WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FC2, Inc. v. Host Master, 1337 Services LLC

Case No. D2019-3194

1. The Parties

The Complainant is FC2, Inc., United States of America, represented by DSA Legal Solutions, United States of America.

The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <fc2ppv.net> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2019. On December 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 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 January 9, 2017 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 January 10, 2020.

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 January 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2020.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 18, 2020. 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 started its activities as a hosting provider in the United States of America in 1999, presently providing various services such as providing space to Internet users to upload videos for profit. It is the owner of the FC2 trademark, registered in Japan, United States of America, Republic of Korea, Indonesia, Singapore, Taiwan province of China, European Union, and the Philippines (Annex D to the Complaint), holding, amongst others, the following registrations:

- Japan Trademark Registration No. 4964857 for the word and device mark FC2, registered on June 30, 2006;
- United States of America Trademark Registration No. 5046126 for the word and device mark FC2, registered on September 20, 2016;
- United States of America Trademark Registration No. 5046147 for the device mark , registered on September 20, 2016.

The disputed domain name <fc2ppv.net> was registered on July 22, 2018 and is being used in connection with a website that reproduces the Complainant’s logo and hosts videos that appear to have been obtained from the Complainant’s webpage which offers such videos for download by purchase.

5. Parties’ Contentions

A. Complainant

The Complainant asserts to provide in its webpage available at <fc2.com> a list of videos which have been uploaded by the Complainant’s users that pay for uploading those videos, being such videos made available for other users to download them by purchase.

According to the Complainant the disputed domain name incorporates the FC2 trademark with the addition of the acronym “ppv” which stands for “pay-per-view” making it confusingly similar therewith as well as capable of misleading Internet users into believing that the Respondent is associated with or related to the Complainant, what is not true.

As to the absence of rights or legitimate interests, the Complainant argues that:

i. the Respondent is not a licensee of the Complainant nor is it otherwise authorized to use the Complainant’s trademarks for any purpose;

ii. the Respondent is not commonly known by the disputed domain name, not holding established rights or legitimate interests in it;

iii. the Respondent is using the disputed domain name to host videos that have been downloaded from the Complainant’s website and is offering them for free download but earning revenues from advertisements and links to third parties’ websites;

iv. by using the Complainant’s trademark, the Respondent falsely gives the impression that the disputed domain name is affiliated with the Complainant.

As to bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent intentionally registered the disputed domain name so as to attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website at the disputed domain name, also earning undue revenues from placing pay-per-click advertisements.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name:

(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.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy.

A. Identical or Confusingly Similar

The Complainant has established rights in the FC2 trademark.

The disputed domain name <fc2ppv.net> reproduces the Complainant’s trademark, adding the “ppv” acronym, which is not capable of avoiding a finding of confusing similarity under the Policy, as recognized by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:

(i) before any notice of the dispute, 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; or

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

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In that sense, the Complainant indeed states that the Respondent is not its licensee nor has it otherwise been authorized by the Complainant to use its trademarks for any purpose.

Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborates the absence of rights or legitimate interests.

According to the evidence submitted, the Respondent is using the disputed domain name to intentionally mislead and confuse the public into believing that the Respondent is associated or affiliated with the Complainant, which cannot be considered a bona fide offering of goods or services under the Policy.

The Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed 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 the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the use of the disputed domain name seeking to create a direct affiliation with the Complainant and its business, as seen above.

Other factors that corroborate the Panel’s finding of bad faith of the Respondent are:

a. the reproduction of the Complainant’s logo in the website that resolves from the disputed domain name;

b. the indication of what appears to be false or incorrect WhoIs information, not being the Center able to contact the Respondent at the address indicated; and

c. the absence of a formal Response by the Respondent.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <fc2ppv.net> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: February 25, 2020