MG Licensing Europe S.À.R.L. v. Marko Griehl / Andreas Starl / Albin Kesselbacher; Whoisguard, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MG Licensing Europe S.À.R.L. v. Marko Griehl / Andreas Starl / Albin Kesselbacher / Whoisguard, Inc.

Case No. D2018-0534

1. The Parties

The Complainant is MG Licensing Europe S.À.R.L. of Luxembourg, Luxembourg, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondents are Marko Griehl of Wismar, Germany / Andreas Starl of Munich, Germany/ Albin Kesselbacher of Klagenfurt, Germany / Whoisguard, Inc., self-represented.

2. The Domain Names and Registrars

The disputed domain names <mydirtyhobby.me> (the “first disputed domain name”),

<stream-mydirtyhobby.biz> (the “second disputed domain name”), and

<stream-mydirtyhobby.me> (the “third disputed domain name”) are registered with NameCheap, Inc.

The disputed domain name <stream-yourdirtyhobby.com> (the “fourth disputed domain name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

The disputed domain name <mydirtyhobby-moviez.com> (the “fifth disputed domain name”) is registered with Shinjiru MSC Sdn Bhd.

The above registrars will further be collectively referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2018. On the same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 9, March 10, and March 19, 2018, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2018, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 23, 2018.

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 March 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2018. The First Respondent sent email communications to the Center on March 21, and March 26, 2018. The First Respondent did not submit a formal response. No communication was received from either the Second or Third Respondents.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 30, 2018. 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 adopted the brand name “My Dirty Hobby” in 2006. Since then, it has been using it to offer “adult video and social network services” from the website at the URL “www.mydirtyhobby.com”.

According to the Complaint, the Complainant’s website had 5 million registered members as of January 2017. It also claims that up to 4 million pictures, 390,000+ videos, and 5,000 girls are in live webcams daily. It has more than 2,800 followers for each of its Twitter and Instagram accounts.

Amongst other things, the Complainant has registered the following trademarks as follows:

- European Union Trademark (“EUTM”) No. 005686787, MYDIRTYHOBBY, registered from December 3, 2007, in International Classes 35, 38, and 41;

- Swiss Trademark No. 646301, MY DIRTY HOBBY, registered from July 17, 2013, in International Classes 3, 8, 9, 16, 25, 35, 41, 42, and 45;

- International Trademark No. 1207304, MY DIRTY HOBBY, registered from August 22, 2013, in International Classes 35, 38, and 41, designating (amongst other countries) the United States of America;

The trademarks are registered in plain text as shown. The Complainant also uses its trademark in a stylized form. The stylization of the trademark consists of the words “my dirty hobby” in lower case with the word “dirty” in white lettering on a red “swipe” or “scrape”.

According to Internet traffic statistics included in Annex 14 to the Complaint more than 80 per cent of the traffic to the Complainant’s website at “www.mydirtyhobby.com” comes from Germany.

The first disputed domain name was registered on May 23, 2017; the second disputed domain name was registered on November 25, 2015; the third disputed domain name was registered on January 23, 2018; the fourth disputed domain name was registered on October 17, 2016; the fifth disputed domain name was registered on February 8, 2017.

All of the disputed domain names resolve, or have resolved, to websites providing images and video of an explicit sexual nature. Much of the content on each of the websites appears to be in German.

5. Discussion and Findings

No response has been filed by the Second and Third Respondents and no substantive response has been received from the First Respondent.

However, the Complaint and the Amended Complainant and Annexes have been sent in accordance with paragraph 2(a) of the Rules to the electronic and physical co-ordinates of each Respondent which have been confirmed as correct by the applicable Registrar.

Although the communications received by the Center from the First Respondent were in German, and much of the content of the websites to which the disputed domain names resolve is also in German, the language of each registration agreement is English. In accordance with paragraph 11 of the Rules, therefore, the language of the proceeding is English.

Accordingly, paragraph 4(a) of the Policy provides that, to divest the Respondents of their disputed domain names, the Complainant must demonstrate the following:

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

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

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

A. Consolidation

The Complainant seeks consolidation of its complaints against each Respondent in this proceeding.

Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally, and each is given a fair opportunity to present his, her or its case.

In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where the domain names in question, or the websites to which they resolve, appear to be under common control, and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

In assessing whether or not several disputed domain names are under common control of the same person or network of persons, the panelist in Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to everyday in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo, WIPO Case No. D2012-2212 took into account the following matters:

“(1) The use of common registration information such as administrative contact details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers; (2) The use of the same or similar names in the registration information; (3) Resolving disputed domain names to the same or similar Websites; (4) Using the same domain name servers; (5) Using the same registrars; and (6) Close similarity between the disputed domain names, each of which incorporates the Trademark in its entirety in conjunction with non-distinctive, generic or geographical terms.”

In the present case, the Complainant points out that different email addresses and telephone numbers have been recorded for the contact details of the second, fourth and fifth disputed domain names. However, each is registered in the same name, the First Respondent, who has given the same physical address. The Panel considers it appropriate, therefore, to proceed on the basis that each of these disputed domain names is registered to the same person.

