Sunlane Media, LLC v. Privacy service provided by Withheld for Privacy ehf et al.
Claim Number: FA2105001948862
Complainant: Sunlane Media, LLC of Henderson, Nevada, United States of America.
Complainant Representative: The Law Offices of Allan B. Gelbard of Encino, California, USA.
Respondent: Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf of Reykjavik, Capital Region, International, IS.
REGISTRIES and REGISTRARS
Registries: DotSite Inc.
Registrars: NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Bart Van Besien, as Examiner.
Complainant submitted: May 27, 2021
Commencement: May 28, 2021
Default Date: June 14, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant submitted evidence that it is the registered owner of the following trademarks:
- U.S. trademark registration n. 4.282.293 “LITEROTICA”, registered on January 29, 2013, valid for Nice classification 9;
- Benelux trademark registration n. 0797620 “LITEROTICA”, registered on April 6, 2006, and duly renewed, valid for Nice classification 38; and
- EU trademark registration n. 016181059 “LITEROTICA”, registered on September 29, 2017, valid for Nice classifications 35, 38 and 41.
The Complainant submitted copies of three other US trademark registrations, but these trademarks do not seem to be owned by the Complainant but rather by a US individual.
The Complainant claims that it operates a website, <literotica.com>, which offers erotic stories and pictures, adult toys, videos, a bulletin board service, webcams, personals, and links to other adult oriented websites. The Examiner notices that the Complainant did not submit evidence that it is the actual owner of the domain name <literotica.com>. On the other hand, since the screenshot of the website available via <literotica.com> (as submitted as evidence by the Complainant), refers to the registered LITEROTICA trademarks of the Complainant (with addition of the ® symbol), the Examiner can reasonably assume that the Complainant is indeed the owner of the domain name <literotica.com>.
The Complainant further asserts that its website is ranked in the top 900 in the United States, and in the top 1800 worldwide, by Alexa.com. However, the Complainant did not submit evidence of these claims.
The Complainant claims that its trademarks and its website are known world-wide, and that the ‘Literotica’ trademarks have acquired a secondary meaning, whereby a significant portion of the general public associates the name and mark with the Complainant. However, the Complainant did not submit evidence of these claims.
Even though the Respondent has defaulted, URS Procedure 1.2.6 requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for the Complainant
URS 1.2.6.1 (i) covers the domain name at issue in this case. The disputed domain name <literotica.site> is identical to the Complainant’s trademarks “Literotica” with the addition of the suffix ‘.site’.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for the Complainant
The Complainant asserts that the Respondent has no legitimate right or interest to the domain name.
The Examiner notes that the Respondent did not file a response and therefore did not provide any evidence of any legitimate rights or interests in the disputed domain name. There is no evidence of any rights or legitimate interests of the Respondent in the disputed domain name. There is also no evidence of any similar or identical trademarks owned by the Respondent. There is no indication of any authorization to use the Complainant’s trademark. There is no indication that the Respondent is otherwise related to the Complainant’s business. Although the disputed domain name is currently in use, this in itself does not suffice to determine that the Respondent has a legitimate right or interest to the domain name.
Furthermore, the Complainant has provided screenshots of the website available via the disputed domain name in the annex to its complaint. These screenshots show that the homepage of the disputed domain name contains a picture of the homepage of the website available via the domain name <literotica.com>, which displays the Complainant’s registered trademark ‘LITEROTICA’, accompanied by the registered trademark symbol (‘®’). This confirms that the Respondent, who is not the owner of the registered trademark ‘LITEROTICA’, has no rights or legitimate interest to the disputed domain name.
The Examiner decides that the Respondent has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith.
Determined: Finding for the Complainant.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith because the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, and that the Respondent is intentionally attempting to attract internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, or of a product or service on that website.
The Respondent did not file a response.
The Examiner notes that the homepage of the disputed domain name contains a (modified) picture of the homepage of the website available via the domain name <literotica.com> (of which the Examiner reasonably assumes that it belongs to the Complainant). The homepage of the website <literotica.com> displays the Complainant’s trademark, accompanied by the ‘registered trademark symbol’ (‘®’) and the suffix ‘.com’. The homepage of the website available via the disputed domain name contains a picture with the same visual elements, but where the suffix ‘.com’ has been blurred:
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Homepage of the website at <literotica.com> |
Homepage of the website at <literotica.site> |
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The Examiner concludes that the Respondent has willingly deleted the reference to the website <literotica.com> and has willingly copied content from this website to its own website in order to provide competing services.
Therefore, the Examiner concludes that the Respondent registered and uses the domain name primarily for the purpose of disrupting the business of a competitor; and/or for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website, or of a product or service on that website, which is evidence of bad faith use and registration, in accordance with the paragraphs 1.2.6.3.c and 1.2.6.3.d of the URS Procedure.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
[literotica.site]
Bart Van Besien, Examiner
Dated: June 16, 2021
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