, the CHATURBATE brand, as used with the relevant services, is unique and arbitrary such that it is unlikely that the Respondent devised the term “chatur” on its own.

The Complainant submits that the Respondent’s registration and use of the Disputed Domain Name was clearly designed to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of the Respondent’s infringing websites and that this is particularly true since the Respondent’s websites offered adult-oriented live webcam services similar to the Complainant’s.

Finally, the Complainant contends that the Respondent’s use of a privacy service prior to the Complainant filing this proceeding is additional evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a 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. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in the term CHATURBATE. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name incorporates the dominant part of the Complainant's CHATURBATE trade mark. See section 1.7 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Moreover, the Panel finds that the addition of a generic reference to the current year “2018” in the Domain Name does not purge it of confusing similarity.

Furthermore, it is widely accepted that the “.com” gTLD is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of his default, the Respondent has failed to rebut such a showing.

The Respondent is not affiliated or connected in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its CHATURBATE trade mark. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent’s previous use of the Domain Name which is confusingly similar the Complainant’s trade mark for a website offering identical or similar services to those for which the Complainant’s trade mark has been registered, mainly streaming of audio, visual and audiovisual material via a global computer network, cannot constitute a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. See, for instance, America Online, Inc. v. XianfengFu, WIPO Case No. D2000-1374 (holding that “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of website using a domain name which is confusingly similar to the complainant’s mark and for the same business”). Furthermore, the Domain Name was previously used in such a way that demonstrates that the Respondent was seeking to take advantage of the Complainant’s rights and therefore such use cannot be considered legitimate noncommercial or fair use of the Domain Name, in accordance with paragraph 4(c)(iii) of the Policy.

The Respondent’s current use of the Domain Name to resolve to an inactive web page cannot be considered use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name.

Finally, the Respondent’s lack of rights or legitimate interests in the Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

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

The Complainant’s trade mark rights in CHATURBATE in connection with streaming of audio, visual and audiovisual material via a global computer network significantly predate the registration date of the Domain Name. As described above, the Complainant’s rights date back to 2011 whereas the Domain Name was registered in 2018. Furthermore, the Domain Name consists of the dominant part of the Complainant’s CHATURBATE trade mark in conjunction with a generic reference to the current year “2018”. Given this, together with the Respondent’s previous use of the Domain Name, as described below, the Panel is of the view that the Respondent registered the Domain Name with prior knowledge of the Complainant’s trade mark rights with the intention of taking advantage of such rights. As such, the Panel finds that the Respondent registered the Domain Name in bad faith.

The Panel further finds that the Respondent’s use of the Domain Name also constitutes bad faith. The Domain Name, which is confusingly similar to the Complainant’s trade mark, was previously being used by the Respondent to resolve to a website prominently displaying the Complainant’s trade mark and offering identical or similar services to those for which the Complainant’s trade marks have been registered. Furthermore, the associated website had the same “look and feel” as that of the Complainant’s official website. The Panel therefore finds that by using the Domain Name the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the its website, in accordance with paragraph 4(b)(iv) of the Policy. Moreover, the Panel concludes that the Respondent’s current passive holding of the Domain Name is, taking into account the overall circumstances of this case, particularly the Respondent’s previous use of the Domain Name and the Respondent’s failure to take part in the present proceedings, strong evidence of bad faith. See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that the Respondent’s passive holding of the domain name was evidence of use of the domain name in bad faith).

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith. Accordingly, the Complainant has satisfied paragraph 4(a)(iii) 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 <chatur2018.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: October 19, 2018