Licensing IP International S.à.r.l. v. Andrey Polev
Claim Number: FA2010001919105
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Andrey Polev (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <brazzers-n.com>, registered with Danesco Trading 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 31, 2020; the Forum received payment on October 31, 2020.
On November 3, 2020, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <brazzers-n.com> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name. Danesco Trading Ltd. has verified that Respondent is bound by the Danesco Trading 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 November 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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-n.com. Also on November 9, 2020, 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 December 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 and its corporate affiliates have gained a strong position in the online adult entertainment market. Complainant has rights in the trademark BRAZZERS through Complainant’s use in commerce since 2008 and its registration with many national trademark offices around the world including the Canadian Intellectual Property Office, the United States Patent and Trademark Office, the European Union Intellectual Property Office, the Ministry of Commerce & Industry for India, the Norwegian Industrial Property Office, and others, the earliest of which dates back to 2008. Respondent’s <brazzers-n.com> domain name, registered on January 12, 2017, is identical or confusingly similar to Complainant’s BRAZZERS mark as it consists of the entirety of Complainant’s mark followed by a hyphen, the letter “n,” and the “.com” gTLD.
Respondent lacks rights or legitimate interests in the <brazzers-n.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the BRAZZERS mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as the <brazzers-n.com> domain name resolves to a website that provides illegal reproduction of copyrighted video content belonging to Complainant and Complainant’s corporate affiliates. Respondent registered the disputed domain name to misleadingly divert consumers away from Complainant’s own <brazzers.com> website, all for Respondent’s commercial gain.
Respondent registered and uses the <brazzers-n.com> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website, and for Respondent’s commercial gain based on confusion with Complainant’s mark. Furthermore, Respondent had actual knowledge of Complainant’s rights to the BRAZZERS mark prior to registering the disputed domain name as evidenced by the fame of Complainant’s mark, Respondent’s use of the mark, including use of Complainant’s own logo on the offending website, and the appearance of copyrighted video content on Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 and supporting evidence 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 and supported 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 Complainant’s registration of the mark with various trademark offices around the world. Registration of a mark with a national trademark office is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (Forum Nov. 9, 2020) (“It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights”). As Complainant has submitted into evidence screenshots from various national trademark offices showing registration particulars for its claimed mark, the Panel finds that Complainant has demonstrated rights in the BRAZZERS mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <brazzers-n.ccom> domain name is identical or confusingly similar to Complainant’s BRAZZERS mark as it merely adds a hyphen, the letter “n,” and the “.com” gTLD. The addition of punctuation, a letter, and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). As the BRAZZERS mark is the featured element of the disputed domain name and confusion therewith is not mitigated by the remaining elements, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per 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 contends that Respondent lacks rights or legitimate interests in the <brazzers-n.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the BRAZZERS mark. In considering this issue, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”) 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 complainant’s mark may support a finding that respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name, as revealed by the concerned Registrar after the filing of the Complaint, lists the registrant as “Andrey Polev” and there is no evidence of record to indicate Respondent’s actual name or to suggest that it was authorized to use the BRAZZERS mark. The mere fact that Complainant’s mark and logo appear on Respondent’s website does not, itself, indicate that Respondent is commonly known thereby. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”) Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <brazzers-n.com> domain name in connection with a bona fide offering of goods or services and fails to make a legitimate noncommercial or fair use thereof. It provides evidence that Respondent uses the disputed domain name to misleadingly divert consumers away from Complainant’s website to Respondent’s own website which provides illegal reproduction of video content belonging to Complainant and Complainant’s corporate affiliate. Complainant argues that Respondent does this for Respondent’s financial gain. Using a confusingly similar domain name to divert internet users to a respondent’s website featuring illegally reproduced content for a respondent’s financial gain may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per 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 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.”) Here, Complainant provides screenshots of Respondent’s website that resolve from the disputed domain name, and notes that the videos offered are illegal and unauthorized reproductions of copyrighted videos that have been produced and released by Complainant and its corporate affiliates. As the Panel finds Complainant’s evidence and arguments credible and as Respondent has not filed a response or made any other submission in this case, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <brazzers-n.com> domain name in bad faith as Respondent had prior, actual knowledge of Complainant’s rights to the BRAZZERS mark based on the fame of the mark and Respondent’s use thereof. A respondent’s use of a famous mark can demonstrate actual knowledge of a complainant’s rights therein at registration and form the basis upon which to build a case for bad faith. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). 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. It provides such evidence as articles written about the BRAZZERS service, awards it has won, and Google Analytics and Google Trends reports showing that Complainant’s website receives millions of views per day and is frequently searched for. Complainant also provides screenshots of Respondent’s resolving website, highlighting how Respondent uses Complainant’s mark and its logo, how the website copies Complainant’s video content, and how it displays a footer that says “Brazzers! The best porn Studio in the world”. Upon this evidence, the Panel finds it to be quite clear that Respondent registered the disputed domain name with prior knowledge of Complainant’s trademark.
Next, Complainant contends that Respondent registered and uses the <brazzers-n.com> domain name in bad faith as Respondent disrupts Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website based upon confusion with the BRAZZERS mark and for Respondent’s commercial gain. Using a confusingly similar domain name to divert internet users to a respondent’s competing website can demonstrate bad faith per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant asserts that Respondent’s resolving website provides illegal, unauthorized copies of adult videos to lure in unsuspecting users and thus that Respondent uses the disputed domain name primarily to compete with Complainant. These videos also infringe upon Complainant’s copyrights and were copied from Complainant’s legitimate site. Complainant provides screenshots of Respondent’s resolving website and points out the use of its logo, the copied videos that appear there, and the above-referenced footer that specifically names Complainant’s mark and related service. Respondent has not participated in this case and so it does not refute Complainant’s evidence or arguments. Upon the evidence presented, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(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-n.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 3, 2020
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