national arbitration forum

 

DECISION

 

Sunlane Media, LLC v. Pinoy Lite

Claim Number: FA1309001519858

PARTIES

Complainant is Sunlane Media, LLC (“Complainant”), represented by Allan B. Gelbard of The Law Offices of Allan B. Gelbard, California, USA.  Respondent is Pinoy Lite (“Respondent”), Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pinoyliterotica.com>, registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2013; the National Arbitration Forum received payment on September 18, 2013.

 

On September 23, 2013, CSL Computer Service Langenbach GmbH d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <pinoyliterotica.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com and that Respondent is the current registrant of the names.  CSL Computer Service Langenbach GmbH d/b/a Joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a Joker.com 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 September 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2013 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@pinoyliterotica.com.  Also on September 27, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions:

  1. Policy ¶ 4(a)(i)
    1. Complainant, Sunlane Media, LLC, produces and distributes the most widely viewed erotic story website on the Internet, <Literotica.com>. In addition to erotic stories, Complainant also offers pictures, adult toys, videos, downloads, a Bulletin Board service, webcams, personals, and links to other adult-oriented websites. See Complainant’s Exhibit 3.
    2. Complainant owns the LITEROTICA mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,401,909 registered November 7 2000).
    3. The <pinoyliterotica.com> domain name is confusingly similar to Complainant’s LITEROTICA mark because it fully appropriates Complainant’s mark and merely adds the term “pinoy.”
  2. Policy ¶ 4(a)(ii)
    1. Respondent is not commonly known as <pinoyliterotica.com>.
    2. Respondent’s use of the disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii), because the domain name resolves to a commercial website that offers adult entertainment and erotica services that directly compete with those offered by Complainant under its LITEROTICA mark.
  3. Policy ¶ 4(a)(iii)
    1. Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii), because the domain name targets potential customers of Complainant and redirects them to Respondent’s own competing erotica site, thus disrupting Complainant’s business.
    2. Respondent has also demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv) because the disputed domain name creates a likelihood that the resolving website will be confused as a website run by or affiliated with Complainant. Respondent is profiting from this confusion in the form of increased business.

 

B. Respondent

     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

1. Complainant is a United States company that produces and distributes the most widely viewed erotic story website on the Internet, <literotica.com>. In addition to erotic stories, Complainant also offers pictures, adult toys, videos, downloads, a Bulletin Board service, webcams, personals, and links to other adult-oriented websites.

 

2. Complainant owns the LITEROTICA mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,401,909 registered November 7 2000).

 

      3.  Respondent registered the disputed domain name on March 18, 2007.

The domain name resolves to a commercial website that offers adult entertainment and erotica services that directly compete with those offered by Complainant under its LITEROTICA mark.

 

DISCUSSION

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant states that it produces and distributes the most widely viewed erotic story website on the Internet, <literotica.com>, which offers erotic stories, pictures, adult toys, videos, downloads, a Bulletin Board service, webcams, personals, and links to other adult-oriented websites. See Complainant’s Exhibit 3. Complainant further asserts that it owns the LITEROTICA mark through registrations with the USPTO (e.g., Reg. No. 2,401,909 registered November 7 2000). The Panel notes that it has previously been determined that a complainant’s registration of a mark with the USPTO sufficiently establishes its rights in the mark under the Policy. See, e.g., Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). It has also been determined that a complainant need not register its mark in the respondent’s country of residence in order to sufficiently establish its rights in the mark under Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, the Panel finds that Complainant is the owner of the LITEROTICA mark pursuant to Policy ¶ 4(a)(i). 

 

The second question that arises is whether the disputed domain name is identical or confusingly similar to the LITEROTICA mark Complainant alleges that the <pinoyliterotica.com> domain name is confusingly similar to Complainant’s LITEROTICA mark because it fully appropriates Complainant’s mark and merely adds the term “pinoy.” The Panel also notes that the disputed domain name adds the generic top-level domain (“gTLD”) “.com.” However, previous panels have found that the addition of a gTLD is irrelevant for the purposes of determining whether a disputed domain name is confusingly similar to a complainant’s mark under the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). It has also previously been determined that a domain name that fully incorporates the complainant’s mark and merely adds a generic or geographic term is not distinct from the mark under the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to the complainant’s registered SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS mark). In the instant proceedings, the Panel holds that the <pinoyliterortica.com> fully appropriates Complainant’s LITEROTICA mark and merely adds “pinoy,” a generic or geographic term. Accordingly, the Panel holds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

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 name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).

