Licensing IP International S.à.r.l. v. Vladislav Ivantsov
Claim Number: FA2010001915714
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Vladislav Ivantsov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brazzers-xxx.com> and <brazzers-xxx.org> (“Domain Names”), registered with Registrar of Domain Names REG.RU LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2020; the Forum received payment on October 3, 2020. The Complaint was received in both Russian and English.
On October 5, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <brazzers-xxx.com> and <brazzers-xxx.org> domain names are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC 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 October 14, 2020, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of November 3, 2020 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@brazzers-xxx.com, postmaster@brazzers-xxx.org. Also on October 14, 2020, the Russian language 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 November 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
The language of the Registration Agreement in this case is Russian. The Complaint has been provided in English and Russian.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English as to continue this proceeding in English would not materially result in prejudice to Respondent. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010).
A. Complainant
Complainant, Licensing IP International S.à.r.l., is a corporation that does business in the online adult entertainment market including operating a website at www.brazzers.com (“Complainant’s Website”). Complainant has rights in the BRAZZERS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,621,570, registered May 19, 2009). Respondent’s <brazzers-xxx.com> and <brazzers-xxx.org> domain names are confusingly similar to Complainant’s BRAZZERS mark as each of the Domain Names consists of Complainant’s mark followed by the letters “xxx” which is a generic or descriptive symbol referring to a film rating commonly given to adult entertainment and the gTLDs “.com” and “.org.”
Respondent lacks rights or legitimate interests in the <brazzers-xxx.com> and <brazzers-xxx.org> domain names. Respondent is not commonly known by the Domain Names nor has Respondent been authorized by Complainant to use the BRAZZERS mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Respondent uses them to misleadingly divert consumers away from Complainant’s website to Respondent’s own websites, which directly compete with Complainant’s business through illegal reproduction of video content belonging to Complainant and Complainant’s corporate affiliate.
Respondent registered and uses the <brazzers-xxx.com> and <brazzers-xxx.org> domain names in bad faith. Respondent uses the Domain Names to disrupt Complainant’s business by diverting internet uses away from Complainant’s Website to Respondent’s competing websites. Respondent also has a history of holding trademark-abusive domain names confusingly similar to third-party trademarks. Finally, Respondent had actual knowledge of Complainant’s rights to the BRAZZERS mark prior to registering the Domain Names evidenced by the fame of Complainant’s mark and the use of the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BRAZZERS mark. Each of the Domain Names is confusingly similar to the BRAZZERS mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
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 has rights in the BRAZZERS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,621,570, registered May 19, 2009). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that <brazzers-xxx.com> and <brazzers-xxx.org> are confusingly similar to the BRAZZERS mark as each of the Domain Names fully incorporate the BRAZZERS mark adding only the descriptive term “-xxx” and either the gTLD “.com” or “.org”. The addition of a hyphen, a generic or descriptive term, and a gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain as the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) (finding the <morgan-stanley.xyz> domain name identical to complainant’s MORGAN STANLEY mark, because “the use of a hyphen and addition of a gTLD are irrelevant in determining the identical or confusingly similar nature of a disputed domain name under Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BRAZZERS Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (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 Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Vladislav Ivantsov” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are presently inactive but prior to the commencement of the proceeding were used to redirect visitors to a website (“Respondent’s Website”) where Respondent offered adult videos in direct competition with Complainant (indeed, the adult videos offered by Respondent appears to be Complainant’s videos, illegally reproduced by Respondent). The use of a confusingly similar domain name to divert internet users to a respondent’s website featuring illegally reproduced content in competition with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Names, August 13 and 14 2020, Respondent had actual knowledge of Complainant’s BRAZZERS mark since the Respondent’s Website offers illegally reproduced versions of Complainant’s videos, and hence makes repeated references to Complainant on its website. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith under Policy ¶ 4(b)(iv) to create confusion with Complainant’s BRAZZERS Mark for commercial gain by using the confusingly similar Domain Names to resolve to website offering illegally reproduced versions of Complainant’s videos. Using a confusingly similar domain name to pass off as a complainant and offer competing or illicit products in direct competition with the complainant can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”);
The Panel finds Complainant has satisfied 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 <brazzers-xxx.com> and <brazzers-xxx.org> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: November 9, 2020
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