WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PDPUK Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Muhammad Latif, bilil tr

Case No. D2020-2911

1. The Parties

The Complainant is PDPUK Limited, United Kingdom, represented by Advokatfirman GWZ AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Muhammad Latif, bilil tr, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <pewdiepiemerch.net> (“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 November 4, 2020. On November 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 12, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 13, 2020.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 16, 2020.

The Center appointed Marina Perraki as the sole panelist in this matter on January 5, 2021. 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

Complainant is a private limited company, incorporated under the laws of England and Wales. Complainant’s director and ultimate beneficial owner is known as “PewDiePie” and is a content creator and YouTube-streamer. The PewDiepie YouTube-channel, active since 2010, at “www.youtube.com/user/PewDiePie”, has approximately 107 million individual subscribers from all over the world, is one of the most subscribed channels on YouTube and attracts several billions views per year.

Complainant is the owner of the following PEWDIEPIE trademarks:

- European Union Trade Mark registration No. 011197837, PEWDIEPIE (word), filed on September 3, 2012 and registered on March 25, 2013, for goods and services in International classes 9, 16, 25, and 41, and
- United States of America trademark registration No. 4424201, filed on September 12, 2012, with priority date September 3, 2012, and registered on October 29, 2013 for goods and services in International classes 9, 16, 25, and 41.

The Domain Name was registered on March 17, 2020 and leads to a website, which eminently displays the trademark of Complainant and offers for sale products bearing Complainant’s trademark PEWDIEPIE in their website descriptions and/or on them, products that have the face of Complainant’s director and beneficial owner printed on them, and/or other third party trademarks (the Website). Per Complainant, goods sold on the Website do not appear to be genuine. The Website refers extensively to Complainant and contains a disclaimer, which is hardly visible.

Complainant licenses its trademark PEWDIEPIE for officially licensed merchandise, which includes clothing products. Complainant’s licensed products are sold through third party websites.

On September 21, 2020, Complainant sent a cease and desist letter to Respondent, to which Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:

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

(ii) 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.

A. Identical or Confusingly Similar

The Domain Name incorporates Complainant’s mark PEWDIEPIE in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The addition of the word “merch”, short for “merchandise”, does not prevent a finding of confusing similarity as the PEWDIEPIE mark remains clearly distinguishable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.net” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the PEWDIEPIE mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

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

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Furthermore, as Complainant demonstrates, the Domain Name resolves to a website containing content that suggests falsely that the Website is that of Complainant or of an affiliated entity or of an authorized partner of Complainant.

Per Complaint, Respondent is not an affiliated entity or an authorised distributor or partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Name by Respondent.

A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.)

These requirements are not cumulatively fulfilled in the present case. The Domain Name falsely suggests that the Website is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduces, without authorization by Complainant, Complainant’s trademark, sells goods under third party trademarks and has a disclaimer of lack of association with Complainant, which is hardly visible. Lastly, per Complaint, goods sold on the Website or at least the majority thereof appear to be counterfeit. Use of a domain name for illegal activity (e.g., the sale of counterfeit goods) can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).

Furthermore, the use of a domain name, which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; WIPO Overview 3.0, section 2.5).

In addition, the Domain Name consists of Complainant’s mark together with the word “merch”, and thus carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s mark PEWDIEPIE and its director and beneficial owner under the same name, is well-known in the field of content creation and streaming. Because the PEWDIEPIE mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Diorv.Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of the PEWDIEPIE mark on the Internet, also through its director and beneficial owner’s YouTube channel (Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of PEWDIEPIE (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

The Domain Name incorporates in whole Complainant’s mark plus the additional word “merch” that corresponds to the merchandise sold under Complainant’s trademark by Complainant’s licensees. The use of the word “merch” in the Domain Name therefore increases the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry.

The Website content, eminently displaying Complainant’s trademark and offering for sale goods identical/similar to those of Complainant’s licensees and bearing Complainant’s trademarks, further supports knowledge of Complainant and its field of activity.

As Complainant demonstrated, the Website content is targeting Complainant’s trademark, as it prominently displays Complainant’s PEWDIEPIE trademark and products identical/similar to those of Complainant’ s licensees and bearing Complainant’s trademarks. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367). Indeed, per Complainant, Complainant’s Director and beneficial owner has received a large number of questions and complaints regarding the Domain Name and the Website from his fans.

As regards to bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name is used to resolve to a website, which prominently displays Complainant’s registered trademark, offering for sale identical/similar goods to those offered by Complainant’s licensees, bearing Complainant’s trademarks, thereby giving the false impression that it is operated by Complainant or a company affiliated to Complainant or an authorised reseller or partner of Complainant. Considering these circumstances, the fact that the Website contains a disclaimer that is hardly visible could be considered as an admission by Respondent that users may be confused by the Website and it further reinforces Respondent’s bad faith (WIPO Overview 3.0, section 3.7).

The Domain Name operates therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This supports the finding of bad faith use as described under paragraph 4(b)(iv) of the Policy (AB Electrolux v. Begad Negad, WIPO Case No. D2014-2092; Aktiebolaget Electrolux v. electroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon,WIPO Case No. D2014-0487; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388; and WIPO Overview 3.0, section 3.4).

Per Complaint, goods sold in the Website appear not to be genuine. The selling of counterfeit products on the Website under Complainant’s mark tarnishes the reputation of Complainant. This constitutes further evidence of bad faith (WIPO Overview 3.0, section 3.12).

Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.

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 <pewdiepiemerch.net> be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: January 19, 2021