Complainant is Webstar Marketing Group, Inc. of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.
Respondent is Robert Aronin of Encinitas, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2012. On June 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. Respondent did not submit a response prior to the due date. Accordingly, the Center notified Respondent’s default on June 28, 2012. A late response was accepted by the Panel on July 16, 2012.
The Center appointed Timothy D. Casey as the sole panelist in this matter on July 6, 2012. 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. Due to the acceptance of the late response, the Panel extended the decision due date to July 31, 2012. 4. Factual Background
Complainant publishes trade journals for the adult industry in print as “XBiz Premier” and “XBiz World”, and online at “”. It also runs a discussion forum website at “”, on which members of the adult industry discuss business opportunities in the online industry.
Complainant has owned the trademarks XBIZ and XBIZ WORLD since April 2006.
The disputed domain name was registered with the Registrar, on May 4, 2008. Although the disputed domain name now resolves to Respondent’s “” website, it has been primarily associated with “parking” websites whose exact nature is disputed by the parties.
On May 3, 2012, Complainant’s counsel emailed a cease and desist letter to Respondent related to Respondent’s use of the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its XBIZ and XBIZ WORLD trademarks, and that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that its “” forum provides tools for its members to make deals with one another in areas including affiliate marketing programs, traffic purchasing, web design, and domain purchasing and selling. Complainant further contends that XBIZ branded services found at “” have been used for the sale and purchase of erotic-themed domain names since at least March 30, 2009.
Complainant contends that Respondent was aware of Complainant’s rights to the XBIZ mark when the disputed domain name was registered, and that registration was done in bad faith.
Complainant contends that Respondent’s use of the disputed domain name has been primarily as a pay-per-click website involving adult content. It further contends that Respondent launched a website “intended to appear as” a domain name registration website only after Complainant notified Respondent that the disputed domain name infringed its trademarks.
Complainant contends that the disputed domain name has been offered for sale.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent contends that it considered Complainant’s trademarks prior to registering the disputed domain name, but believed its intended use to be outside the scope of Complainant’s trademarks.
Respondent contends that its plan to use as a domain name registration website were commenced no later than July 21, 2011, prior to the filing of the Complaint.
Respondent contends that Complainant “publishes domain information” but does not provide domain name services, and that Complainant’s trademark registrations cannot be construed to include the services provided by an ICANN accredited registrar or its agents.
Respondent contends that the disputed domain name initially resolved to a “parking page” supplied by the Registrar. Respondents further contend that after being notified by Complainant, it redirected the domain name to Respondent’s website, “”. 6. Discussion and Findings A. Identical or Confusingly Similar
The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion. In order to satisfy this test, the relevant trademark must usually be recognizable as such within the domain name. Here, the XBIZ mark is prominently featured at the beginning of the disputed domain name .
The addition of common, dictionary, descriptive, or negative terms to a disputed domain name are typically regarded as insufficient to prevent confusion. Here, the addition of the word “domains” to the mark does nothing to prevent confusion regarding Complainant’s ownership, sponsorship, or approval. Complainant’s trademarks include the term XBIZ and the term “domains” just further describes a domain name. This is particularly true in light of Complainant’s activity in the domain name business and its use of the and domain names. The Panel finds that while Complainant may not be directly in the business of selling domain name registration services, Complainant is active in promoting deals involving the sale or registration of domain names. Complainant’s activity in this space creates a genuine risk of confusion regarding the disputed domain name.
The Panel finds the disputed domain name to be confusingly similar to the XBIZ trademark, and that the first element of the Policy has been met by Complainant. B. Rights or Legitimate Interests i) Rights
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, and by implication contends that it did not in any way authorize Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s mark was not authorized by Complainant. ii) Legitimate Interests
Complainant contends that, prior to notification of the dispute, Respondent was not commonly known by the disputed domain name. Because Respondent’s reply does not address this contention, the Panel accepts it as true.
Complainant contends that, prior to notification of the dispute, Respondent’s use of the disputed domain name was not associated with the offering of bona fide goods or services. Respondent contends that the website was under active development, and during that period the disputed domain name resolved to a parking page supplied by the Registrar. Respondent points to discussions with the Registrar regarding the sale of “.xxx” domain names. However, there is no evidence that these discussions related specifically to the disputed domain name and Respondent should be in any event deemed responsible for content appearing on its website, even if such content is being generated by the Registrar (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition "WIPO Overview 2.0") paragraph 2.6). On balance, the Panel finds Respondent’s assertion that the website was under “active development” to not be credible.
While the use of a parking page may be legitimate in some circumstances, it does not by itself constitute a bona fide offering of goods and services. Similarly, redirecting web traffic from the disputed domain name to an unrelated website is also not sufficient to constitute the bona fide offering of goods and services. When there is no apparent relationship between the disputed domain name and the destination website, there can only be a greater presumption that the disputed domain name is being used because of its similarity to a registered or well-known trademark. That is the case here, where the disputed domain name now resolves to Respondent’s website at “”.
Based on the foregoing, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
Respondent contends that, although it knew of Complainant’s marks, it did not consider to be infringing. UDRP proceedings are not trademark infringement actions and the requirements for proving or avoiding infringement are not necessarily the same. For example, the threshold test under the UDRP for confusing similarity is based on a straightforward visual or aural comparison of the trademark with the alphanumeric string in the disputed domain name. The content of a website used by Respondent, i.e., whether it is similar to or different from the business of a trademark holder, is usually disregarded in the threshold assessment under the first element of the UDRP, although such content may be relevant to the assessment of an intent to create confusion under subsequent UDRP elements.
The Panel must look to the cumulative weight of the evidence to determine if a domain name has been registered and used in bad faith. Awareness of a complainant’s mark prior to registration is one factor of many to be considered, although in this case such awareness hurts rather than helps Respondent’s case. Viewed in the light most favorable to Respondent, awareness of the marks shows that Respondent had notice that the disputed domain name might be confusingly similar to the trademarks, but nevertheless chose to register and use the disputed domain name.
Circumstances indicating that a domain name was acquired primarily for the purpose of selling the domain name to the owner of the trademark is suggestive of bad faith. Complainant contends and has provided evidence that the disputed domain name has been offered for sale. While this is not conclusive evidence that the disputed domain name was acquired primarily for resale to the trademark owner, it is suggestive of it, particularly in light of Respondent’s awareness of the trademark when the disputed domain name was registered.
Use of a disputed domain name to divert Internet users to another online location may also be indicative of bad faith. By Respondent’s admission, visitors to the disputed domain name are now directed to the “” website. In addition, Complainant provides evidence that at various times the disputed domain name has been used to link websites targeting the adult industry, the same business in which the trademarks are used, thereby creating additional likelihood of confusion with Complainant’s trademark. Had Respondent used the disputed domain name in a completely unrelated industry, there might be some basis for finding otherwise, but in view of the above factors, the Panel finds that Respondent registered and used the disputed domain name in bad faith. The Panel finds the third element of the Policy has been met by Complainant. 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 be transferred to Complainant.
Timothy D. Casey
Sole Panelist
Dated: July 20, 2012
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