Licensing IP International S.ŕ.r.l. v. Hung David
Claim Number: FA2101001930424
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Hung David (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brazzers3x.la> and <brazzers3x.me>, registered with Name.com, Inc..
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2021; the Forum received payment on January 29, 2021.
On February 1, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <brazzers3x.la> and <brazzers3x.me> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 February 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2021 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@brazzers3x.la, postmaster@brazzers3x.me. Also on February 9, 2021, 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 March 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Over the years, and through efforts and acquisitions, the Complainant and its corporate affiliates have gained a strong position in the online adult entertainment market. 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. 3621570, registered May 19, 2009). Respondent’s <brazzers3x.la> and <brazzers3x.me> are identical or confusingly similar to Complainant’s BRAZZERS mark as they consist of Complainant’s mark followed by the generic or descriptive expression “3x” and the TLDs “.la” and “.me.”
Respondent lacks rights or legitimate interests in the <brazzers3x.la> and <brazzers3x.me> domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the BRAZZERS mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent registered the disputed domain names to misleadingly divert consumers away from Complainant’s website to Respondent’s own competing website. Additionally, Respondent’s website provides illegal reproduction of video content belonging to Complainant and Complainant’s corporate affiliate. Furthermore, Respondent diverts internet uses to Respondent’s own website for Respondent’s financial gain.
Respondent registered and uses the <brazzers3x.la> and <brazzers3x.me> domain names in bad faith. Respondent uses the disputed domain names to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website for Respondent’s commercial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights to the BRAZZERS mark prior to registering the disputed domain names evidenced by Respondent using Complainant’s famous mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <brazzers3x.la> and <brazzers3x.me> domain names were registered on March 13, 2020 and November 14, 2019.
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 asserts 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. 3621570, registered May 19, 2009). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the BRAZZERS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <brazzers3x.la> and <brazzers3x.me> domain names are identical or confusingly similar to Complainant’s BRAZZERS mark as they merely adds the generic or descriptive expression “3x” (which is another way to write “XXX”, an acronym standing for an adult film rating) and the and the TLDs “.la” and “.me.” The addition of a generic or descriptive term and a TLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653178 (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). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights or legitimate interests in the <brazzers3x.la> and <brazzers3x.me> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed to Respondent any rights in the BRAZZERS mark. When a response is lacking, 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, FA1626022 (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 Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). 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 [the] complainant’s mark may support a finding that [the] 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 names lists the registrant as “Hung David,” and there is no other evidence to suggest that Respondent was authorized to use the BRAZZERS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <brazzers3x.la> and <brazzers3x.me> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to misleadingly divert consumers away from Complainant’s website to Respondent’s own competing website which provides illegal reproduction of video content belonging to Complainant and Complainant’s corporate affiliate. Complainant alleges that Respondent does this for Respondent’s financial gain. Using a confusingly similar domain name to divert internet users to a respondent’s competing 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 resolves from both disputed domain names, arguing that the website competes with Complainant as both Complainant and Respondent provide adult entertainment content and services, and more specifically, videos featuring nudity and sexual activities. Furthermore, Complainant argues that Respondent’s website features videos that are unlawful and unauthorized copies of videos Complainant and Complainant’s corporate affiliate produce and release. Complainant’s screenshots also shows banner advertisements present on the website. Therefore, 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).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <brazzers3x.la> and <brazzers3x.me> domain names in bad faith as Respondent uses the disputed domain names to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website for Respondent’s financial gain. Using a confusingly similar domain name to a divert internet users to a respondent’s competing website for a respondent’s financial gain can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (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)); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Here, Complainant argues, and Respondent does not dispute, that Respondent’s resolving website provides unlawful, unauthorized copies of videos that consumers pay Complainant and Complainant’s corporate affiliate for, and thus Respondent competes with Complainant. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Therefore, Complainant has also 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 <brazzers3x.la> and <brazzers3x.me> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 16, 2021
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