Licensing IP International S.à.r.l. v. watcharapol pierneth
Claim Number: FA2010001915711
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is watcharapol pierneth (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brazzers-thai.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2020; the Forum received payment on October 3, 2020.
On October 5, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <brazzers-thai.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 October 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2020 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@brazzers-thai.com. Also on October 7, 2020, 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 November 11, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the BRAZZERS trademark acquired through its ownership of the portfolio of registered trademarks described below and its extensive use of the disputed domain name in the adult entertainment market, including on the website to which its <brazzers.com> resolves which in 2019 received daily page views 2019 between 6,3 and 11,9 million daily page views and between 820k and 1,39 million daily visitors.
Complainant asserts that together with its affiliates it has a workforce of more than 1,000 full-time employees in six offices worldwide engaged inter alia in web design, IT, web development and search engine optimization.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s BRAZZERS mark, submitting that it is composed of Complainant’s word mark BRAZZERS as the dominant element positioned in the first part of the disputed domain name followed by the descriptive or generic term, “thai” referring to “Thailand”, and the generic Top Level Domain (“ TLD”) <.com> extension.
Complainant submits that the geographically descriptive term “thai” does not reduce the confusing similarity with the Complainant’s BRAZZERS marks, arguing that the confusing similarity is even greater given that BRAZZERS, as the word component of the Complainant’s marks, is a coined or invented term.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent has not been commonly known by the disputed domain name and the only name that he appears to be known by is that given as registrant of the disputed domain name which was disclosed by the Registrar in response to the Forum's verification request;
Furthermore, the websites to which the disputed domain name resolves contain no information to identify Respondent either as website owner or operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or privacy policy” usually found on websites.
Complainant asserts that it has never requested, allowed or authorized respondent to register or hold the disputed domain name, or to use Complainant’s BRAZZERS mark.
Complainant adds that Respondent cannot argue nor show rights to and legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)(i) on the basis of his use of, or demonstrable preparations to use, the domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services before any notice to him of the dispute, because he takes parasitic advantage of value of the goodwill attaching to the Complainant’s BRAZZERS mark through illegitimate domain monetization means including web traffic diversion and advertisement.
Finally, Complainant argues that Respondent cannot argue nor show rights to and legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(iii) on the basis that he is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s BRAZZERS mark because there is sufficient evidence to demonstrate (as shown below) that Respondent acquired the disputed domain name and misuses it for commercial, illegitimate and/or unfair purposes.
Complainant submits that its BRAZZERS mark has achieved a significant degree of public recognition in practically all parts of the world with between 6.3 and 11.9 million page views and between 820k and 1,39 million daily visitors.
Complainant submits that Respondent knew that its registration would be identical or confusingly similar to Complainant’s mark.
Complainant submits that the website to which the domain name resolves provides content and services of the same nature as those provided by Complainant via its website at <BRAZZERS.com> and Respondent thereby derives undue and unfair advantages from the value of the reputation and goodwill attaching to the Complainant’s marks and the traffic related to services associated thereto.
Complainant is using the disputed domain name in an abusive scheme on the website to which the disputed domain name resolves by posting advertisements in the form of numerous banner ads inserted on large spaces dedicated to ads on subpages and floater ads from which Respondent obtains revenue. Complainant submits that Respondent’s acquisition and use of the disputed domain name for such monetization purposes constitutes bad faith use pursuant to Policy ¶ 4(b)(iii).
Furthermore, the website to which the disputed domain name resolves has a technical configuration that brings users via hotlinking to videos that entirely or partially originate from websites associated with Complainant’s mark. Complainant submits that “hotlinking”, also known as “inline linking”, “leeching”,” piggy-backing”, “direct linking”, “offsite image grabs”, is the use of a linked object, such as a video, on one site to a page on a second site. In such circumstances one site is said to have a “hotlink” or an “inline link” to the other site where the object is located. Complainant submits that it is reprehensible in this case that the hotlinking is being used in combination with the disputed domain name, which is confusingly similar to the Complainant’s BRAZZERS mark and to the URL for the <brazzers.com> website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant supplies online adult entertainment using a number of trademarks including the registered trademark BRAZZERS for which it holds a number of registrations including:
· Canadian registered trademark BRAZZERS, BRAZZERS.COM, registration number TMA720519, registered on August 8, 2008 for goods and services in classes 9, 14, 16, 21, 25, 26 and 41;
· United States registered trademark, BRAZZERS, registration number 3621570, registered on the Principal Register on May 19, 2009 for goods in international class 9; 2009 for
· United States registered service mark BRAZZERS, registration number 3621514, registered on May 19, 2009 in international class 41.
