URS DEFAULT DETERMINATION


Sunlane Media, LLC v. WhoisGuard, Inc.
Claim Number: FA2004001892044


DOMAIN NAME

<literotica.xyz>


PARTIES


   Complainant: Sunlane Media, LLC of Henderson, NV, United States of America
  
Complainant Representative: The Law Offices of Allan B. Gelbard Allan B. Gelbard of Encino, CA, United States of America

   Respondent: WhoisGuard Protected / WhoisGuard, Inc. WhoisGuard, Inc. of Panama, Panama, II, PA
  

REGISTRIES and REGISTRARS


   Registries: XYZ.COM LLC
   Registrars: Namecheap

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Saravanan Dhandapani, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: April 14, 2020
   Commencement: April 17, 2020
   Default Date: May 4, 2020
   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").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <literotica.xyz>. No domain name is dismissed from this Complaint.
      Multiple Respondents: Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain name <literotica.xyz>. No domain name is dismissed from this Complaint.

   Findings of Fact: The case of the Complainant is as follows: Complainant produces and distributes the most widely viewed erotic story website on the internet, Literotica.com. Complainant has been producing and distributing the Literotica® website since November, 1998. The Literotica® website offers erotic stories and pictures, adult toys, videos (including DVDs, downloads and video-on-demand), a bulletin board service, webcams, personals, and links to other adult oriented websites. Complainants pervasive and exclusive use of the Literotica® mark, and its world­wide dissemination, has caused Literotica® to acquire a secondary meaning whereby a significant portion of the general public has come to associate the name and mark with Complainant. Complainant is also the holder of four (4) federally registered United States trademarks, all of which are incontestable pursuant to 15 U.S.C. § 1065; a European (EUIPO) registration, and a Benelux registration for Literotica®; including: U.S. Trademark Registration Number 2401909 (Registered 11/7/2000) in International Class 41 (on-line computer database - adult entertainment featuring adult fiction in audio and printed form....) U.S. Trademark Registration Number 2628426 (Registered 10/1/2002) in International Class 035 (on-line retail store services - adult toys, novelties, lingerie, clothing, cd's, dvd's, videos, tapes....) U.S. Trademark Registration Number 2683727 (Registered 2/4/2003) in International Classes 035 (personal ads of others via television and the global computer network...); 38 (chat rooms ... concerning sexual topics via the global computer network); 41 (entertainment in the nature of live and pre-recorded audio and video adult-oriented messages, stories, articles and pictures by telephone, television and the global computer network; [and] ... links to the websites of others for entertainment purposes) U.S. Trademark Registration Number 4282293 (Registered 1/29/13) in International Class 9 (Computer application software for mobile phones, portable media players and handheld computers, ... for accessing and downloading adult entertainment videos, pictures, messages, stories and articles from an Internet website) Complainant also holds numerous European registrations including: Benelux/BIOP (Belgium) Trademark Registration 0797620 (Registered 6/4/2006) in International Class 38 (telecommunications services) European Union Trademark Registration 016181059 (Registered 2/10/17) in Nice Classifications 35 (personal ads of others via television and the global computer network); 38 (chat rooms for transmission of messages ... concerning adult topics via the global computer network; ... access to entertainment websites of others by providing hypertext links); and 41 (entertainment in the nature of live and pre-recorded audio and video adult-oriented messages, videos, stories, articles and pictures by telephone, television and the global computer network; ... online computer games; ... online computer database in the field of adult entertainment featuring, videos, adult fiction in audio and printed form. The domain name �literotica.xyz� is deceptively similar to Complainant�s mark. Further, the domain name includes Complainant�s federally registered and incontestable trademark(s) as the main element of Respondent�s infringing URL. It is clearly registered in bad faith so as to unlawfully compete with, and damages the reputation and good will of Complainant.

  

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.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Complainant has proved by documentary evidence that they are the registered owner of service mark and trademark �Literotica® � under various international classifications with U.S., Belgium and European Union. As noted, the disputed domain name <literotica.xyz> composes �literotica�, and �.xyz�. Thus the word �literotica� in disputed domain name is identical to Complainant�s registered mark �Literotica® �. The �.xyz� in disputed domain name, being a generic code Top-Level Domain name (gTLD), is suffix. The suffix is non-distinctive and is incapable of differentiating the disputed domain name from the Complainant�s registered trademark. Based on the �Literotica� being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant owns registered mark �Literotica� under various international classifications with U.S., Belgium and European Union. In such case, the burden lies on the Respondent to prove that he has legitimate rights and/or interests in the disputed domain name. The Complainant�s adoption and first use of the registered trademark is for quite some time. In such case, the burden lies on the Respondent to prove that he/she has legitimate rights and/or interests in the disputed domain name. The Respondent is in default and has not filed any response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Examiner can however and does draw evidentiary inferences from the failure of the Respondent to respond. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain name.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  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.

Determined: Finding for Complainant 


It is the specific case of the Complainant that the Respondent is not affiliated with Complainant in any manner and never authorized the Respondent to register or use any domain name incorporating �Literotica�. Thus, the Panel Examiner is of the firm view that using a confusingly similar domain name establishes the bad faith. It is well established that the registration and use of the disputed domain name must involve malafides where the registration and use of it was continues to be made in full knowledge of the Complainant�s prior rights in the �Literotica� registered mark and in circumstances where the registrant did not seek permission from the Complainant, as the owner of trademark, for such registration and use. Thus the Panel Examiner comes to irresistible determination that (i) the disputed domain name is identical to the Complainant�s �Literotica� trademark; (ii) the Respondent�s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant�s mark. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus, the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and is being used in bad faith.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties 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 name(s) be SUSPENDED for the duration of the registration:

  1. literotica.xyz

 

Saravanan Dhandapani
Examiner
Dated: May 5, 2020

 

 

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