Licensing IP International S.ŕ.r.l. v. Andrey
Claim Number: FA2107001954389
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Andrey (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brazzersporn.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 9, 2021; the Forum received payment on July 9, 2021.
On July 12, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <brazzersporn.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 July 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@brazzersporn.org. Also on July 15, 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 August 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Licensing IP International S.ŕ.r.l., operates several adult entertainment websites. Complainant has rights in the BRAZZERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,621,514, registered May 19, 2009). Respondent’s <brazzersporn.org> domain name is confusingly similar to Complainant’s BRAZZERS mark, only differing by the additional descriptive term “porn” and the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <brazzersporn.org> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the BRAZZERS mark. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent registered it to misleadingly divert consumers away from Complainant’s website to Respondent’s own competing website for financial gain. Respondent also uses the disputed domain name to host a registration form that gives Respondent the ability to capture login credentials.
Respondent registered and uses the <brazzersporn.org> domain name in bad faith. Respondent has a pattern of bad faith registration. Additionally, Respondent uses the disputed domain name to disrupt Complainant’s business by diverting internet users away from Complainant’s website to Respondent’s competing website for financial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights to the BRAZZERS mark prior to registering the disputed domain name, evidenced by the famous nature of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <brazzersporn.org> domain name.
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 asserts rights in the BRAZZERS mark through its registration with the USPTO (e.g. Reg. No. No. 3,621,514, registered May 19, 2009). Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the BRAZZERS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <brazzersporn.org> domain name is confusingly similar to Complainant’s BRAZZERS mark, differing only by the additional descriptive term “porn” and the “.org” gTLD. Adding a descriptive term and a top-level-domain to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <brazzersporn.org> domain name as Respondent is not commonly known by the disputed domain name and is neither an authorized user or licensee of the BRAZZERS mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information on record identifies the registrant as “Andrey,” and nothing in the record disputes Complainant’s contention that it never authorized Respondent to use the BRAZZERS mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <brazzersporn.org> domain name for a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but rather diverts Internet traffic to a website which offers services which directly compete with Complainant’s business for Respondent’s financial gain. Use of a disputed domain name to redirect Internet users to a competing webpage for financial gain is not a bona fide offer for goods or services, nor does it constitute a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s 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).”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides a screenshot showing Respondent’s resolving website leads visitors to, and provides, adult entertainment content and services, such as videos, featuring nudity and sexual activities – the same nature of content provided via Complainant’s <brazzers.com> website. Complainant also provides screenshots showing Respondent’s resolving website includes advertisements in the form of ads inserted in spaces dedicated to ads below the grid of video thumbnails that are displayed when visitors are browsing through the resolving website. This is evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues Respondent fails to use the <brazzersporn.org> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to host a registration form that gives Respondent the ability to capture login credentials. Using a disputed domain name to conduct a phishing scheme is not a bona fide offer for goods or services, nor does it constitute a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). Complainant provides screenshots showing Respondent’s resolving website includes a registration form having the potential (i) to mislead visitors into believing that by providing login credentials, the visitor can become a subscriber to the BRAZZERS branded website, or (ii) to give the Respondent the ability to capture the login credentials of subscribers to the genuine <BRAZZERS.com> website. Complainant also highlights that the page in Russian for registration can be translated as follows: “Registering on our site will allow you to be its full member. You will be able to add news to the site, leave comments, view hidden text, and much more. If you have problems with registration, please contact the site administrator.” The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <brazzersporn.org> domain name in bad faith as Respondent attempts to attract Internet users to a competing website, disrupting Complainant’s business for Respondent’s commercial gain. Using a confusingly similar domain name to host a website which competes directly with Complainant’s business is considered bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots showing Respondent’s resolving website leads visitors to, and provides, adult entertainment content and services, the same content Complainant’s <brazzers.com> website provides, while displaying advertisements. This is evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends Respondent registered the <brazzersporn.org> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the BRAZZERS mark prior to registration of the disputed domain name based on the famous nature of the mark. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant argues that Complainant’s mark has achieved a significant degree of public recognition in practically all parts of the world where high-speed Internet is available. Complainant provides Google Analytics and Alexa rankings reports that show Complainant’s website receives millions of views per day and is frequently searched for. The Panel finds from the fame of the mark and the use made of the domain name that Respondent had actual knowledge of Complainant’s mark and Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <brazzersporn.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
August 19, 2021
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