Licensing IP International S.à.r.l. v. David Martyrosyan
Claim Number: FA2010001915713
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is David Martyrosyan (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brazzersvk.com> and <brazzersvk.net>, registered with Danesco Trading Ltd..
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 2, 2020.
On October 7, 2020, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <brazzersvk.com> and <brazzersvk.net> domain names are registered with Danesco Trading Ltd. and that Respondent is the current registrant of the names. Danesco Trading Ltd. has verified that Respondent is bound by the Danesco Trading Ltd. 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 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@brazzersvk.com, postmaster@brazzersvk.net. Also on October 9, 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 3, 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 names 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 BRAZZERS mark in the adult entertainment market, including on the website to which its <brazzers.com> domain name resolves which in 2019 received 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 names are confusingly similar to Complainant’s marks given that in each case the composition consists of the word mark BRAZZERS as the dominant element positioned in the first part of the domain name.
Complainant argues that the addition of the acronym “VK” as the second part of the domain names does not reduce the confusing similarity with the BRAZZERS mark.
Complainant states that the element “VK” appears to be an abbreviation of the Russian language word transliterated as “vkontakte” meaning “in contact” in English, which is the name of a popular Russian online social media and social networking service. In this regard Complainant submits supporting documentation including screenshots of the English and Russian version of the VK login page and an online article about the VK social networking service which states that as of May 2017, it was the most visited website in Russia.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent has not been commonly known by the disputed domain names and the only name by which Respondent appears to be known is the identity disclosed by the Registrar in response to the Forum’s verification request.
Furthermore, the websites to which the disputed domain names resolve 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” that is 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 show rights to or legitimate interests in the disputed domain names pursuant to UDRP ¶ 4(c)(i) on the basis of Respondent’s use of, or demonstrable preparations to use, the disputed domain names (or a name corresponding to the domain names) in connection with a bona fide offering of goods or services before any notice to him of the dispute. Complainant asserts that Respondent is instead taking 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 in this regard, Complainant submits that Respondent cannot show rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(iii) on the basis that Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s BRAZZERS mark. Complainant submits that there is sufficient evidence to demonstrate that Respondent acquired the disputed domain names and is misusing them for commercial, illegitimate and/or unfair purposes.
Complainant furthermore alleges that the disputed domain names were registered and are being used in bad faith, arguing that when the disputed domain names were registered Complainant’s BRAZZERS mark had already achieved a significant degree of public recognition in practically all parts of the world with between 6.3 and 11.9 million daily page views and between 820k and 1,39 million daily visitors in 2019. Complainant argues that it follows that Respondent knew that the disputed domain names would be identical or confusingly similar to Complainant’s mark.
Complainant submits that the websites to which the disputed domain names resolve provide content and services of the same nature as those provided by complainant via its website at <www.brazzers.com> and Respondent thereby derives undue and unfair advantage from the reputation and goodwill attaching to Complainant’s marks and the traffic related to services associated thereto.
Complainant argues that Respondent is using the disputed domain names to divert web traffic away from its <www.brazzers.com> website, leading visitors to, and providing, adult entertainment content and services, and more specifically to videos featuring nudity and sexual activities.
Complainant alleges that the videos on Respondent’s websites are essentially unauthorized copies of premium content videos produced and released under the Complainant’s mark, which are also protected by copyright owned by MG Premium Ltd, a corporate affiliate of the Complainant. In support of this allegation, Complainant refers to the copyright notice in the footer of Complainant’s <brazzers.com> homepage, as shown in screenshots exhibited in an appendix to the Complaint.
Complainant also refers to screenshots of the websites to which the disputed domain names resolve, exhibited with the Complaint, which in Russian to English automatic translation contain the following sentences in the introduction text: “We offer you very interesting pornvideo online from professional studio Brazzers.”; “We tried to find for you the most interesting and exciting that was filmed at this famous studio.”; and “each VK porn video can be downloaded by any user, completely free of charge”.
Complainant submits that as part of its business model, such premium content videos are normally made available to consumers only under determined and controlled sets conditions such as fee-based subscriptions, specific release schedules, time-limited availability and/or access to a member-only area of Complainant’s website at <www.brazzers.com>
Complainant submits that such diversion of traffic which relies in part on copyright infringement, is disrupting Complainant’s business, which heavily depends on its ability to channel and control the Internet traffic related to its content and services, and to position its brands and the content associated therewith as it sees fit, including the advertisement and subscriptions that provide revenues to support the costs of operating and maintaining Complainant’s website.
