DECISION

 

Licensing IP International S.ŗ.r.l. v. Lydia Dyachenko

Claim Number: FA2010001915712

 

PARTIES

Complainant is Licensing IP International S.ŗ.r.l. (ďComplainantĒ), represented by ROBIC, LLP, Canada.† Respondent is Lydia Dyachenko (ďRespondentĒ), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brazzerstotal.com>, registered with NameCheap, Inc.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 3, 2020; the Forum received payment on October 3, 2020.

 

On October 5, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <brazzerstotal.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.† NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).

 

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 Respondentís registration as technical, administrative, and billing contacts, and to postmaster@brazzerstotal.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 Respondentís 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 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Over the years, and through efforts and acquisitions, the Complainant and its corporate affiliates have gained a strong position in the online adult entertainment market.

 

Complainant has rights in the BRAZZERS mark through Complainantís registration of the mark with the United States Patent and Trademark Office (ďUSPTOĒ).

 

Respondentís <brazzerstotal.com> is confusingly similar to Complainantís BRAZZERS mark as it consists of Complainantís mark followed by the generic term ďtotalĒ and the ď.com.Ē generic top-level domain (ďgTLDĒ).

 

Respondent lacks rights or legitimate interests in the <brazzerstotal.com> domain name. Respondent is not commonly known by the at-issue domain name nor has Respondent been authorized by Complainant to use the BRAZZERS mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent registered it to misleadingly divert consumers away from Complainantís website to Respondentís own website which provides illegal reproduction of video content belonging to Complainant and Complainantís corporate affiliate.

 

Respondent registered and uses the <brazzerstotal.com> domain name in bad faith. Respondent uses the at-issue domain name to disrupt Complainantís business by diverting internet uses away from Complainantís website to Respondentís competing website for Respondentís commercial gain. Furthermore, Respondent had actual knowledge of Complainantís rights to the BRAZZERS mark prior to registering the disputed domain name evidenced by the famous nature of Complainantís mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in BRAZZERS.

 

Respondent is not affiliated with Complainant and is not authorized to use the BRAZZERS mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in BRAZZERS.

 

Respondent uses the at-issue domain name to direct internet users to Respondentís website where Respondent, without authorization, offers Complainantís video content.

 

DISCUSSION

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) (ďBecause Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the ComplaintĒ).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainantís registration of BRAZZERS with the USPTO sufficiently demonstrates Complainantís rights in a mark under Policy ∂ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainantís USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ∂ 4(a)(i)).

 

Further, Respondentís <brazzerstotal.com> domain name contains Complainantís BRAZZERS trademark followed by the term ďtotalĒ with all followed by the generic top-level domain name ď.comĒ. The differences between Complainantís trademark and Respondentís domain name do nothing to distinguish the domain name from Complainantís trademark pursuant to Policy ∂ 4(a)(i). Therefore, the Panel concludes that Respondentís <brazzerstotal.com> domain name is confusingly similar to Complainantís BRAZZERS trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing an at-issue domain name from a mark under Policy ∂ 4(a)(i)).

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entmít Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainantís prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainantís trademark in any capacity and, as discussed below, there are no Policy ∂ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

The WHOIS information for the at-issue domain name identifies the domain nameís registrant as ďLydia DyachenkoĒ and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <brazzerstotal.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <brazzerstotal.com> domain name for the purposes of Policy ∂ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Additionally, Respondent uses the <brazzerstotal.com> domain name to offer unauthorized BRAZZERS video content to internet users.† The at-issue domain name addresses a website that promotes, and makes available, unauthorized BRAZZERS video content to internet users. Respondentís use of the confusingly similar domain name in this manner falsely implies that there is a relationship between Complainant and Respondent when there is none. Such use of the confusingly similar domain name indicates neither a bona fide offering of goods or services under Policy ∂ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ∂ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (ďRespondentís demonstrated intent to divert Internet users seeking Complainantís website to a website of Respondent and for Respondentís benefit is not a bona fide offering of goods or services under Policy ∂ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ∂ 4(c)(iii).Ē); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (ďIt is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainantís systemsÖ As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.Ē).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondentís lack of rights and lack of interests in respect of the at-issue domain name under Policy ∂ 4(a)(ii).

 

Registration and Use in Bad Faith

Respondentís <brazzerstotal.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

Respondentís confusingly similar domain is used to address a website that diverts internet users away from Complainantís website to Respondentís competing website for Respondentís financial gain. Respondentís <brazzerstotal.com> website offers internet visitors unauthorized copies of Complainantís video content. Respondent thereby unfairly competes with Complainant while capitalizing on the confusion Respondent intentionally created between its <brazzerstotal.com> domain name and Complainantís BRAZZERS trademark. Using the at-issue domain name to give a false impression of affiliation with Complainant and to usurp Complainantís intellectual property disrupts Complainantís business and assists Respondent in unfairly competing with Complainant. Notably, Respondentís use of the domain name shows Respondentís bad faith registration and use of the <brazzerstotal.com> domain name per Policy ∂∂ 4(b)(iii) and (iv). See Kipling Apparel Corp. v. Yan Feng Geng, FA 1703296 (Forum Dec. 20, 2016) (finding the respondent registered and used the <kiplingstores.com> domain name in bad faith per Policy ∂ 4(b)(iii) because the respondent used the domain name to sell the complainantís products that were either counterfeit or genuine products resold without authorization); see also, G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (ďUnauthorized use of Complainantís CELEBREX mark to sell Complainantís products represents bad faith use under Policy ∂ 4(b)(iii).Ē); see also ZIH Corp. v. ou yang lin q, †FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainantís business by diverting Internet users from Complainantís website to Respondentís website where it offered competing printer products).

 

Additionally, Respondent registered <brazzerstotal.com> knowing that Complainant had trademark rights in the BRAZZERS mark. Respondentís prior knowledge is evident from the notoriety of Complainantís trademark and from Respondentís offering of BRAZZERS content via the <brazzerstotal.com> website. †It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value. Respondentís prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <brazzerstotal.com> domain name in bad faith pursuant to Policy ∂ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ∂ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <brazzerstotal.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:† November 2, 2020

 

 

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