Licensing IP International S.ŕ.r.l. v. Chirag Jain
Claim Number: FA2308002057297
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Chirag Jain (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spicevids.us>, registered with NameCheap, Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on August 11, 2023; Forum received payment on August 11, 2023.
On August 14, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <spicevids.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2023 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@spicevids.us. Also on August 14, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, 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 is a corporation constituted in Luxembourg and has, through its predecessors, provided adult entertainment services since the 1990s under a family of SPICE trademarks such as SPICETV, PRIVATE SPICE, FLY SPICE, and others. In or around August 2022 and early September 2022, Complainant began offering an online service under the trademark SPICEVIDS and has obtained registration of such mark at the European Union Intellectual Property Office (“EUIPO”) and the United Kingdom Intellectual Property Office (“UKIPO”), the earliest of which was filed on November 28, 2022 and registered on February 24, 2023. Even before such filings, Complainant had quickly gained common law rights to the distinctive SPICEVIDS trademark in many countries based on an extensive advertising campaign and high traffic to its www.spicevids.com website which evidences public recognition of the mark. Respondent’s <spicevids.us> domain name, registered on January 12, 2023, incorporates the entirety of the SPICEVIDS mark and is confusingly similar to other of Complainant’s SPICE family of marks.
Respondent has no rights or legitimate interests in the disputed domain name as it owns no relevant trademark, is not commonly known by the domain name, and it operates a website that impersonates Complainant and seeks to gather personal and financial information from unsuspecting users.
The disputed domain name was registered and is used in bad faith as it competes with Complainant and disrupts its business, and it seeks commercial gain based on confusion with Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has both registered and common law rights in the SPIECEVIDS trademark and the <spicevids.us> domain name is identical to such mark;
- Respondent has no rights or legitimate interests in the disputed domain name where it owns no relevant trademark rights, is not commonly known by the domain name, and it operates a website that impersonates Complainant for the purpose of tricking users into disclosing certain personal and financial information; and
- The disputed domain name was registered and is used in bad faith as it competes with Complainant and disrupts its business, and Respondent seeks commercial gain based on the impersonation of Complainant and confusion with its mark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts rights in the SPICEVIDS and other SPICE formative trademarks based upon registration thereof with the EUIPO and the UKIPO as well as through its extensive use of the marks at common law. Under Policy ¶ 4(a)(i), registration with trademark offices such as the EUIPO and the UKIPO is sufficient to establish rights in a trademark. See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”); see also Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”) As Complainant has submitted screenshots from the EUIPO and the UKIPO websites evidencing registration of its asserted trademark, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).[i]
Next, Complainant argues that Respondent’s <spicevids.us> domain name is identical or confusingly similar to the SPICEVIDS and other SPICE marks as it incorporates both in their entirety and merely adds the “.us” generic top-level-domain name ("gTLD"). The addition of a TLD typically fails to sufficiently distinguish a disputed domain name from an asserted trademark per Policy ¶ 4(a)(i). See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”) As the second level of the <spicevids.us> domain name consists entirely of Complainant’s SPICEVIDS mark and adds only the “.us” ccTLD, the Panel finds that the domain name is identical or confusingly similar to such mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant first addresses Policy ¶ 4(c)(i) which states that rights or legitimate interests may be found where a respondent is “the owner or beneficiary of a trade or service mark that is identical to the domain name.” However, where no such evidence is present, this paragraph does not provide a defense to a respondent. See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Complainant submits into evidence copies of trademark searches it conducted for the term “spicevids” and for Respondent’s name “Chirag Jain”. None of the results suggest Respondent’s ownership of a trademark that is identical or similar to the SPICEVIDS mark. Based on this evidence and the fact that Respondent has not submitted a Response or any evidence of its own, the Panel cannot conclude that Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).