· European Union Trade Mark BRAZZERS, registration number 010175909, registered on January 9, 2012 for services in classes 38, 41 and 42.
The disputed domain name <brazzers-thai.com> was registered on April 29, 2018 and resolves to a website with adult content with links to adult images and videos and advertising links.
There is no information available about Respondent except for that provided in the Complainant as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to the FORUM’S request for verification of the details of the registration of the disputed domain name in this proceeding. Respondent availed of a privacy service to conceal the identity of the registrant on the published WhoIs.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided clear, convincing and uncontested evidence of its rights in the BRAZZERS trademark acquired through its ownership of its portfolio of registered trademarks described above and at common law through its extensive use of the mark in the adult entertainment market, including on the website to which its <brazzers.com> resolves which in 2019 received daily page views 2019 between 6.3 and 11.9 million daily page views and between 820k and 1.39 million daily visitors.
The disputed domain name consists of Complainant’s BRAZZERS mark followed by a hyphen, the term, “thai” and the gTLD <.com> extension.
Complainant’s mark is the initial, dominant and only distinctive element of the disputed domain name. The adjective “thai” is a geographical designation and in context does not add any characteristic that reduces the similarity of the disputed domain name. Neither the hyphen nor the gTLD extension add any distinguishing characteristic.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark BRAZZERS in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name submitting:
· that Respondent has not been commonly known by the disputed domain name;
· that the only name by which Respondent appears to be known by is that given as registrant of the disputed domain name which was disclosed by the Registrar in response to the FORUM’s verification request;
· that the websites to which the disputed domain name resolves contains no information to identify Respondent either as website owner or operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or privacy policy” usually found on websites;
· that Complainant has never requested, allowed or authorized respondent to register or hold the disputed domain name, or to use Complainant’s BRAZZERS mark;
· that Respondent cannot show that he has rights in the disputed domain name due to use of, or demonstrable preparations to use, the disputed domain name, or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to him of the dispute, because he is using the disputed domain name as a website address to take advantage of the goodwill attaching to the Complainant’s BRAZZERS mark for illegitimate domain monetization, web traffic diversion and advertisement;
· that Respondent not is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s BRAZZERS mark because there is sufficient evidence to demonstrate that Respondent acquired the disputed domain name and misuses it for commercial, illegitimate and/or unfair purposes.
It is well established that if a complainant makes out a prima facie case, the burden of production shifts to the respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The evidence shows that Complainant’s business, website and mark has achieved a significant degree of public recognition across the world as its website has had daily page views between 6,3 and 11,9 million and daily visitors between 820k and 1,39 million in 2019.
It is improbable that the registrant of the disputed domain name was unaware of Complainant, its business, its pre-existing trademarks and in particular its very successful website to which its <brazzers.com> domain name resolves when the disputed domain name was registered.
In these circumstances this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered with Complainant’s mark in mind in order to take predatory advantage of Complainant, the goodwill that it has established in the BRAZZERS trademark and its website to which its <brazzers.com> resolves.
Complainant has adduced in evidence in an annex to the Complaint, screenshots of the website to which its own domain name <brazzers.com> resolves and the website to which the disputed domain name resolves. These screenshots show that Respondent is using the disputed domain name as the address of a website providing content that is directly competing with Complainant’s website.
On the balance of probabilities Respondent is taking undue and unfair advantage of the reputation and goodwill attaching to Complainant’s BRAZZERS mark to derive revenue by diverting and misleading Internet users to Respondent’s website.
This Panel finds therefore that the evidence shows that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
As this Panel finds that the disputed domain name has been registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brazzers-thai.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC
Panelist
Dated: November 3, 2020
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