Licensing IP International S.ŕ.r.l. v. maritza hernandez
Claim Number: FA2010001915717
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is maritza hernandez (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brazzers3x.org> and <brazzers3x.pro>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2020; the Forum received payment on October 3, 2020.
On October 5, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <brazzers3x.org> and <brazzers3x.pro> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brazzers3x.org, postmaster@brazzers3x.pro. Also on October 13, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Over the years, and through efforts and acquisitions, the Complainant and its corporate affiliates have gained a strong position in the online adult entertainment market. Complainant has rights in the BRAZZERS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3621570, registered May 19, 2009). See Compl. Appendix 3. Respondent’s <brazzers3x.org> and <brazzers3x.pro> domain names are identical or confusingly similar to Complainant’s BRAZZERS mark as they consist of Complainant’s mark followed by the generic or descriptive expression “3x” and the “.org” and “.pro” generic top-level domains (“gTLDs”).
Respondent lacks rights or legitimate interests in the <brazzers3x.org> and <brazzers3x.pro> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the BRAZZERS mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as the <brazzers3x.pro> domain name automatically redirects internet users to the website associated with the <brazzers3x.org> domain name. Respondent registered the disputed domain names to misleadingly divert consumers away from Complainant’s website to Respondent’s own website which provides illegal reproduction of video content belonging to Complainant and Complainant’s corporate affiliate. Furthermore, Respondent diverts internet uses to Respondent’s own website for Respondent’s financial gain.
Respondent registered and uses the <brazzers3x.org> and <brazzers3x.pro> domain names in bad faith. Respondent uses the disputed domain names to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website for Respondent’s commercial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights to the BRAZZERS mark prior to registering the disputed domain names evidenced by the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Luxembourg company that is a leading participant in the online adult entertainment market.
2. Complainant has established its trademark rights in the BRAZZERS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,621,570, registered May 19, 2009).
3. Respondent registered the <brazzers3x.org> domain name on February 29, 2020 and the <brazzers3x.pro> domain name on September 10, 2019.
4. Respondent registered the disputed domain names to divert internet users away from Complainant’s website to Respondent’s own website which provides illegal reproduction of video content belonging to Complainant and its corporate affiliate. Respondent has also caused the <brazzers3x.pro> domain name to redirect internet users to the website associated with the <brazzers3x.org> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BRAZZERS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3621570, registered May 19, 2009). See Compl. Appendix 3. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the BRAZZERS mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BRAZZERS mark. Complainant argues Respondent’s <brazzers3x.org> and <brazzers3x.pro> domain names are identical or confusingly similar to Complainant’s BRAZZERS mark as they merely add the generic or descriptive expression “3x” and the gTLDs “.org” and “.pro.” The addition of a generic or descriptive term and a gTLD fails to distinguish sufficiently a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain as the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BRAZZERS trademark and to use it in its domain names, merely adding the generic or descriptive expression “3x”;
(b) Respondent registered the <brazzers3x.org> domain name on February 29, 2020 and the <brazzers3x.pro> domain name on September 10, 2019;
(c) Respondent registered the disputed domain names to divert internet users away from Complainant’s website to Respondent’s own website which provides illegal reproduction of video content belonging to Complainant and its corporate affiliate. Respondent has also caused the <brazzers3x.pro> domain name to redirect internet users to the website associated with the <brazzers3x.org> domain name;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <brazzers3x.org> and <brazzers3x.pro> domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the BRAZZERS mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Maritza Hernandez,” and there is no other evidence to suggest that Respondent was authorized to use the BRAZZERS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <brazzers3x.org> and <brazzers3x.pro> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to misleadingly divert consumers away from Complainant’s website to Respondent’s own website which provides illegal reproduction of video content belonging to Complainant and Complainant’s corporate affiliate. Complainant argues Respondent does this for Respondent’s financial gain. Using a confusingly similar domain name to divert internet users to a respondent’s website featuring illegally reproduced content for a respondent’s financial gain may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.). Here, Complainant provides screenshots of Respondent’s website that resolve from both disputed domain names, arguing the featured videos are illegal and unauthorized copies of videos Complainant and Complainant’s corporate affiliate produce and release. See Compl. Appendix 10. Complainant’s screenshots also show the advertisements present on the website. See Compl. Appendix 15. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent registered and uses the <brazzers3x.org> and <brazzers3x.pro> domain names in bad faith as Respondent uses the disputed domain names to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website for Respondent’s financial gain. Using a confusingly similar domain name to divert internet users to a respondent’s competing website for its financial gain can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Complainant argues Respondent’s resolving website provides illegal, unauthorized copies of videos for which consumers pay Complainant and Complainant’s corporate affiliate, and thus Respondent competes with Complainant. Complainant also provides screenshots of Respondent’s resolving website and highlights the advertisements present. See Compl. Appendix 15. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends Respondent registered and uses the <brazzers3x.org> and <brazzers3x.pro> domain names in bad faith as Respondent had actual knowledge of Complainant’s rights to the BRAZZERS mark prior to registration of the disputed domain names based on the famous nature of the mark. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant argues that Complainant’s mark has achieved a significant degree of public recognition in practically all parts of the world where high-speed Internet is available. Complainant provides Google Analytics and Google Trends reports which show Complainant’s website receives millions of views per day and is frequently searched for. See Compl. Appendix 11. Therefore, the Panel finds Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BRAZZERS mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brazzers3x.org> and <brazzers3x.pro> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 9, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page