Next, Complainant asserts that Respondent is not using the <spicevids.us> domain name for any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use of the domain name. Rather, Respondent uses the disputed domain name to impersonate Complainant by displaying a website that diverts and deceives customers. Impersonation, or passing oneself off as a complainant and diverting users to a respondent’s webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Here, Complainant provides screenshots of the <spicevids.us> website which prominently displays the SPICEVIDS in the same graphic logo as used by Complainant and a number of photographs that appear to be copied from Complainant’s own website. Also pictured are the logos of seventeen of Complainant’s partner websites and this graphic is also identical to that which appears on Complainant’s own www.spicevids.com website. Another page of the site contains a ”Members Login” form asking for login credentials and the site contains a footer listing a corporate address identical to that listed at the footer on Complainant’s own site. Finally, Respondent’s site offers a free one-week subscription plan for adult entertainment services and contains a link to a user verification and payment page. From this evidence, the Panel finds support for Complainant’s claim that “Respondent registered the Domain Name and misused or intended to misuse it to parasitize the value of the goodwill attaching to the Complainant’s Marks through a website that usurps the Complainant's Marks, designed and operated primarily for the purposes of collecting personal information from internet users.” Respondent has not filed a Response or made any other submission in this case. Thus, the Panel finds that there is no evidence of Respondent using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or of its making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).
Complainant further argues that Respondent has no rights or legitimate interests in the <spicevids.us> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SPICEVIDS or any of its other SPICE family of marks. Panels often consider WHOIS information in exploring the question of whether a respondent is commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to [UDRP] Policy ¶ 4(c)(ii)). Complainant points out that the public WHOIS record for the <spicevids.us> domain name identifies Respondent only as “Chirag Jain”. Further, Complainant submits a copy of search results from a corporate name database and none relate to the term “spicevids”. Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark may support a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, Complainant asserts that it “never requested, allowed or authorized the Respondent to register or hold the Domain Name, or to use the Complainant’s Marks” and Respondent does not provide any evidence to the contrary. The Panel therefore finds no ground upon which to conclude that Respondent is commonly known by the <spicevids.us> domain name under Policy ¶ 4(c)(iii).
As Complainant has made a prima facie case which has not been rebutted by Respondent, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its SPICEVIDS mark at the time it registered the <spicevids.us> domain name. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) Complainant claims that its SPICEVIDS trademark became distinctive and very well known within weeks after launching the service as a result of an advertising campaign. Its supporting evidence consists of screenshots of its www.spicevids.com website, submitted Google analytics data showing 9.4 million visits to its site between August 2022 and January 2023, and the ranking of the SPICEVIDS service as high as #3 for the year 2022 in the category of “Best Premium Porn Sites and Paid Porn Sites” by an independent adult entertainment industry observer. From this evidence, the Panel is prepared to accept that Complainant’s mark has gained significant goodwill and reputation prior to Respondent’s registration of the <spicevids.us> domain name. More convincing, however, is the use to which Respondent has placed its domain name to impersonate Complainant and operate what appears to be a scam in which it seeks to harvest login credentials and perhaps names and credit card information from unsuspecting users. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) As such, the Panel finds it a near certainty that Respondent had actual knowledge of Complainant’s trademark at the time that it registered the disputed domain name.
The Panel notes that the registration date of Complainant’s SPICEVIDS EUPIO and UKIPO trademarks occurred after the date on which Respondent registered the disputed domain name. While this is mooted by the above-mentioned evidence of the mark’s reputation prior to the existence of the disputed domain name, it is also worth noting that the November 28, 2022 filing date of Complainant’s earliest trademark application is controlling in this situation. See, e.g., Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that Complainant’s rights in the KISSES trademark “date back to the filing date of the trademark application” and predate Respondent’s domain registration that occurred between trademark filing and trademark registration); Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant further argues that Respondent registered and uses the <spicevids.us> domain name in bad faith because Respondent competes with and disrupts Complainant’s business and attempts to attract Internet users to its website for commercial gain. Where the respondent uses a disputed domain name to pass itself off as a complainant, Panels have found evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See The American Kennel Club, Inc. v. Linh Hoang, D2021-3719 (WIPO Jan. 19, 2022) (“Having drawn Internet users to its website by using a confusingly similar approximation of Complainant’s mark and mimicking its logo, Respondent is fraudulently soliciting payments from website visitors. Such conduct is emblematic of bad faith use of the disputed domain name.”) Under the circumstances of Respondent’s use of the <spicevids.us> domain name as described in the prior section, the Panel finds that Respondent has competed with and disrupted Complainant’s business and drawn users to its website for commercial gain based upon confusion with the SPICEVIDS trademark. Thus, it has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spicevids.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 8, 2023
[i] Although Complainant has also submitted evidence to support its claim of common law trademark rights, the Panel does not deem it necessary to consider that in this section as Complainant’s burden under Policy ¶ 4(a)(i) has already been satisfied by its ownership of the above-mentioned trademark registrations.
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