9349-9176 Québec Inc. v. Privacy protection service - whoisproxy.ru
Claim Number: FA1801001768428
Complainant is 9349-9176 Québec Inc. (“Complainant”), represented by Anna M. Vradenburgh of One LLP, California, USA. Respondent is Privacy protection service - whoisproxy.ru (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <manyvids.vip>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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 January 23, 2018; the Forum received payment on January 23, 2018.
On Jan 26, 2018, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <manyvids.vip> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 February 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2018 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@manyvids.vip. Also on February 1, 2018, 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 February 26, 2018, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, 9349-9176 Québec Inc., has consistently and continuously used the MANYVIDS mark in association, in part, with adult entertainment products, including on-line adult entertainment services. Complainant claims rights in the MANYVIDS mark based upon its filing for registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 87397997, filed Apr. 4, 2017). See Compl. Annex 3. Complainant also claims common law rights in the MANYVIDS mark based upon its continuous use of the mark since at least as early as October 11, 2013. Respondent’s <manyvids.vip> domain name is identical and confusingly similar to Complainant’s MANYVIDS mark.
Respondent has no rights or legitimate interests in the <manyvids.vip> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MANYVIDS mark in any manner. 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. Rather, Respondent is using the domain name in association with a website which offers downloadable adult entertainment videos, which are collected from Complainant’s website in violation of Complainant’s rights. See Compl. Annex 2. This behavior serves to compete directly with Complainant’s business.
Respondent registered and is using the <manyvids.vip> domain name in bad faith. Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Further, Respondent had actual knowledge of Complainant and its rights at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Canadian company engaged in the provision of adult entertainment products, including on-line adult entertainment services.
2. Complainant has established its common law rights in the MANY VIDS mark from at least March 11, 2013.
3. Respondent registered the disputed domain name on September 7, 2017.
4. Respondent is using the domain name in association with a website which offers downloadable adult entertainment videos, which are collected from Complainant’s website in violation of Complainant’s rights.
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 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 (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.”).
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Russian, thereby making the presumption that the language of the proceedings in Russian. However, it is open to the Panel in an appropriate case pursuant to Rule 11 to decide to continue the case with the English-language submission of the Complaint if a case is made out for that course to be followed. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent is conversant in English based upon the fact that Respondent’s target audience speaks English. The website resolving from the <manyvids.vip> domain name is entirely in English, and is directed to soliciting users of Complainant’s website <manyvids.com>. See Compl. Annex 2. Further Complainant claims Respondent responds to requests from its customers as to what content to obtain for unauthorized distribution, and boldly—in clear English—explains that its website is designed specifically to provide Complainant’s content to users for a minimum cost, and to bypass Complainant. See Compl. Annex 2, p. 8. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the present case, the Panel decides that the proceeding should be in English.
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 MANYVIDS mark based upon filing for registration of the mark with the USPTO (Ser. No. 87397997, filed Apr. 4, 2017). See Compl. Annex 3. Registration of a mark with the USPTO is sufficient to establish rights in that mark, but a pending application is not typically found to be sufficient. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). But see Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant’s pending application for registration of the MANYVIDS mark with the USPTO is insufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Since the Complainant’s USPTO registration is pending, Complainant’s rights in the MANYVIDS mark are based in common law for the purposes of Policy ¶ 4(a)(i). Complainant claims common law rights in the mark dating back to the first use of the mark in commerce on March 11, 2013. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant submits that it has continuously used the MANYVIDS mark since that date in affiliation with its website at <manyvids.com>. See Compl. Annex 4. Traditionally, a secondary meaning is also established by evidence of a complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to the complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant submits that in the month of December 2017, for example, its website saw 5.5 million unique visitors, and 49.9 million page views. See Compl. Annex 9. These numbers are backed up by <Alexa.com> rankings. See Compl. Annex 6. Complainant also points to many third-party reviews of its services. See Compl. Annex 10. As the Panel finds Complainant’s contentions to be sufficient, the Panel concludes that Complainant has established common law rights by showing the MANYVIDS mark has taken on a secondary meaning in association with Complainant’s business.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MANY VIDS mark. Complainant argues Respondent’s <manyvids.vip> domain name is identical and confusingly similar to the MANYVIDS mark, as the name consists entirely of the mark and the generic top-level domain (“gTLD”) “.vip.” Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds the <manyvids.vip> domain name is identical and/or confusingly similar to the MANYVIDS 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 name 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 MANY VIDS mark and has used it in its entirety in the domain name;
(b) Respondent registered the disputed domain name on September 7, 2017.
(c) Respondent is using the domain name in association with a website which offers downloadable adult entertainment videos, which are collected from Complainant’s website in violation of Complainant’s rights;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant argues that Respondent has no rights or legitimate interests in <manyvids.vip> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MANYVIDS mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that the WHOIS information of record identifies Respondent as “Privacy protection service – whoisproxy.ru.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <manyvids.vip> domain name;
(f)Complainant further argues Respondent’s lack of rights or legitimate interests in the <manyvids.vip> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Specifically, Complainant contends that the domain name resolves to a website which Respondent uses to offer to provide Complainant’s own videos to users in exchange for a monthly fee. See Compl. Annex 2. Complainant argues that the website explicitly brags that it provides Complainant’s videos. Id., at p. 8. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <manyvids.vip> domain name.
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.
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 submits that Respondent’s use of the <manyvids.vip> domain name to disrupt and compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to compete with and disrupt a complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); 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 claim that Respondent uses the at-issue domain name to offer Complainant’s own adult-themed videos in exchange for a monthly “donation.” See Compl. Annex 2. The Panel therefore finds that Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant also contends that in light of the fame and notoriety of Complainant's MANYVIDS mark, it is inconceivable that Respondent could have registered the <manyvids.vip> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further submits that Respondent’s use of the domain name to offer Complainant’s own videos indicates it had actual knowledge of Complainant’s rights. See Compl. Annex 2. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the domain name in bad faith.
Finally, 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 MANY VIDS 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <manyvids.vip> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: February 27, 2018
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