BigBang Media LLC v. Genadiy Ivanov
Claim Number: FA2107001956922
Complainant is BigBang Media LLC (“Complainant”), represented by Matthew Shayefar of Law Office of Matthew Shayefar, PC, California, USA. Respondent is Genadiy Ivanov (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spankbang.surf>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2021; the Forum received payment on July 27, 2021.
On July 28, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <spankbang.surf> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 July 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2021 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@spankbang.surf. Also on July 28, 2021, 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 August 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 name be transferred from Respondent to Complainant.
A. Complainant
The Complainant provides online adult content and media. Complainant has rights in the SPANKBANG trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. 5,550,377, registered Aug. 28, 2018), and the Canadian Intellectual Property Office (“CIPO”) (e.g., CIPO Reg. 1889004, registered Oct. 9, 2020). Respondent’s <spankbang.surf> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates the mark in its entirety and adds the “.surf” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <spankbang.surf> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SPANKBANG trademark in the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts competing adult content and advertisements on the disputed domain name’s resolving website.
Respondent registered and uses the <spankbang.surf> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by hosting competing adult content and advertisements on the disputed domain name’s resolving website. Furthermore, Respondent had actual knowledge of Complainant’s rights in the SPANKBANG trademark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following national trademark registrations:
U.S. national trademark registration No. 5,550,377 SPANKBANG (word), registered August 28, 2018 for services in Intl. Classes 38, 41 and 42; and
Canadian national trademark registration No. 1889004 SPANKBANG (word), registered October 9, 2020 for services in classes 38, 41 and 42.
The <spankbang.surf> domain name was registered on December 15, 2020.
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 Complainant claims rights in the SPANKBANG trademark through its registration with the USPTO (e.g. USPTO Reg. 5,550,377, registered Aug. 28, 2018), and the Canadian Intellectual Property Office (“CIPO”) (e.g., CIPO Reg. 1889004, registered Oct. 9, 2020).
Registration of a trademark with the USPTO or CIPO is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”); see also BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided the Panel with copies of its registration for the trademark in both USA and Canada. Therefore, the Panel finds that Complainant has rights in the trademarks per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <spankbang.surf> domain name is identical or confusingly similar to Complainant’s SPANKBANG trademark. Under Policy ¶ 4(a)(i), adding a gTLD is generally insufficient in differentiating a disputed domain name from the mark it fully incorporates. See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). The Panel notes that the disputed domain name incorporates Complainant’s SPANKBANG trademark in its entirety and only adds the “.surf” gTLD. Therefore, the Panel finds Respondent’s domain name is in fact identical to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent is not commonly known by the <spankbang.surf> domain name, nor has Respondent received license or authorization to use Complainant’s SPANKBANG trademark under Policy ¶ 4(c)(ii). Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Genadiy Ivanov”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its SPANKBANG trademark in the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <spankbang.surf> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to offer competing services and advertisements is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of the disputed domain name’s resolving website, which features adult content and advertisements for other websites with adult content. Therefore, the Panel agrees with the Complainants conclusion, and finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant claims that Respondent registered and uses the <spankbang.surf> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to offer competing services and advertisements is generally considered evidence of bad faith disruption for commercial gain. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features adult media content, as well as advertisements for other domain names with adult content. Therefore, the Panel agrees with the Complainant, and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant argues that Respondent registered the <spankbang.surf> domain name with actual knowledge of Complainant’s rights in the SPANKBANG trademark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, while incorporating a well-known/registered mark into a domain name, as well as Respondent’s use of the disputed domain name’s resolving website, may demonstrate that a Respondent had actual knowledge of the mark at the time of registration. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). As noted above, the disputed domain name incorporates the SPANKBANG trademark in its entirety, while the resolving website contains similar/competing adult content and advertisements. Considering the merely identical use of the Respondent, the Panel finds that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the SPANKBANG mark under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spankbang.surf> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 30, 2021
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