Tenza Trading Ltd. v. Christiaan Reenen
Claim Number: FA1505001620558
Complainant is Tenza Trading Ltd. (“Complainant”), represented by Anna M. Vradenburgh of Apogee Law Group, California, USA. Respondent is Christiaan Reenen (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <porntubek.com> and <latinaporntubes.com> registered with CSL Computer Service Langenbach GmbH d/b/a joker.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2015; the Forum received payment on May 20, 2015.
On May 22, 2015, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the Forum that the <porntubek.com> and <latinaporntubes.com> domain names are registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the names. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.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 May 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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 postmaster@porntubek.com, postmaster@latinaporntubes.com. Also on May 26, 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 June 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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(s) be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the PORNTUBE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,936,197, registered on March 29, 2011).
b. Respondent’s <porntubek.com> domain name is confusingly similar to Complainant’s PORNTUBE mark because it contains the mark in its entirety and is differentiated by only the addition of the letter “k” and the generic top-level domain (“gTLD”) “.com.”
c. Respondent’s <latinaporntubes.com> domain name is confusingly similar to Complainant’s PORNTUBE mark because it contains the mark in its entirety and is differentiated by only the addition of the letter “s,” the word “latina,” and the gTLD “.com.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain names as the WHOIS information lists “Christiian Reenen” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain names.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the disputed domain names to compete with Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent uses the disputed domain names to direct Internet users to its own resolving websites in order to compete with Complainant.
b. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the PORNTUBE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Tenza Trading Ltd. of Nicosia, Cyprus. Complainant is the owner of domestic and international registrations for the mark PORNTUBE which it has used continuously since at least as early as 2005 in connection with its provision of a website offering a variety of adult entertainment content, products and services.
Respondent is Christiaan Reenen, of Soesterberg, The Netherlands. Respondent’s registrar’s address is listed as Dusseldorf, Germany. The Panel notes that the <porntubek.com> and <latinaporntubes.com> domain names were created on or about August 31, 2015.
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.”).
Complainant uses the PORNTUBE mark in conjunction with its website which provides adult entertainment in the form of photographs, videos, film clips and other multimedia materials. Complainant alleges it has rights in the PORNTUBE mark through its registration with the USPTO (Reg. No. 3,936,197, registered on March 29, 2011). Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Previous panels have also found that registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel here finds that Complainant has rights in the PORNTUBEmark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <porntubek.com> domain name is confusingly similar to Complainant’s PORNTUBE mark because it contains the mark in its entirety and is differentiated by only the addition of the letter “k” and the gTLD “.com.” Complainant also contends that Respondent’s <latinaporntubes.com> domain name is confusingly similar to Complainant’s PORNTUBE mark because it contains the mark in its entirety and is differentiated by only the addition of the letter “s,” the word “latina,” and the gTLD “.com.” Past panels have found that the addition of “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Prior panels have also found that the addition of a single letter is insufficient to differentiate a domain name from a mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Complainant contends that the word “latina” is either descriptive of Complainant’s business and/or is a generic term. In either case, prior panels have agreed that such terms do not sufficiently distinguish a domain name and a mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s <porntubek.com> and <latinaporntubes.com> domain names are confusingly similar to Complainant’s PORNTUBE mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information lists “Christiian Reenen” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain names. Previous panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel here finds that Respondent is not commonly known by the <porntubek.com> and <latinaporntubes.com> domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving websites to provide a bona fide offering of goods or services or legitimate and noncommercial fair use because Respondent uses the resolving websites to compete with Complainant. Complainant argues that Respondent is using the resolving websites to host content substantially similar to that hosted on Complainant’s own website. Complainant has provided evidence of such use. Past panels have found competing uses indicate a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel here finds that Respondent’s competitive use indicates a failure by Respondent to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <porntubek.com> and <latinaporntubes.com> domain names to confuse Internet users about the identity of Respondent. Complainant argues that Respondent uses its resolving websites to attract Internet users by creating confusion about Complainant’s connection to the websites, by offering substantially similar services as those offered by Complainant and that Respondent profits from this use. Complainant has provided evidence that displays information about referral fees Respondent has received. Prior panels have found that offering similar services as a complainant in a manner likely to confuse Internet users about that complainant’s association with the website constitutes bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”) The Panel here finds Respondent’s behavior supports a finding that Respondent registered and uses the <porntubek.com> and <latinaporntubes.com> domains in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <porntubek.com> and<latinaporntubes.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 1, 2015
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