WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MG Licensing Europe S.A.R.L. v. WhoisGuard Protected / Andreas Mueller

Case No. D2019-0550

1. The Parties

The Complainant is MG Licensing Europe S.A.R.L. of Luxembourg, Luxembourg, represented by SafeNames Ltd., United Kingdom.

The Respondent is WhoisGuard Protected of Panama, Panama / Andreas Mueller of Sachsen, Germany.

2. The Domain Name and Registrar

The disputed domain name <mydirtyhobby-stream.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2019. On March 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2019, 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 March 18, 2019, 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 March 21, 2019.

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 March 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2019.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on April 29, 2019. 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 trademark MY DIRTY HOBBY and has used the mark in association with its adult entertainment business since 2006, primarily through its website at “www.mydirtyhobby.com”.

The Complainant owns several trademark registrations for the trademark MY DIRTY HOBBY, including the following:

- International Trademark Registration No. 1207304 for MY DIRTY HOBBY since August 22, 2013;
- European Trademark Registration No. 005686787 for MY DIRTY HOBBY since December 3, 2007;
- Swiss Trademark Registration No. 646301 for MY DIRTY HOBBY since July 17, 2013; and,
- Canadian Trademark Registration No. TMA 974,923 for MY DIRTY HOBBY since July 4, 2017.

The Respondent registered the disputed domain name <mydirtyhobby-stream.com> on June 18, 2018. At the time the Complaint was filed, the disputed domain name reverted to a website which provides adult video content.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s registered trademark MY DIRTY HOBBY because it contains the entirety of the Complainant’s trademark. The only additional element in the disputed domain name is the descriptive word “stream”, which does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.

The Complainant further submits that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name MY DIRTY HOBBY and does not have any trademark rights to the term. The Complainant has not authorized or licensed the Respondent to use its registered trademark. The Respondent is using the disputed domain name in association with a website which features competing products and services which are similar to those of the Complainant.

The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant’s earliest trademark registration predates the registration of the disputed domain name by almost twelve years. Further, the Respondent is using the disputed domain name in association with identical copies of the Complainant’s logos and video content. All of these factors suggest that the Respondent was fully aware of the Complainant’s rights in the MY DIRTY HOBBY trademark. Accordingly, the Respondent must have registered and is using the <mydirtyhobby-stream.com> in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

(ii) the Respondent has no rights or legitimate interest 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 Panel finds that the Complainant does have recognizable trademark rights in the trademark MY DIRTY HOBBY by virtue of its trademark registrations listed in paragraph 4 of this Decision.

The Panel finds that the disputed domain name <mydirtyhobby-stream.com> is confusingly similar to the Complainant’s registered trademark MY DIRTY HOBBY, as the disputed domain name replicates the Complainant’s registered trademark except for the addition of the word “stream”. The addition of this descriptive word to a distinctive mark does not prevent confusing similarity in any way.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a [prima facie] case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests. The Complainant clearly owns rights in the registered mark MY DIRTY HOBBY as noted in paragraph 4 of this Decision. The Complainant has used its trademark MY DIRTY HOBBY since 2006. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was aware of the Complainant’s trademark and website services, particularly because the Respondent chose to adopt a domain name that combines the descriptive word “stream”, along with content and logos which replicate those of the Complainant.

The Respondent was not authorized or licensed to use the Complainant’s trademark, and the Respondent is not commonly known by the mark MY DIRTY HOBBY.

In this situation, the burden shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As set out above, the Panel is prepared to find that the Respondent was aware of the Complainant’s trademark rights in the MY DIRTY HOBBY mark when it registered the disputed domain name <mydirtyhobby-stream.com>. This conclusion is supported by the fact that the Respondent is using the disputed domain name in association with a website which features identical services and products as those of the Complainant. Furthermore, the Respondent has chosen to copy the Complainant’s logos and video content on the website. This conduct reflects a clear intention to interfere with the Complainant’s business in a manner which is abusive under the Policy. The Respondent has failed to provide any evidence to explain his conduct.

The Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.

The Complainant has therefore satisfied the requirements under 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 <mydirtyhobby-stream.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: May 8, 2019