Tenza Trading Ltd. v. KOSTYA SHALKOV
Claim Number: FA1505001620798
Complainant is Tenza Trading Ltd. (“Complainant”), represented by Anna M. Vradenburgh of Apogee Law Group, California, USA. Respondent is KOSTYA SHALKOV (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aporntube.net>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 21, 2015; the Forum received payment on May 21, 2015.
On May 26, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <aporntube.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2015 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@aporntube.net. Also on June 2, 2015, 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 June 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant has rights in the PORNTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,936,197, registered on March 29, 2011).
2. Complainant uses the PORNTUBE mark in connection with entertainment services, namely, providing a website featuring adult entertainment.
3. Respondent’s <aporntube.net> domain name, registered on March 1, 2012, is confusingly similar to Complainant’s PORNTUBE mark because it incorporates the mark entirely and is differentiated by only the additions of the letter “a” and the generic top-level domain (“gTLD”) “.net.”
4. Respondent is not commonly known by the disputed domain name as the WHOIS information lists “KOSTYA SHALKOV” as registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name.
5. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it offers services competing with Complainant.
6. Respondent uses the resolving website to capitalize on the confusion of Internet users seeking Complainant’s website, and in doing so, profits commercially per Policy ¶ 4(b)(iv).
7. Respondent registered the <aporntube.net> domain name with actual or constructive knowledge of Complainant’s rights in the PORNTUBE mark, evincing bad faith via a non-exclusivity analysis of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PORNTUBE mark. Respondent’s domain name is confusingly similar to Complainant’s PORNTUBE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <aporntube.net> domain name, and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant uses the PORNTUBE mark in conjunction with its business in providing adult entertainment services. Complainant has rights in the PORNTUBE mark through its registration with the USPTO (Reg. No. 3,936,197, registered on March 29, 2011). Registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even where Complainant and Respondent operate or reside in different countries. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has rights in the PORNTUBE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <aporntube.net> domain name is confusingly similar to Complainant’s PORNTUBE mark because it is differentiated by only the additions of the letter “a” and the gTLD “.net.” Top-level domains are irrelevant to Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Also, simply adding a single letter to a mark in a domain name is insufficient to differentiate the mark and domain name. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <aporntube.net> domain name is confusingly similar to Complainant’s PORNTUBE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent is not commonly known as the disputed domain name. The WHOIS information lists “KOSTYA SHALKOV” as registrant of record for the disputed domain name, and that Respondent has failed to provide any evidence to indicate being commonly known by the domain name. On this record, Complainant has shown that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Accordingly, the Panel finds that Respondent is not commonly known by the <aporntube.net> domain name under Policy ¶ 4(c)(ii).
Next, Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or legitimate and noncommercial fair use because Respondent uses the resolving website to compete with Complainant and to presumably commercially gain through its inclusion of third-party hyperlinks which divert Internet users to competitors of Complainant. Complainant contends that Respondent’s resolving website offers services substantially similar to Complainant’s in the form of videos and photographs of adult entertainment. A competing use and presumed commercial gain via click-through hyperlinks of a domain name that is confusingly similar or identical to a mark shows a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. 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).”); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel agrees that Respondent has failed to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Pursuant to Policy ¶ 4(b)(iv), Respondent is alleged by Complainant to be attracting, for commercial gain, Internet users to its <aporntube.net> domain name by creating confusion as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the website or location. Complainant has provided documentation of Respondent’s using the website in conjunction with a referral service, which presumably pays Respondent for directing Internet traffic. Complainant argues that Respondent’s use of the website, the confusingly similar domain name, and the association with a referral service indicates Respondent’s bad faith registration and use. The Panel agrees. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel finds that Respondent registered and used the <aporntube.net> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the PORNTUBE mark. Given the almost identical wording of the domain name compared to Complainant’s mark it is easily inferred that Respondent had actual knowledge of Complainant’s rights when the domain name was registered. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
The Panel finds Complainant has satisfied 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 <aporntube.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 29, 2015
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