The Complainant is PB Web Media B.V. of Haarlem, Netherlands, represented by Walters Law Group, United States of America.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
The disputed domain name <tubegalore.info> is registered with TLD Registrar Solutions Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 8, 2015, the Center sent its Language of proceedings communication both in English and in Russian. On June 10, 2015, the Complainant requested English to be the language of proceedings. The Respondent did not comment on this request within the deadline set by the Center.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Russian, and the proceedings commenced on June 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2015. The Respondent did not submit any response before the response due date. Accordingly, the Center notified the Respondent's default on July 8, 2015. On July 10, 2015, the Center received an email communication from the Respondent or someone connected to the Respondent.
The Center appointed Assen Alexiev as the sole panelist in this matter on July 21, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted its Complaint in the English language, and requests that the proceedings be held in English, pointing out that the website at the disputed domain name operates only in the English language, and that two days after the filing of the Complaint, the Respondent began forwarding all traffic from the disputed domain name to another domain name which is also in English, from which it could be reasonably presumed that the Respondent has the ability to communicate and to conduct its business in English. The Complainant also submits that the carrying out of the proceedings in English will avoid unnecessary costs and delay. The Center has invited the Respondent to state its position on the language of the proceedings, and the Respondent has not submitted any objection to the Complainant's request the proceedings to be held in English. The Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account all relevant evidence that is available in this case in the Russian or in the English language.
The Complainant offers online advertising and directory services and an Internet search engine for adult entertainment multimedia products.
The Complainant is the owner of the Benelux service mark TUBEGALORE with registration No. 0964052, with effect from October 15, 2014 for services in International classes 35 and 42 (the "TUBEGALORE service mark").
The Complainant also owns the <tubegalore.com> domain name, created in 2007, through which it carries out its business.
The Respondent registered the disputed domain name on November 24, 2014. It currently resolves to a website that offers advertising and directory services and a search engine for searching of multimedia materials in the field of adult entertainment.
The Complainant asserts that by virtue of its efforts, the TUBEGALORE service mark and domain name have become well-recognized by consumers as designating the Complainant as the source of the services marked with the TUBEGALORE service mark. The Complainant's website at "www.tubegalore.com" receives over 25 million visitors per day.
The Complainant contends that the disputed domain name is identical to the TUBEGALORE service mark in which Complainant has rights, in that the disputed domain name is a complete and exact reproduction of this service mark. The only difference is the ".info" suffix in the disputed domain name, and this suffix may be disregarded for the purposes of assessment under paragraph 4(a)(i) of the Policy.
According to the Complainant, the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has registered the disputed domain name after the Complainant began using and registered the TUBEGALORE service mark and registered the <tubegalore.com> domain name. The term "Tubegalore" is arbitrary and has no meaning outside of its use as a means to identify the Complainant as a source of certain services. The Respondent is not a licensee of the Complainant and has not been authorized to use the Complainant's TUBEGALORE service mark for any purpose. The Respondent is not commonly known as "Tubegalore". The services offered at the website to which the disputed domain name currently resolves are similar to and competing with the services offered by the Complainant. The Respondent is using an identical or confusingly similar domain name to redirect Internet users to its website for commercial gain. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant further contends that the Respondent has registered and used the disputed domain name in bad faith. The Respondent has registered the disputed domain name containing an exact reproduction of the TUBEGALORE mark with knowledge of this service mark, and with an intention to capitalize on consumer recognition of the TUBEGALORE service mark. The designation "Tubegalore" is unique and arbitrary such that it is unlikely that the Respondent devised it on its own. The Respondent is using the disputed domain name to misdirect Internet users to its own confusingly similar website used in connection with a revenue-generating scheme under which the Respondent receives some compensation from revenues generated by searches activated through the disputed domain name. The Respondent's use of Complainant's TUBEGALORE service mark to redirect Internet users to sponsored listings for which the Respondent presumably receives click-through fees constitutes bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions. In the email communication to the Center of July 10, 2015, it was simply alleged that the Complainant did not have a registered trademark and that the website at the disputed domain name was not active any more.
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"
The Complainant has provided evidence and has thus established its rights in the TUBEGALORE service mark. The allegation in the email of July 10, 2015 that the Complainant has not proven its trademark rights is groundless and the Panel rejects it.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".info" part of the disputed domain name. Therefore, the relevant part of the disputed domain name that has to be analyzed is its "tubegalore" section, which is identical to the TUBEGALORE service mark.
On this basis, the Panel finds that the disputed domain name is identical to the TUBEGALORE service mark in which the Complainant has rights.
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the burden of production shifts to the Respondent to provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated to the Complainant and has never been authorized to use the TUBEGALORE service mark, that the Respondent is not commonly known by the disputed domain name, is not making a noncommercial or a fair use of it and is not using it in relation to the provision of a bona fide offering of goods or services. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the case file that the Respondent is commonly known by the disputed domain name, and the Respondent has not alleged any other circumstances under paragraph 4(c) of the UDRP or made any other allegations relevant to the issue of rights and legitimate interests. The disputed domain name, being identical to the TUBEGALORE service mark, resolves to a website that offers services identical to those of the Complainant and to those for which the TUBEGALORE service mark has been registered. In the Panel's view, such use of the disputed domain name is not bona fide and does give rise to rights and legitimate interests in the disputed domain name.
Taking all the above into account, the Panel finds that the Complainant's prima facie case of lack of rights and legitimate interests of the Respondent in the disputed domain name has not been rebutted. Accordingly, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
In this proceeding, the Complainant has contended that the disputed domain name was registered in view of the popularity of the TUBEGALORE service mark in an attempt to benefit from such popularity and from the consumer interest that it attracts. As discussed above, the disputed domain name is identical to the TUBEGALORE service mark and the website to which it resolves offers services that are similar to and compete with the services offered by the Complainant. The Panel is satisfied by these circumstances that the Respondent had knowledge of the Complainant and of its services (including the Complainant's domain name <tubegalore.com>) at the time of registration of the disputed domain name and that it is more likely than not that this registration was indeed made in view of the popularity of the TUBEGALORE service mark and with an intention to extract benefit from such popularity. Therefore, the Panel finds that the disputed domain name was registered in bad faith.
According to the Complainant, the Respondent has used the disputed domain name, which is identical to the TUBEGALORE service mark, to link it to a website that offers services that compete with those of the Complainant. Following the submission of the Complaint, the disputed domain name redirects visitors to the website at "www.tubster.info" which website also offers such services and displays TUBEGALORE.INFO as its header, without containing any disclaimer for the lack of relation with the Complainant. The Respondent, or someone connected to the Respondent, has stated that there is no active website at the disputed domain name, but this statement is incorrect, as visitors trying to access the disputed domain name will be redirected to the website at "www.tubster.info" and exposed to its content.
Taking all the above into account, and in the lack of any relevant and plausible allegations and evidence to the contrary, the Panel finds that the Respondent, by registering and using the disputed domain name that is identical to the TUBEGALORE service mark, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the TUBEGALORE service mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products and services to which the pay-per-click links on the Respondent's website redirect visitors, which supports a finding of bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tubegalore.info> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: August 12, 2015