WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Licensing IP International S.A.R.L v. WhoisGuard Protected, WhoisGuard, Inc. / Nguyen Truong

Case No. D2019-2046

1. The Parties

The Complainant is Licensing IP International S.A.R.L, Luxembourg, represented by SafeNames Ltd., United States of America (“United States”).

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Nguyen Truong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <brazzers3x.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2019. On August 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 27, 2019.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2019.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on October 4, 2019. 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.

4. Factual Background

The Complainant in this matter is Licensing IP International S.A.R.L., an entity based in Luxembourg, which owns numerous trade mark rights over BRAZZERS, including the following:

- United States trade mark BRAZZERS (word) No. 3621514 of May 19, 2009, in class 41;

- Canadian trade mark BRAZZERS, BRAZZERS.COM (word) No. TMA720519 of August 8, 2008 in classes 9, 14, 16, 21, 25, 26, 41;

- European Union trade mark BRAZZERS (word) No. 010175909 of January 9, 2012, in classes 38, 41, 42.

The Complainant also owns domain names containing the element “brazzers”, such as <brazzers.com>, <brazzers.cam>, <thebrazzersstore.com> and <brazers.com>.

The trade marks BRAZZERS are licensed to MG Premium Ltd, which operates under this brand a website offering adult entertainment videos. The evidence provided with the Complaint indicates that the brand “Brazzers” is well known in the field of online pornography. For the purposes of this proceeding, it is sufficient to highlight the following figures: the website <brazzers.com> receives an average of 37 million visits per month, and is the 1.005th most visited website on the Internet. This brand is subject to important marketing innovations in order to gather popularity in this industry, including the retail of merchandise products, the operation of successful social media with many followers, the release of songs and videos, etc. For example, the Instagram account of the Complainant’s licensee has nearly 8 million followers. As a result of these efforts, the website <brazzers.com> is ranked first on popular search engines when conducting a search on “brazzers”.

The disputed domain name <brazzers3x.com> was registered on August 23, 2018 through a privacy service, identified as “WhoisGuard Protected, WhoisGuard, Inc.”. Once the Complaint was filed, the Registrar disclosed the identity of the Respondent, an individual with an alleged address in Viet Nam.

The disputed domain name <brazzers3x.com> is used to offer adult pornographic videos, under the title “BRAZZERS3X”. Interestingly, this title is reproduced using the same figurative elements as the Complainant’s website, namely upper case letters in a mixture of white / grey, with the central letters “zz” in gold. The word “brazzer” is also used numerous times on the website to identify some of the videos which, as claimed by the Complainant, are copied from its own website. Besides, the Respondent’s website also offers links to other pornographic websites, or to other commercial websites offering products linked to the adult industry.

5. Parties’ Contentions

A. Complainant

On the first element of the Policy, the Complainant claims that the disputed domain name is confusingly similar to the “BRAZZERS” trade marks. Indeed, it reproduces the registered trade marks BRAZZERS, with the mere addition of the sign “3x”, which signifies “xxx” and is directly related to the adult entertainment sector.

On the second element of the Policy, the Complainant’s arguments are twofold: first, the Respondent does not own trade mark rights over the disputed domain name, and has not been licensed or otherwise authorized to use the disputed domain name. Second, the use of the disputed domain name to offer the same services as the Complainant, including videos which are copied from the Complainant’s website, is not a bona fide offering of goods or services.

On the third element of the Policy, the Complainant indicates that the Respondent knew, or should have known, its trade mark BRAZZERS when registering the disputed domain name <brazzers3x.com>: its trade marks predate by 10 years the registration of this domain name, and the brand “Brazzers” is well-known and is ranked first in search engines. Actually, the use made of the disputed domain name indicates that the Respondent is well-aware of the activities of the Complainant. Besides, the use of the disputed domain name to offer adult entertainment videos, and display links to the websites of competitors, disrupts the activities of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights.

The Complainant owns several trade mark rights over the sign BRAZZERS. This trade mark is fully reproduced in the disputed domain name <brazzers3x.com>. The addition at the end of the sign of the element “3x” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The disputed domain name <brazzers3x.com> is therefore confusingly similar to the trade marks of the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant has clearly satisfied its burden of evidence here: it has argued that it does not know the Respondent, is not linked to the Respondent, and that to its knowledge the Respondent has no rights or legitimate interests in the disputed domain name. Besides, the disputed domain name is not used in connection with a bona fide offering of goods or services. On the contrary, the use made by the Respondent of the disputed domain name is indicative of a lack of rights or legitimate interests.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

We are dealing here with a clear case of cybersquatting. There is no doubt that the disputed domain name <brazzers3x.com> was registered, and is being used, in bad faith by the Respondent.

The Respondent clearly targeted the Complainant’s trade marks when registering the disputed domain name <brazzers3x.com>: it chose a domain name which reproduced the brand “Brazzers”, which is not only distinctive, but also well known in the adult online entertainment industry, and combined it with the sign “3x”, which in itself recalls the pornographic industry, which is referred to with the letter “x” and is also the subject of a specific top level scheme, “.xxx”. This combination was registered under the top level domain “.com”, as for the domain name <brazzers.com> of the Complainant.

Thereafter the Respondent hosted a pornographic website under the title “Brazzers”, using the exact same figurative elements as those used in the Complainant’s website. This, plus the recurrent use of the brand “Brazzers” in the Respondent’s website, as well as the links to competitors websites, is a potential source of confusion for the millions of clients of the Complainant. This is of course very likely to damage its business and interests. Last but not least, when clicking on the competitors’ banners, the users are redirected to other websites in a separate tab, and this may trigger illegitimate pay-per-click revenues to the Respondent.

Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied.

7. Decision

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 <brazzers3x.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: October 18, 2019