Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD.
Claim Number: FA1506001624077
Complainant is Tenza Trading Ltd. (“Complainant”), represented by Anna M. Vradenburgh of Apogee Law Group, California, USA. Respondent is WhoisProtectService.net / PROTECTSERVICE, LTD. (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dearporntube.com>, <deporntube.com>, <euporntube.com>, <imporntube.com>, <itsporntube.com>, <rusporntube.com>, <dasporntube.com>, <richporntube.com>, <yawporntube.com>, <grabporntube.com>, <winoporntube.com>, <primeporntube.com>, <porntubenews.com>, <bangporntube.com>, <dickporntube.com>, and <kingporntube.com>, registered with Evoplus Ltd; EvoPlus 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 11, 2015.
On June 19, 2015, Evoplus Ltd; EvoPlus Ltd. confirmed by e-mail to the Forum that the <dearporntube.com>, <deporntube.com>, <euporntube.com>, <imporntube.com>, <itsporntube.com>, <rusporntube.com>, <dasporntube.com>, <richporntube.com>, <yawporntube.com>, <grabporntube.com>, <winoporntube.com>, <primeporntube.com>, <porntubenews.com>, <bangporntube.com>, <dickporntube.com>, and <kingporntube.com> domain names are registered with Evoplus Ltd; EvoPlus Ltd. and that Respondent is the current registrant of the names. Evoplus Ltd; EvoPlus Ltd. has verified that Respondent is bound by the Evoplus Ltd; EvoPlus 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 June 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2015 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com. Also on June 29, 2015, 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 July 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
Complainant asserts trademark rights in PORNTUBE and alleges that the disputed domain names are confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and intends to use the disputed domain names in bad faith.
Respondent failed to submit a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark PORNTUBE in connection with adult entertainment services;
2. the trademark is the subject of United States Patent and Trademark Office ("USPTO") Reg. No. 3,963,197, filed Oct. 29, 2008, registered Mar. 29, 2011;
3. the disputed domain names were registered no earlier than July 2009;
4. the disputed domain names resolve to a website featuring adult entertainment material;
5. Respondent is part of Complainant’s affiliate program; and
6. Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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.”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for the trademark PORNTUBE the Panel is satisfied that it has trademark rights in that term (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)). In the absence of a Response Panel will say nothing about the inherent distinctiveness of the trademark. Panel notes that the USPTO found the trademark suitable for its Principal Register and Panel notes, too, proof of registration in Canada and under the Community Trade Mark (CTM) scheme.
For the purposes of assessing the similarity of the trademark and the domain name, the generic top-level domain gTLD, “.com” can be ignored. The comparison then reduces to the trademark PORNTUBE with the terms:
In each instance the trademark has been assumed in its entirety and other matter is either prefixed or suffixed to the trademark. In most cases that added matter is either descriptive (“news”, “rich”, “its”, “dear”, “grab”), or laudatory (“king”, prime”), or geographically indicative (“de”, “rus”, “eu”) or otherwise related to the services offered under the trademark (“dick”, “bang”). There is a handful of remaining integers which have no obvious meaning in English, either of themselves or in connection with the trademark. They are “wino”, “yaw” (perhaps a misspelling of “your”), “im” and “das” (perhaps German). None of this last group of terms has any significant impact on the trademark itself and the trademark remains the recognizable element of the composite term.
Panel therefore finds that all of the domain names are confusingly similar to Complainant’s trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) finding <suttonpromo.com> confusingly similar to the SUTTON trademark; Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”)).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The WHOIS information lists “WhoisProtectService.net” as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names. There is no evidence that Respondent has any trademark rights. The domain names were all registered between July 10, 2009 and October 28, 2011. Complainant’s USPTO Reg. No. 3,963,197 was registered on March 29, 2011 – later than some of the domain names – but it was filed on October 29 2008 and it is the filing date that is determinative of the time Complainant had rights (ignoring possible earlier common law rights from use) (see Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007)).
Complainant provides evidence that the disputed domain names are used to redirect Internet users to a webpage featuring content related to adult entertainment or links that lead to other websites featuring adult entertainment. Such use cannot amount to a bona fide offering or a legitimate noncommercial or fair use (see Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site; Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) concluding that the respondent had no rights or legitimate interests in disputed domain names containing the complainant’s marks even though it was a part of the complainant’s affiliate program, as the affiliate agreement expressly stated that affiliates could not register domain names containing the CRICKET mark).
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, those cases are not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s conduct is caught by subparagraph 4(b)(iv). Panel has already found the domain names to be confusingly similar to the trademark. The relevant likelihood of confusion would follow. Complainant alleges that Respondent is profiting by receiving fees from a traffic holder service. Panel accepts that claim is more likely than not to be true and so finds that the resolving website exists for commercial gain. Panel finds bad faith in each case under paragraph 4(b)(iv) (see MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, and in accordance with Complainant’s request, it is Ordered that the <dearporntube.com>, <deporntube.com>, <euporntube.com>, <imporntube.com>, <itsporntube.com>, <rusporntube.com>, <dasporntube.com>, <richporntube.com>, <yawporntube.com>, <grabporntube.com>, <winoporntube.com>, <primeporntube.com>, <porntubenews.com>, <bangporntube.com>, <dickporntube.com>, and <kingporntube.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
July 31, 2015
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