If you claim your domain was registered before an existing trademark, better be ready to prove you were that registrant.
In a UDRP case involving the adult domain RealityKing.com, the Complainant is MG IP S.À.R.L., Luxembourg, operators of pornographic web sites, one of which is Reality Kings and its matching .com.
The Chinese Respondent claimed that the domain predates the REALITY KINGS trademark by 18 months, as it was registered in 2006. However, it appears that they only acquired the domain in 2015.
The Complainant provided records of ownership from the DomainTools historic WHOIS, and the sole panelist at the WIPO ordered the domain RealityKing.com to be transferred to the Complainant.
Full details follow:
MG IP S.À.R.L. v. Prairie Web Development, Portfolio Manager
Case No. D2020-06081. The Parties
The Complainant is MG IP S.À.R.L., Luxembourg, represented by ROBIC, LLP, Canada.
The Respondent is Prairie Web Development, Portfolio Manager, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <realityking.com> (the “Disputed Domain Name”) is registered with Rebel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2020. On March 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2020, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2020. The Center received the Respondent’s communications on April 6, 2020, and April 8, 2020. In the latter email, the Respondent requested an extension of the Response due date. In accordance with paragraph 5(b) of the Rules, the due date for Response was extended to April 16, 2020. The Response was filed with the Center on April 16, 2020.
The Center appointed John Swinson as the sole panelist in this matter on April 24, 2020. 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 is MG IP S.A.R.L, a company incorporated in Canada. The Complainant has a number of subsidiary and affiliate companies which it collectively refers to as MindGeek. According to the Complaint, MindGeek is positioned as a leader in web design, IT, search engine optimization focused on the adult entertainment market. MindGeek has more than 115 million visitors throughout its network of websites and delivers over 3 billion advertisement impressions.
One of the Complainant’s brands is “Reality Kings”. The Complainant owns a number of registered trade marks for REALITY KINGS, including the United States of America (“United States”) registered trade mark number 3359336, registered on December 25, 2007 (“Trade Mark”).
According to the Complaint, the Complainant also owns the domain name <realitykings.com>, and “www.realitykings.com” is an established and well-known adult-oriented content site, where users can watch adult content from a variety of sources.
The Respondent is Prairie Web Development, a company incorporated in China. The Respondent has not provided information about itself in the Response, other than to say that it occasionally obtains bulk portfolios of domain names. The Disputed Domain Name was created on June 1, 2006 and according to DomainTools was acquired by the Respondent sometime in 2015. The Disputed Domain Name currently resolves to a website which displays “pay-per-click” (“PPC”) links which are associated with the adult entertainment industry.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant has registered trade mark rights for REALITY KINGS. The Disputed Domain Name is <realityking.com>, which incorporates the entire Trade Mark with the exception of the letter “s” at the end. The Disputed Domain Name is confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name because:
– The Respondent has no bona fide rights in the Disputed Domain Name as the website hosts PPC links which capitalize on the reputation and goodwill of the Complainant’s Trade Marks. The PPC links relate to services in the adult entertainment industry.
– Registering a Disputed Domain Name comprises dictionary words or phrases does not automatically confer rights or legitimate interests on a respondent. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be used in connection with the dictionary meaning and not to trade off a third-parties trade mark rights.
– The Respondent is not commonly known by the Disputed Domain Name, as the Respondent’s name is “Prairie Web Development”.
– The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.
Registered and Used in Bad Faith
The Disputed Domain Name was created on June 1, 2006. The Panel should consider the date that the Respondent acquired the Disputed Domain Name. The transfer of a domain name registration from a third party to the registrant is not a renewal and the date on which the current registrant acquired the domain name is the date the panel should consider when assessing bad faith.
In the present case, DomainTools shows that the registrant of the Disputed Domain Name changed from “Pisces Online Investment” to “Pool.com In Trust” in 2010 and then again from “Pool.com In Trust” to “Portfolio Manager / Prairie Web Development” in 2015. The Disputed Domain Name was therefore acquired eight years after the Complainant’s registration for the Trade Mark.
Google Trends data and graphs demonstrate that the Complainant’s Trade Marks became popular search terms in the Google search engine just three months after the date of first use of the Trade Mark.
The Respondent has acquired the Disputed Domain Name with the primary purpose of disrupting the Complainant’s business. The Respondent is using the Disputed Domain Name in association with the domain monetizing service ParkLogic to direct Internet users to landing pages with PPC advertising services.
The Respondent is intentionally attempting to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion. The Respondent is trying to trade off the goodwill of the Complainant. Other circumstances of bad faith include:
– the Disputed Domain Name is just a typo of a widely known mark; and
– the Respondent has purchased bulk domain names.
B. Respondent
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name was registered on June 1, 2006. The Complainant has not provided any evidence of rights prior to the registration of the Disputed Domain Name in 2006.
