BigBang Media LLC v. Wiley Walters
Claim Number: FA2101001928073
Complainant is BigBang Media LLC (“Complainant”), represented by Matthew Shayefar of Law Office of Matthew Shayefar, PC, California, USA. Respondent is Wiley Walters (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spankbang.name>, 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 January 12, 2021; the Forum received payment on January 12, 2021.
On January 21, 2021, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <spankbang.name> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name. 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 January 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2021 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@spankbang.name. Also on January 21, 2021, 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 February 16, 202, 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 SPANKBANG service mark acquired through its ownership of the above service mark registrations and the extensive reputation it has accrued by use of the mark on its adult website since on or about March 1, 2011, following registration of its <spankbang.com> domain name was registered on February 19, 2011.
Complainant submits that its <spankbang.com> website has become the 91st most popular website in the world and 94th in the United States.
Complainant submits that the disputed domain name <spankbang.name> is identical or confusingly similar to its SPANKBANG trademark as it subsumes Complainant’s registered service mark in its entirety. Complainant adds that the disputed domain name is simply Complainant’s SPANKBANG trademark followed by the generic Top Level Domain (“gTLD”) extension <.name> top level domain.
Complainant contends that the obvious copying of Complainant’s trademark in the disputed domain name is conclusive satisfaction of Policy ¶ 4(a)(1). See, e.g., AbbVie, Inc. v. Ryan Hammers, FA1720291 (Forum Apr. 20, 2017) (Respondent’s domain name, <abbvie.com>, is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and adds the gTLD “.one.” Added gTLDs are irrelevant for a Policy ¶ 4(a)(i) analysis.”).
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent has never been commonly known by the disputed domain name and he chose the disputed domain name because it incorporates Complainant’s mark so that he could copy Complainant’s website and cause confusion in the marketplace.
Complainant asserts that Respondent has not received any license, right or permission from Complainant to use its SPANKBANG mark.
Referring to a screenshot of the website to which the disputed domain name resolves, Complainant submits that it illustrates that Respondent is using the disputed domain name that is substantially similar to Complainant’s registered SPANKBANG mark, as the address of Respondent’s website that provides substantially similar to those services provided by Complainant on its own website.
Complainant adds that Respondent’s infringing website prominently displays Complainant’s trademark.
Complainant contends that Respondent has not used, and obviously never intended to use, the disputed domain name in connection with a bona fide offering of goods or services and further contends that Respondent has only ever used and intended to use the disputed domain name to unlawfully, fraudulently, and intentionally rip off Complainant’s website to sell advertising space.
Complainant adds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the website to which it resolves is being used for commercial purposes, simply a means to serve advertisements to visitors who think they are actually visiting Complainant’s website. Therefore, there is no argument that Respondent is engaging in fair use.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith. In light of the vast and well-known use of Complainant’s registered service mark SPANKBANG it is clear that not only was Respondent aware of the marketing value of Complainant’s registered mark and the consumer recognition of the mark, but Respondent was intentionally capitalizing on the strength of the mark by offering the same exact services to consumers. Complainant contends that this is classic trademark infringement and trading off the goodwill of another’s trademark.
In support of this assertion, Complainant submits that the WhoIs data shows that the disputed domain name was registered on January 9, 2019, almost eight years after Complainant’s <spankbang.com> domain name was registered and first used in commerce; almost a year after Complainant applied to register its SPANKBANG trademark, and nearly half a year after Complainant’s trademark was registered. Furthermore, Complainant submits that it is obvious that Respondent knew and intentionally copied Complainant’s trademark and name. Citing Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the infringer was “well-aware of the [trademark owner’s] mark at the time of registration”).
Complainant submits that it is obvious that Respondent is creating confusion and then profiting from that confusion between the disputed domain name and Complainant’s trademark. Citing as an example MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith where the infringer registered a domain name confusingly similar to the trademark owner’s mark and the domain name was used to host a commercial website that offered similar services offered by the trademark owner under its mark).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant hosts an adult entertainment website named SPANKBANG and is the owner of the following trademark registrations:
· United States service mark SPANKBANG, registration number 5,550,377, registered on the Principal Register on August 28, 2018 for services in international classes 38, 41, and 42; and
· Canadian service mark SPANKBANG, registration number TMA1084370, registered on October 9, 2020, having been filed on March 20, 2018 for services in classes 38, 41 and 42.
Complainant owns the domain name <spankbang.com> which it registered on February 19, 2011 and which it uses as the address of its website.
The disputed domain name was registered on September 1, 2019 and resolves to a website with content similar to that on Complainant’s website.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar to the Forum in response to the request for verification of the registration details of the disputed domain name. The Registrar confirmed in its verification response that Respondent, based in the United States, is the correct registrant.
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”)
Identical and/or Confusingly Similar
Complainant has provided clear and convincing, uncontested evidence that it has rights in the SPANKBANG service mark acquired through its ownership of the above-described service mark registrations and the goodwill and extensive reputation it has accrued by extensive use of the mark on its adult website since on or about March 1, 2011. The uncontested evidence adduced shows that Complainant’s website has become the 91st most popular website in the world and 94th in the United States.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Respondent has never been commonly known by the disputed domain name;
· Respondent chose the disputed domain name because it incorporates Complainant’s mark so that he could copy Complainant’s website and cause confusion in the marketplace;
· Respondent has not received any license, right or permission from Complainant to use its SPANKBANG mark;
· the screenshot of the website to which the disputed domain name resolves, which has been exhibited in an annex to the Complaint shows that the disputed domain name is being used as the address of a commercial website with adult content that is substantially similar to Complainant’s on its own website;
· Respondent’s website prominently displays Complainant’s trademark;
· Respondent has not used, and obviously never intended to use, the disputed domain name in connection with a bona fide offering of goods or services;
· Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the website to which it resolves is being used for commercial purposes, simply a means to serve advertisements to visitors who think they are actually visiting Complainant’s website. Therefore, there is no argument that Respondent is engaging in fair use.
It is well established that the onus rests on Complainant to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and once Complainant has discharged this onus, the burden of production shifts to Respondent to prove that he has such rights or interests.
Respondent has failed to discharge the burden of production and so this Panel must find that 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).
Given the distinctive character of the SPANKBANG mark, that the disputed domain name, being identical to Complainant’s name and mark was registered long after Complainant had established its reputation; that the evidence shows that Complainant’s website is the 91st most popular website in the world and 94th in the United States, and the evidence on the record shows that Respondent is using the disputed domain name as the address of a website with content similar to that of Complainant’s website, it is improbable that the registrant of the disputed domain name was unaware of Complainant, its name, mark and website when the disputed domain name was chosen and registered.
The evidence shows that Respondent is intentionally using the disputed domain name in bad faith as the address of a website, which on the balance of probabilities must be creating confusion among internet users and creating confusion and diversion of Internet traffic from which Respondent is profiting at the expense of Complainant, its rights and the goodwill in its name and mark.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spankbang.name> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________
James Bridgeman SC
Panelist
Dated: February 17, 2021
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