DECISION

 

Multi Media, LLC v. Vlad Lupu

Claim Number: FA1801001766337

 

PARTIES

Complainant is Multi Media, LLC (“Complainant”), represented by Lawrence G. Walters, Florida, USA.  Respondent is vlad lupu (“Respondent”), Romania.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chaturbate-token-generator.us>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 10, 2018; the Forum received payment on January 10, 2018.

 

On Jan 10, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <chaturbate-token-generator.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On January 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2018 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@chaturbate-token-generator.us.  Also on January 12, 2018, 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 February 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 to the usTLD Dispute Resolution Policy (“Rules”).  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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, Multi Media, LLC, owns and operates the website located at <chaturbate.com> for several years in connection with the provision of streaming audio, visual, and audiovisual material and other entertainment services. Complainant has rights in the CHATURBATE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,288,943, registered Feb. 12, 2013). See Compl. Annex E. Complainant also claims common law rights in the mark dating back to at least April 2011. Respondent’s <chaturbate-token-generator.us> domain name is confusingly similar to Complainant’s CHATURBATE mark, as the domain name contains the mark in its entirety, and adds the words “token” and “generator” and the “.us” country code top-level domain (“ccTLD”). This confusing similarity is increased as the added words have a relationship to Complainant’s token sale business on its live webcam site.

2.    Respondent has no rights or legitimate interests in the <chaturbate-token-generator.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the CHATURBATE mark in any manner. Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Further, Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the name resolves to a website which purports to offer generation of counterfeit tokens which can be used at Complainant’s website. See Compl. Annex J.

3.    While usDRP Policy only requires a showing of bad faith registratio or use, Respondent registered and has used the <chaturbate-token-generator.us> domain name in bad faith. Respondent’s registration and use of the domain to divert Internet users to its own website for commercial gain. Further, Respondent had constructive and actual knowledge of Complainant’s rights in the mark at the time it registered and subsequently used the name.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <chaturbate-token-generator.us> domain name is confusingly similar to Complainant’s CHATURBATE mark.

2.    Respondent does not have any rights or legitimate interests in the <chaturbate-token-generator.us> domain name.

3.    Respondent registered or used the <chaturbate-token-generator.us> 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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 claims rights in the CHATURBATE mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,288,943, registered Feb. 12, 2013). See Compl. Annex E. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the CHATURBATE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Complainant next argues Respondent’s <chaturbate-token-generator.us> domain name is confusingly similar to the CHATURBATE mark, as the name contains the mark in its entirety, and adds the words “token” and “generator” and the “.us” ccTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Complainant claims the added terms are related to its business of selling tokens to exchange for audiovisual services. The Panel notes—though Complainant does not argue—that the terms in the domain name are set apart by hyphens. Added punctuation, such as a hyphen, is irrelevant in a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel therefore determines the <chaturbate-token-generator.us> domain name is confusingly similar to the CHATURBATE mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show 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 argues that Respondent has no rights or legitimate interests in the <chaturbate-token-generator.us> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CHATURBATE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ [4(c)(iii)].”). The WHOIS information of record identifies Respondent as “vlad lupu,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(iii) that Respondent has not been commonly known by the <chaturbate-token-generator.us> domain name.

 

The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Complainant further argues Respondent’s lack of rights or legitimate interests in the <chaturbate-token-generator.us> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that Respondent uses the name to offer counterfeit tokens for use on Complainant’s website, in an attempt to divert Internet users for commercial gain. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(ii) or (iv). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ [4(c)(ii)], or a legitimate noncommercial or fair use pursuant to Policy ¶ [4(c)(iv)]). Complainant claims the domain name resolves to a website which purports to offer generation of counterfeit tokens which can be used on Complainant’s website. See Compl. Annex J. The Panel agrees this behavior indicates Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(ii) and (iv).

 

Registration or Use in Bad Faith

Complainant claims Respondent’s use of the <chaturbate-token-generator.us> domain name to confuse Internet users and divert them to Respondent’s own website for commercial gain. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and/or use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant.  Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant claims the at-issue domain name resolves to a website upon which Respondent offers online token services similar to Complainant’s. See Compl. Annex J. Complainant asserts that users arriving at Respondent’s website may believe they have arrived at Complainant’s site, or simply remain on Respondent’s site since it offers services which can purportedly allow users to illegally access paid services on Complainant’s site. The Panel agrees and finds Respondent registered and/or used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).

 

Complainant also contends that in light of the fame and notoriety of Complainant's CHATURBATE mark, it is inconceivable that Respondent could have registered the <chaturbate-token-generator.us> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant further asserts that Respondent’s use of the domain name to offer counterfeit tokens to use at Complainant’s website indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered and/or used the names in bad faith.

 

DECISION

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

 

 

 

 

 

Accordingly, it is Ordered that the <chaturbate-token-generator.us> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  February 19, 2018