DECISION

 

Licensing IP International S.ŗ.r.l. v. Domain Admin / Whois Privacy Corp.

Claim Number: FA2010001919102

 

PARTIES

Complainant is Licensing IP International S.ŗ.r.l. (ďComplainantĒ), represented by ROBIC, LLP, Canada.† Respondent is Domain Admin / Whois Privacy Corp. (ďRespondentĒ), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <brazzers-clips.com> (Ďthe Domain Nameí), registered with Internet Domain Service BS Corp.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 31, 2020; the Forum received payment on October 31, 2020.

 

On November 4, 2020, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <brazzers-clips.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 November 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@brazzers-clips.com.† Also on November 5, 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 28, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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

The Complainant is the owner of the trade mark BRAZZERS, registered, inter alia in Canada since 2008 for adult entertainment services. It owns brazzers.com.

 

The Domain Name registered in 2018 is confusingly similar to the Complainantís BRAZZER trade mark adding only a hyphen, the generic term Ďclipsí and the gTLD ď.comĒ which do not prevent said confusing similarity.

 

The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.

 

The Domain Name is being used for competing adult entertainment services which are not authorized by the Complainant including unauthorized premium content from the Complainantís web site. The Respondentís site uses a similar logo to the Complainant as a masthead with the two letter Ďzís in the word BRAZZERS being featured in yellow. The Respondentís site refers to the Complainantís web site and admits the material on the Respondentís web site comes from the Complainantís web site showing that the Respondent is aware of the Complainant, its mark, rights and services. The Respondent also refers to people contacting it to cancel subscriptions when the Respondentís web site is free showing actual confusion with the Complainant. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is bad faith registration and use disrupting the Complainantís business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark BRAZZERS, registered, inter alia in Canada since 2008 for adult entertainment services. It owns brazzers.com.

The Domain Name registered in 2018 has been used for a site offering competing adult entertainment services including unauthorized copies of the Complainantís premium content and a very similar BRAZZERS logo to the Complainant.

 

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 Domain Name consists of the Complainantís BRAZZERS mark (registered in Canada for adult entertainment related services since 2008), the generic term Ďclipsí, a hyphen and the gTLD ď.comĒ.

 

The addition of the generic term Ďclipsí to the Complainantís mark does not prevent confusing similarity between the Domain Name and the Complainantís mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms does not adequately distinguish a disputed domain name from complainantís mark under Policy 4(a)(i).). Nor does the addition of a hyphen. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).).

 

The gTLD ď.comĒ does not serve to distinguish the Domain Name from the Complainantís mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which the Complainant has rights.

 

Rights or Legitimate Interests

The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial and so cannot be legitimate noncommercial fair use.

 

The web site attached to the Domain Name uses a very similar BRAZZERS logo to the Complainant as a masthead to offer competing adult entertainment services including unauthorized material from the Complainantís web site and admits the material is sourced from the Complainantís web site.† The Respondent does not make it clear that there is no commercial connection with the Complainant and the reference to people trying to cancel subscriptions on the Respondentís web site when it does not offer paying subscriptions shows actual confusion with the Complainant.

 

Use of a Domain Name containing a third party mark for competing services is not a bona fide offering of goods or services or a legitimate noncommercial fair use. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.). The material is also unauthorized material taken from the Complainantís web site.† See Spotify AB v. Haji Pacman, FA1701001713362 (Forum Feb. 21, 2017) (finding lack of rights or legitimate interests based upon use of disputed domain name to offer counterfeit audio streaming services).

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the Panelist the use made of the Domain Name in relation to the Respondentís site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses† the Complainantís trade mark and a very similar BRAZZERS logo to the Complainant as a masthead for identical services and unauthorized material from the Complainantís site. There has been actual confusion between the Complainantís and the Respondentís site.† The reference to the Complainantís web site, the use of a very similar logo to the Complainant and the admission that the material on the Respondentís web site is from the complainantís site shows that the Respondent has actual knowledge of the Complainant, its business, rights and services.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).

 

The activity is also copyright infringement which also demonstrates bad faith. See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainantís trademark indicates Respondentís bad faith).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and Complainant has satisfied the third limb of the Policy under ∂∂ 4(b)(iii) and 4(b)(iv).

 

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 <brazzers-clips.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Dawn Osborne, Panelist

Dated:† November 30, 2020

 

 

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