 

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 LITEROTICA mark and has merely added the word “pinoy” to it; 

 

(b) Respondent has then used the domain names to resolve to a website that

offers adult entertainment and erotica services that directly compete with those offered by Complainant under its LITEROTICA mark;

 

(c)Respondent has engaged in these activities without the consent or approval of Complainant;

 

(d) Complainant argues that Respondent is not commonly known as <pinoyliterotica.com>. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Pinoy Lite,” and the at-issue website states, “Welcome to Pinoy Literotica.” However, the Panel notes that in AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panel held that the respondent was not commonly known by the disputed domain name where, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name. Similarly, in Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003), the panel held that although the respondent held itself out as “TargetPills.com” on its website, there was no evidence that the respondent was actually or commonly known by the disputed domain name. The Target Brands, supra, panel further reasoned that the fact that the respondent did not respond to the complaint suggested that respondent was not legitimately known by the name posted on its website. Id. Pursuant to the foregoing precedent, the Panel determines that although Respondent holds itself out as “Pinoy Lite” and “Pinoy Literotica” on its WHOIS information and the at-issue website, there is no other evidence to suggest that Respondent is actually commonly known by the disputed domain name, and the fact that Respondent failed to respond tends to suggest that Respondent is not actually commonly known as <pinoyliterotica.com>. Accordingly, the Panel holds that Respondent is not commonly known as <pinoyliterotica.com> pursuant to Policy ¶ 4(c)(ii);

 

(e) Complainant next alleges that Respondent’s use of the disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii), because the domain name resolves to a commercial website that offers adult entertainment and erotica services that directly compete with those offered by Complainant under its LITEROTICA mark. See Complainant’s Exhibits 3 & 10. A screenshot provided by Complainant suggests that Respondent’s website offers links to erotic stories including a “section on first time sex, sex with teacher, about orgy experience, about cheating wife…” See Complainant’s Exhibit 10. It has previously been determined that the use of a disputed domain name to run a website that offers products that directly compete with those offered by the complainant is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Pursuant to this precedent, the Panel determines that Respondent’s website in the instant case offers erotica products that directly compete with those offered by Complainant under its LITEROTICA mark, and that this use is not protected as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(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 name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant suggests that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii), because the domain name targets potential customers of Complainant and redirects them to Respondent’s own competing erotica site, thus disrupting Complainant’s business. See Complainant’s Exhibits 3 & 10. As discussed above, a screenshot provided by Complainant suggests that the website resolving from the <pinoyliterotica.com> domain name offers links to erotic stories including a “section on first time sex, sex with teacher, about orgy experience, about cheating wife…” See Complainant’s Exhibit 10. The Panel notes that in Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), a previous panel held that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii). In the instant proceedings, the Panel determines that the <pinoyliterotica.com> domain name is substantially similar to Complainant’s LITEROTICA mark because the domain name fully incorporates the mark and merely adds the word “pinoy.” Further, the Panel determines that as in Spark Networks, supra, Respondent is using a substantially similar domain name to offer an adult-oriented website that directly competes with that of Complainant. Therefore, the Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).

 

Secondly, Complainant also suggests that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv), because the disputed domain name creates a likelihood that the resolving website will be confused as a website run by or affiliated with Complainant, and Respondent is commercially profiting from this confusion in the form of increased business. It has previously been determined that a respondent demonstrates bad faith attraction for commercial gain under Policy ¶ 4(b)(iv) where the domain name resolves to a commercial website offering services that directly compete with those of the complainant, such that Internet users are likely to be confused into believing that the complainant is the source of the site. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users and is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). In the instant case, the Panel infers that the at-issue website is commercial in nature. Under the foregoing precedent, as the Panel determines that the <pinoyliterotica.com> domain name and its resolving website are likely to confuse Internet users into believing that Complainant sponsors the website,  the Panel consequently holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).

 

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 name using the LITEROTICA mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name 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.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pinoyliterotica.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  October 23, 2013

 

 

 

 

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