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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SG Services, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Host Master, 1337 Services LLC

Case No. D2019-2383

1. The Parties

The Complainant is SG Services, LLC, United States of America (“U.S.”), represented by Walters Law Group, U.S.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Host Master, 1337 Services LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <suicidegirlsnow.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On October 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 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 October 8, 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 October 9, 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 October 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2019.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 8, 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 owns and operates a website featuring adult entertainment content. The Complainant owns several trademark registrations for the trademark SUICIDEGIRLS, including the following:

U.S. trademark registration no. 2,779,128 for SUICIDEGIRLS, registered November 4, 2003.
U.S. trademark registration no. 2,783,766 for SUICIDEGIRLS and design, registered November 18, 2003.
U.S. trademark registration no. 4,771,234 for SUICIDEGIRLS, registered July 14, 2015.
U.S. trademark registration no. 5,047,614 for SUICIDEGIRLS and design, registered September 27, 2016.

The trademark SUICIDEGIRLS has been used in association with the Complainant’s business since at least as early as September 2001. The Complainant’s principal website has been operating in association the domain name <suicidegirls.com> over that whole period of time.

The disputed domain name was registered on October 12, 2015 and currently resolves to a website displaying pornographic content.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <suicidegirlsnow.com> is confusingly similar to the Complainant’s registered trademark SUICIDEGIRLS. The disputed domain name replicates the Complainant’s trademark in its entirety except for the addition of the descriptive word “now”. The addition of the generic word “now” does not mitigate the confusion between the disputed domain name and the Complainant’s registered trademark.

The Complainant further contends that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not commonly known by the name SUICIDEGIRLS, and has never been authorized or licensed to use the name by the Complainant. The Complainant argues that the confusingly similar disputed domain name reverts to a website which features content which is in direct competition with the Complainant’s business and which contains pirated material from the Complainant’s website. This is not a bona fide offering of goods and/or services under the Policy.

The Complainant also submits that the disputed domain name was registered fourteen years after the Complainant’s trademark was first registered in the U.S. Trademarks Office and long after the Complainant had established a substantial reputation in the U.S. and internationally through extensive use and promotion of the SUICIDEGIRLS trademark. Therefore, the Respondent must have known about the Complainant when it registered the disputed domain name. Furthermore, the Respondent has used on its website pirated material from the Complainant’s website. The copying of content from the Complainant’s site is clear evidence that the Respondent knew about the Complainant and the Complainant’s trademark rights. The Respondent has targeted the Complainant for purposes of monetary gain which is evidence of bad faith under the Policy.

The Complainant also contends that the Respondent committed cyberflight after receiving the Complainant’s cease and desist letter dated September 20, 2019. On September 27, 2019, the Respondent moved the registration of the disputed domain name from Namecheap, Inc. to Tucows, Inc. in attempt to avoid or delay a UDRP proceeding, all of which is evidence of bad faith under the Policy.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

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

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the trademark SUICIDEGIRLS by virtue of its trademark registrations listed in section 4 of this Decision.

The Panel finds that the disputed domain name <suicidegirlsnow.com> is confusingly similar to the Complainant’s registered trademark SUICIDEGIRLS, as the disputed domain name replicates the Complainant’s registered trademark except for the addition of the word “now”. The addition of this descriptive word to a distinctive mark does not prevent a finding of confusing similarity.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests. The Complainant clearly owns rights in the registered mark SUICIDEGIRLS as noted in section 4 of this Decision. The Complainant has used its trademark SUICIDEGIRLS since 2001. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was aware of the Complainant’s trademark and website services, particularly because the Respondent chose to misappropriate and copy pirated content from the Complainant’s website.

The Respondent was not authorized or licensed to use the Complainant’s trademark, and the Respondent is not commonly known by the by the disputed domain name.

In this situation, the burden shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As set out above, the Panel is prepared to find that the Respondent was aware of the Complainant’s trademark rights in the SUICIDEGIRLS trademark when it registered the disputed domain name <suicidegirlsnow.com>. This conclusion is supported by the fact that the Respondent is using the disputed domain name in association with a website which features identical services as those of the Complainant, and actually reproduces content from the Complainant’s website. This conduct reflects a clear intention to interfere with the Complainant’s business in a manner which is abusive under the Policy. The Respondent has failed to provide any explanation for its conduct. The evidence of cyberflight to another registrar after receiving a demand letter is further evidence of bad faith under the Policy.

Accordingly, the Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.

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 <suicidegirlsnow.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: November 14, 2019

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