DECISION

 

Twitch Interactive, Inc. v. Nigal Thornberry

Claim Number: FA1610001698790

 

PARTIES

Complainant is Twitch Interactive, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is Nigal Thornberry (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <twitchnudes.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 19, 2016; the Forum received payment on October 19, 2016.

 

On October 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <twitchnudes.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2016 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@twitchnudes.com.  Also on October 21, 2016, 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 November 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant operates a social video platform and community for gamers. The Twitch platform is a place where gamers can broadcast their games online and view others playing games, while interacting through a chat platform.

2.    Complainant has rights in the TWITCH mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,275,948, registered Jan. 15, 2013). Respondent’s <twitchnudes.com> domain name is confusingly similar to Complainant’s mark as it incorporates the TWITCH mark in its entirety, adding only the generic term “nudes” and the generic top-level domain (“gTLD”) “.com.” 

3.    Respondent has no rights or legitimate interests in the domain name. Respondent has never been legitimately known as or referred to as TWITCH or any variation thereof, and Respondent is not licensed by Complainant to use the TWITCH mark.

4.    Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website containing and promoting adult content. Additionally, Internet users clicking links on Respondent’s resolving website are redirected to malware/download/virus scams. Finally, the landing page for the domain name combines the TWITCH trademark and Complainant’s purple color scheme, which constitutes passing off.

5.    Respondent registered and is using the domain name in bad faith. Respondent’s resolving website promotes alternative streaming video platforms in an attempt to divert and disrupt Complainant’s business, and Respondent uses the domain name to confuse and attract Internet users for commercial gain. Additionally, the disputed domain name resolves to a website featuring adult-oriented material.

6.    Respondent had actual notice of Complainant’s rights in the TWITCH mark when it registered the domain name. Respondent’s use of the resolving website to distribute malware and/or fake malware warnings is further evidence of Respondent’s bad faith. Finally, Respondent provided false WHOIS information in connection with the domain name, namely the physical address, which is not valid. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the TWITCH mark.  Respondent’s domain name is confusingly similar to Complainant’s TWITCH mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <twitchnudes.com> domain name, and that Respondent registered and uses the domain name in bad faith.

 

DISCUSSION

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 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 (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.”).

 

Identical and/or Confusingly Similar

 

Complainant has rights in the TWITCH mark based on its registration of the mark with the USPTO (Reg. No. 4,275,948, registered Jan. 15, 2013).[1] See Paisley Park Enters. v. Lawson, FA 384834 (FORUM Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel holds that Complainant’s registration of the TWITCH mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Complainant claims that Respondent’s <twitchnudes.com> domain name is confusingly similar to the TWITCH mark as it incorporates the mark in its entirety, adding only the generic term “nudes” and the gTLD “.com.” Adding a generic term and a gTLD to a complainant’s mark is not sufficient to avoid confusion under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (FORUM Jan. 21, 2016) (determining that confusing similarity exist 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, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s TWITCH mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the <twitchnudes.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant argues that Respondent has no rights or legitimate interests in the <twitchnudes.com> domain name. Complainant states that Respondent has not been authorized to use the TWITCH mark, nor has Respondent been commonly known by the domain name. WHOIS information identifies the registrant of the domain name as “Nigal Thornberry.” WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (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). Further, Complainant’s position is supported for the additional reason that Respondent has provided no evidence in the record to show that Respondent was authorized to register the domain name using the Complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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). Thus, the Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.

 

Complainant contends that Respondent’s offering of adult-oriented material at its resolving website is evidence of its lack of rights or legitimate interests in the <twitchnudes.com> domain name. The Panel agrees that Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (FORUM March 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Complainant argues that Respondent’s lack of rights and legitimate interests in the domain name is made evident by its use of its resolving website to distribute malware or fake malware warnings. Specifically, Complainant alleges that Internet users who click certain links on the resolving website are redirected to malware and virus scams.  Because the record supports Complainant’s contention, the Panel holds that Respondent’s use of the <twitchnudes.com> domain name to distribute malware is evidence of Respondent’s lack of rights and legitimate interests in the domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (FORUM June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).

 

Complainant has shown that the domain name resolves to a website featuring Complainant’s name, color scheme, and logo to promote an alternative streaming platform.  Such passing off behavior illustrates a respondent’s lack of rights or legitimate interests in a domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (FORUM Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Tower Labs. Ltd. v. Seltzer, FA 791325 (FORUM Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website). The Panel finds that Respondent’s attempt to use the domain name to pass itself off as Complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant has shown that Respondent, through its use of Complainant’s mark, logo, and color scheme on its resolving website, is attempting to pass itself off as Complainant. A respondent’s use of a domain name to pass itself off as a complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (FORUM May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

Complainant contends that Respondent’s use of the <twitchnudes.com> domain name to provide adult-oriented content is evidence of bad faith registration and use. A respondent, using a complainant’s mark, may be found to be acting in bad faith where it displays adult-oriented content on its resolving website. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name).

 

Complainant argues, and the Panel agrees, that Respondent’s use of Complainant’s mark, logo, and color scheme on Respondent’s resolving website indicates that Respondent had actual knowledge of Complainant's mark when it registered the domain name. This demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).  See Yahoo! Inc. v. Butler, FA 744444 (FORUM Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

Complainant argues that further evidence of bad faith may be found from Respondent’s use of the resolving website to distribute malware. The Panel agrees that Complainant has shown evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (FORUM June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).

 

Finally, Complainant contends that Respondent provided false WHOIS information in connection with the domain name, namely the physical address, which is not valid.  A respondent’s use of false WHOIS information in connection with a domain name is evidence of bad faith. See McDonald’s Corp. v. Holy See, FA 155458 (FORUM June 27, 2003) (holding that the respondent’s use of falsified information when it registered the disputed domain name was evidence that the domain name was registered in bad faith, despite the respondent’ claim that such an action was necessary to protect it from a reprisal by the complainant).

 

 The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <twitchnudes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  November 25, 2016