The Respondent contends that the registration of the Disputed Domain Name pre-dates the Complainant’s Trade Mark by 18 months.
The terms “reality” and “king” are generic terms.
Rights or Legitimate Interests
At the time of registration, the Respondent had no knowledge of the Complainant. The Respondent registered the Disputed Domain Name for its own use and has no interest in selling the domain name.
Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name before the Complainant acquired Trade Mark rights.
The Respondent did not register the Disputed Domain Name to sell to the Complainant. The Complainant made offers to purchase the Disputed Domain Name from the Respondent and the Respondent did not reply.
All accusations of typosquatting, abusing the Complainant’s Trade Marks or disrupting the business of a competitor are unsubstantiated.
The Respondent acknowledges that it occasionally obtains bulk portfolios of domain names. Domain monetization is a long established business model – there is no deliberate act to sabotage another person’s business here. The Respondent further states that this dispute does not relate to any other bulk purchase [of] domain names, as it relates to the registration of the disputed domain name only.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with the exception of the letter “s” at the end. The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
– The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a website displaying PPC links to the adult entertainment industry, which is directly relevant to the Complainant’s industry. The Respondent uses the Trade Mark to offer links to competing services to the Complainant. In the circumstances, this is not bona fide.
– The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.
– There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, nor has registered or common law trade mark rights in relation to this name. The Respondent goes by the name “Prairie Web Development” and has not provided any evidence of its association with the name “Reality King”.
– “Reality King” is not descriptive of the services provided by the Respondent on the website at the Disputed Domain Name.
– The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent is using the website at the Disputed Domain Name to display PPC links to the adult entertainment industry and presumably is deriving profit from doing so.
The Respondent states that at the time of registration, the Respondent had no knowledge of the Complainant. The Respondent states that the Respondent registered the Disputed Domain Name for its own use and has no interest in selling the domain. The Respondent has not provided any business rationale as to why it registered the Disputed Domain Name, why it selected the term “reality king” for a domain name, or how the Respondent intends to use the Disputed Domain Name. The Respondent has not rebutted, to the Panel’s satisfaction, the prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
To succeed in a complaint under the Policy, it is well established that under the third element of the Policy, the first thing that a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind.
A key question for the Panel was when the Respondent registered or acquired the Disputed Domain Name. The Disputed Domain Name was created on June 1, 2006. The Complainant has provided documents, in the form of DomainTools records, which show that:
– the registrant of the Disputed Domain Name changed from “Pisces Online Investment” to “Pool.com In Trust” in 2010; and
– the registrant of the Disputed Domain Name changed again from “Pool.com In Trust” to “Portfolio Manager / Prairie Web Development” in 2015.
The Complainant submits that the Disputed Domain Name was acquired by the Respondent in 2015. In reply, the Respondent contends that the registration of the Disputed Domain Name pre-dates the Complainant’s Trade Mark by 18 months. However, the Respondent does not provide any evidence to demonstrate that the Respondent was the original registrant of the Disputed Domain Name. The Respondent has not shown that there was an unbroken chain of possession or control. Based on the evidence provided to the Panel, the Panel finds that the Respondent has not rebutted the evidence provided by the Complainant that shows that the Respondent acquired the Disputed Domain Name from the previous registrant “Pool.com In Trust” in 2015.
The transfer of a domain name registration from a third party to the respondent is not a regarded as a renewal, and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith (see section 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Therefore, in this case, the Panel will assess registration and use in bad faith from 2015.
The Disputed Domain Name was acquired by the Respondent eight years after the Complainant registered the Trade Mark. The Panel further notes the Panel accepts the Complainant’s submissions that the Complainant had developed a strong reputation in the Trade Mark. The Panel finds that the Disputed Domain Name was registered in bad faith.
In addition, the Panel notes that the Respondent has not provided any evidence that it has undertaken any kind of measures to avoid an abusive use of the Disputed Domain Name, for example, through methods such as applying negative keywords. On the contrary, the Disputed Domain Name is being used for PPC links targeting the same industry as the Complainant. The links all currently relate to adult entertainment and pornography sites. As far as the Panel is aware, the Respondent has not used, and does not intend to use, the Disputed Domain Name other than to display PPC links. The Panel notes that the Respondent did not provide any explanation for an intended use of the Disputed Domain Name different to the monetization via PPC links (which the Panel notes targets the Complainant’s industry), nor any arguments or evidence supporting a hypothetical legitimate use of the Disputed Domain Name. The Disputed Domain Name is not descriptive of the services advertised via the PPC links. In this case, the submissions and evidence provided by the Complainant supports an inference of bad faith registration with the purpose of attempting to trade off the Complainant’s goodwill in the Trade Mark, and the Respondent has failed to rebut this presumption.
As such, the Panel finds that the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of the website. This amounts to evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on the third element 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 <realityking.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 7, 2020
