Licensing IP International S.à r.l. v. et al
Claim Number: FA1812001820296
Complainant: Licensing IP International S.à r.l. of Luxembourg, Luxembourg.
Complainant Representative:
Complainant Representative: EuroDNS SA of Leudelange, Luxembourg.
Respondent: PrivacyDotLink Customer 3043460 of Seven Mile Beach, Grand Cayman, International, KY.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC; Binky Moon, LLC; Dog Beach, LLC; DotSpace Inc.
Registrars: Uniregistrar Corp
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: December 11, 2018
Commencement: December 11, 2018
Default Date: December 27, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant is the owner of the trademark BRAZZERS, registered in Canada, European Union, and with the United States Patent and Trademark Office (“USPTO”), such as Reg. No. 5,218,687 BRAZZERS, registered on June 6, 2017, covering services in Intl Classes 35, 38 and 41.
The Complainant has provided evidence of use of the trademark, as registered by the Trademark Clearinghouse.
There is no information on the Respondent, other than provided by the Complainant, as the Respondent has not responded.
Legal Findings and Conclusion:
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid US Trademark registration Reg. No. 5,218,687 BRAZZERS. Further, the Complainant has proved that the said trademark is in current use by presenting printouts from the Complainant’s website.
The relevant part of the disputed domain names are <brazzers>, <brazzers-24.fun>, and <brazzzers>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a mark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark.
The disputed domain names <brazzers.club> and <brazzers.studio> thereby consists of the Complainant’s trademark identically, <brazzers24.fun> is confusingly similar, only adding a number indication that the website is reachable 24 hours a day, and finally <brazzzers.wtf> with an extra letter “z” is an obvious misspelling of the Complainant’s trademark.
The Examiner concludes that all four disputed domain names are confusingly similar to the Complainant's trademark BRAZZERS.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <brazzers.club>, <brazzers.studio>, <brazzers-24.fun>, and/or <brazzzers.wtf>, as the Complainant has not authorized the Respondent to register a domain name containing its registered and used trademark BRAZZERS, nor is the Respondent commonly known by any of the disputed domain names.
As BRAZZERS is a distinctive trademark, and the Complainant and Respondent seems to be in the same business area, namely adult entertainment services, the Examiner also draw the conclusion that the Complainant has shown that the Respondent cannot have any legitimate interests in registering and using <brazzers.club>, <brazzers.studio>, <brazzers-24.fun>, and/or <brazzzers.wtf>.
To summarize, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in <brazzers.club>, <brazzers.studio>, <brazzers-24.fun>, and/or <brazzzers.wtf>.
BAD FAITH REGISTRATION AND USE
The According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
In this case, the Complainant has shown that the Respondent has linked the disputed domain names to a web site offering adult videos pertaining to the Complainant core services, links to Complainant’s competitors’ websites and logos trying to impersonate the Complainant.
It is therefore obvious that the Respondent has registered and is using all 4 disputed domain names to attract for commercial gain, Internet users to Respondents web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
Petter Rindforth, Examiner
Dated: January 1, 2019
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