The first and third disputed domain names (registered, respectively, by the Second and Third Respondents) have the same Registrar as the second disputed domain name registered by the First Respondent. The second and third disputed domain name share the same domain name form, apart from the Top-Level Domain (“TLD”). At the time the decision is being prepared, the first and third disputed domain names both redirect to the website at <stream-mdh.se>, a straightforward contraction of the second and third disputed domain names. Each of the first, second and third disputed domain names uses the same stylized logo-form of the Complainant’s stylized form. While the content on each website appears to rotate or change over time, the layout and style is almost the same (if not the same) and in some of the Annexes submitted with the Amended Complaint at least some of the same “performers” and videos appearing on the website which the second disputed domain name resolves to also appear on both or either of the first and third disputed domain names.

In these circumstances, the Panel considers that it is permissible to draw the inference that, if the same person has not registered the first, second and third disputed domain names, those disputed domain names are all being used under common control or as part of the same enterprise.

There does not appear to be any prejudice that any of the Respondents would suffer if consolidation be permitted. It is also more convenient for the Complainant for the matters to be dealt with in the one proceeding. Furthermore, given the common content on the websites, it is appropriate that they be dealt with together to avoid the risk of inconsistent decisions.

Accordingly, the Panel accedes to the Complainant’s request to consolidate the complaints against all three Respondents.

B. Identical or Confusingly Similar

The first element that the Complainant must establish is that each disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of at least the EUTM, the Swiss Trademark and the International Trademark referred to in section 4 above. In addition, the Complainant has provided sufficient evidence of use and reputation in the unregistered, stylized version of its trademark with the “swipe or “scrape” that the Panel considers the Complainant also has rights in that form of its trademark as an unregistered trademark under the Policy.

The second stage of this inquiry requires a visual and aural comparison of each disputed domain name to the proven trademarks. WIPO Overview 3.0, section 1.7. For the purposes of the present inquiry and having regard to representations of the Complainant’s unregistered trademark, the figurative elements can be disregarded and reference made just to the verbal elements: WIPO Overview 3.0, section 1.10.

In accordance with standard practice, it is permissible to disregard the TLD component of each domain name. Also, the Panel disregards the presence or absence of blank spaces between the verbal elements of the Complainant’s trademarks.

Disregarding these matters, the first disputed domain name is identical to the Complainant’s registered trademarks.

Further, the second, third, and fifth disputed domain name each consists of the Complainant’s trademark with the addition of a descriptive term – either “stream-” or “-moviez”. The Complainant’s trademark is clearly visible and recognizable within these disputed domain names and therefore the Panel finds them to be confusingly similar to the Complainant’s trademarks. Although it is not strictly necessary for the purposes of this inquiry, the Panel notes that the additional, descriptive term in each of these disputed domain names is an apt term for use with the Complainant’s trademark and consequently reinforces the potential for confusion.

The fourth disputed domain name replaces the word “my” in the Complainant’s trademarks with the pronoun “your”. Although the pronoun has changed, the disputed domain name still communicates the same essential idea as the Complainant’s trademarks centered on the “dirty hobby” message. As with the second and third disputed domain names, the addition of the descriptive term “stream-” does not change the distinctive character of the other elements. Accordingly, the Panel finds that the fourth disputed domain name is confusingly similar to the Complainant’s trademarks also.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.

It is clear from the Complaint that the Complainant has not authorized any of the Respondents to use the Complainant’s trademarks and the Respondents are not associated with the Complainant.

The disputed domain names are not derived from the names of the Respondents as recorded in the WhoIs information provided by the Registrars.

The Complainant’s usage of its trademark and registration of the trademarks, particularly the EUTM, long pre-dates the registration of any of the disputed domain names. Given that length of use and that the EUTM, in particular, covers the geographical territories both where the Respondents are located and also the countries providing the registrations for .me (Montenegro) and .se (Sweden), it seems very unlikely that any of the Respondents could also be using the term “my dirty hobby” for the “adult” entertainment services in question in good faith. Doubt on that score is removed by the use on the first, second, third and fifth disputed domain names of essentially the same figurative version of the Complainant’s trademark with the “swipe” or “scrape” element. That form of logo does not appear to have been used on the website which the fourth disputed domain name has resolved to. However, the fourth disputed domain name was registered by the First Respondent almost one year after he registered the third disputed domain name.

In these circumstances, the use of the respective disputed domain names to resolve to websites providing “adult” entertainment services in competition with the Complainant’s service does not qualify as a bona fide offering of goods or services under the Policy. For the same reasons, if the websites are not commercial, use of the kind described would not qualify as legitimate noncommercial use nor fair use.

The Panel notes that none of the Respondents has sought to rebut the prima facie case which the Complainant has established against them.

Accordingly, the Panel finds that the Complainant has established the Respondents do not have rights or legitimate interests in the disputed domain names.

D. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that each of the disputed domain names has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

To the extent that there could be doubt about the Respondents’ motives in registering and using the disputed domain names, that doubt is removed by the use in respect of four of the disputed domain names of what is effectively the figurative version of the Complainant’s trademark or something which so closely resembles it as to be likely to cause confusion. Moreover, as already noted, the First Respondent registered the fourth disputed domain name well after he had already registered the third disputed domain name and so he clearly was well aware of the Complainant and its trademarks.

Accordingly, the Panel finds that each of the disputed domain names has been registered and used in bad faith.

6. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that each of the disputed domain names,

<mydirtyhobby.me>

<mydirtyhobby-moviez.com>

<stream-mydirtyhobby.biz>

<stream-mydirtyhobby.me>

<stream-yourdirtyhobby.com>,

be transferred to the Complainant.

Warwick A Rothnie

Sole Panelist

Date: May 12, 2018