Complainant alleges that the evidence shows that Respondent is using the disputed domain names in an intentional attempt to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion for monetization purposes.
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;
· 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 <brazzersvk.com> was registered on October 14, 2017; the disputed domain name <brazzersvk.net> was registered on September 7, 2020. Each 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 Complaint as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request in this proceeding for verification of the details of the registration of the disputed domain names in this proceeding.
Respondent availed of a privacy service to conceal his identity of the registrant on the published WhoIs which was disclosed by the Registrar in response to the Forum’s verification request.
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 adduced clear, convincing and uncontested evidence of its rights in the BRAZZERS trademark acquired through its ownership of the portfolio of registered trademarks described below and its extensive use of the BRAZZERS mark in the adult entertainment business.
The disputed domain names are identical to each other albeit on different generic Top Level Domains (“gTLD”) viz <.com> and <.net>.
Each disputed domain name consists of Complainant’s BRAZZERS trademark in combination with the letters “vk” and its respective gTLD extension.
Complainant’s BRAZZERS mark is the initial and dominant element in each domain name. It is possible that many East European Internet users would recognize the VK element as a distinctive mark relating to the social media platform referred to by Complainant, but even in such circumstances it is probable that the association with BRAZZERS would be perceived as dominant.
The gTLD <.com> extension is typically disregarded under the first element confusing similarity test, as it a standard requirement for registration of a domain name.
This Panel finds therefore that each of the disputed domain names is confusingly similar to the BRAZZERS trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i) in respect of each.
Complainant has made out an uncontested prima face case that Respondent has no rights or legitimate interests in the disputed domain names arguing:
· that Respondent has not been commonly known by the disputed domain names;
· that the only name by which Respondent appears to be known is the identity disclosed by the Registrar in response to the Forum’s verification requests;
· that the website to which the disputed domain name resolves contains no information to identify Respondent either as the website owner or operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or “privacy policy” that is usually found on websites;
· that it has never requested, allowed or authorized Respondent to register or hold the disputed domain names, or to use Complainant’s BRAZZERS mark;
· that Respondent cannot show use of, or demonstrable preparations to use, the disputed domain names (or a name corresponding to the domain names) in connection with a bona fide offering of goods or services before any notice to him of the dispute;
· that Respondent is instead taking 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;
· that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s BRAZZERS mark;
· that there is sufficient evidence to demonstrate that Respondent acquired the disputed domain names and is misusing them for commercial, illegitimate and/or unfair purposes.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to 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) in respect of each of the disputed domain names.
The record shows that Complainant had established a substantial international goodwill and reputation in its BRAZZERS mark and website when the disputed domain names were registered. By 2019, Complainant’s www.brazzers.com website had 6.3 and 11.9 million page views and between 820k and 1,39 million daily visitors.
Complainant’s mark is the initial and dominant element in each of the disputed domain names. It is most improbable that the registrant of the disputed domain names was unaware of Complainant and its name, mark and website when each of the disputed domain names were registered. Given the similarity of the disputed domain names to Complainant’s mark, the established reputation of Complainant’s website and the use to which the disputed domain names have been put resolving to competing websites with adult content, this Panel finds that on the balance of probabilities the disputed domain names were chosen and registered to take predatory advantage of Complainant, its mark and goodwill.
Complainant has convincingly argued that Respondent is using the disputed domain names to divert web traffic away from Complainant’s <www.brazzers.com> website, leading visitors to, and providing, competing adult entertainment content and services, and more specifically to videos featuring nudity and sexual activities.
Complainant has also alleged that Respondent is infringing the copyright of a business affiliate of Complainant to compete with Complainant in providing adult content on their respective websites. In translation the text on the websites to which the disputed domain names resolve state: “We offer you very interesting pornvideo online from professional studio Brazzers.”; “We tried to find for you the most interesting and exciting that was filmed at this famous studio.”; and “each VK porn video can be downloaded by any user, completely free of charge”.
Complainant has explained that the content provided by Respondent without permission interferes with Complainant’s business model which is based on the provision of “premium content videos” for which it charges while attracting traffic with other content free of charge.
This Panel finds therefore that the evidence shows that Respondent is using the disputed domain names in bad faith in an intentional attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion for monetization purposes.
As this Panel has found that both disputed domain names were registered and are 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 remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brazzersvk.com> and <brazzersvk.net> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 4, 2020
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