The Complainant is WGCZ S.R.O of Las Vegas, Nevada, United States of America ("US"), represented by Randazza Legal Group, US.
The Respondent is WhoIsProtectS Protectservice, Ltd. of London, United Kingdom of Great Britain and Northern Ireland ("UK")/ AVO Ltd AVO Ltd, / of Mahe, Seychelles. 2. The Domain Name and Registrar
The disputed domain name ("Disputed Domain Name") is registered with EvoPlus Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 3, 2014. On April 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2014, 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 April 10, 2014, 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 April 15, 2014. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 15, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2014.
The Center appointed Alistair Payne as the sole panelist in this matter on May 12, 2014. 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 provides adult entertainment services from its website at the Disputed Domain Name and either it or its predecessor in interest has done so since approximately 2004.
The Complainant owns a Community Trade Mark registration for XNXX under trade mark registration number 011946217 dating from November 2013 and a United States trade mark registration XNXX.COM mark under number 4,363,782 dating from September 18, 2012.
The Respondent registered the Disputed Domain Name on April 4, 2012. 5. Parties' Contentions A. Complainant
The Complainant submits that it or its predecessor in title, being a wholly owned subsidiary, owns registered trademarks as noted above and that the Disputed Domain Name is confusingly similar to its XNXX.COM trade mark in that it differs only by the addition of the letters "hq" before the wholesale incorporation of this trade mark in the Disputed Domain Name, which the Complainant suggests has been added to suggest "high quality". It says that the domain name is one of the most popular adult entertainment websites in the world and has developed a very substantial reputation and goodwill since its commencement in 2004. According to Alexa Internet, the company that tracks global website traffic, "www." is currently the 102nd most visited website globally and 108th in the US. As a consequence the Complainant says that it has developed a very substantial goodwill and reputation in connection with its XNXX.COM mark
The Complainant submits that it has not authorised or licensed the Respondent's use of its mark and that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In addition to using the XNXX.COM mark to offer services that directly compete with Complainant's services, the Respondent's "" website contains links and advertisements to third party websites that also compete with Complainant. The Complainant says that this is not bona fide or legitimate use and therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant says that its mark is a coined term and that the Respondent purposefully registered the confusingly similar Disputed Domain Name in April 2012 and long after the Complainant's business had become very well established in order to confuse Internet users into thinking that there was some association or link with its website so as to profit from this diverted custom.
The Complainant further submits that a WhoIs search for this entity reveals that the Respondent also operating in the adult entertainment services market. Considering that the Respondent appears to have become an operator in the adult on-line services entertainment market as far back as 2008, the Complainant says that the Respondent was most likely familiar with the adult entertainment market for several years and in particular with the Complainant's mark and website by the time that it registered the Disputed Domain Name.
As a consequence the Complainant says that the Respondent both registered and used the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant made a supplemental filing on April 22, 2014 as it had omitted to include a copy of its Community Trade Mark word mark and logo mark registrations for XNXX. This filing was made prior to the date for response by the Respondent and provides supplementary evidence that is relevant to the case. On this occasion the Panel is prepared to exercise its discretion under the Policy to accept the filing into these proceedings.
The Respondent made a very late filing of its response on May 23, 2014, long after the proceedings had closed and just prior to the initial decision due date in these proceedings. There were no special circumstances or excuse for this late filing. In the interests of procedural integrity and fairness the Panel is therefore not inclined to accept the response into these proceedings. The Panel notes however that even if the late response would have been accepted, the decision would have reached the same result.
On May 26, 2014 the Panel issued a Panel Order in the following terms:
"Having reviewed the available record, the Panel requests the Complainant to file further submissions in order to clarify the following matters:
1. The relationship between the Complainant and Vlab Limited (a Hong Kong based company) as the trade mark owner of both the US and CTM registrations nos. 4,363,782 and 011946217 respectively and the basis on which the Complainant claims that it has registered trade mark rights for the purposes of the Policy; and
2. Brief details concerning the transfer of common law rights/goodwill to the Complainant by its 'predecessor in title' as referred to in the Amended Complaint, including the nature of those rights and the date of transfer.
Any submissions or communications in reply to this Order should be made on or before June 2, 2014, by email (only) to domain.disputes@ and be copied to the other party, pursuant to paragraph 2(h) of the Rules.
In order to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Respondent may submit, on its discretion, a response strictly relating to matters arising from the Complainant's reply to this Order (if any) on or before June 9, 2014.
The parties are reminded that direct communication with the Panel is not permitted under paragraph 8 of the Rules.
The Panel hereby extends the decision due date to June 16, 2014."
The Complainant filed an additional submission in response to the Panel Order on 3 June, 2014. The Respondent filed no submission in response. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has demonstrated that it owns a Community Trade Mark registration for XNXX under trade mark registration number 011946217 dating from November 2013 and also US trade mark registration XNXX.COM mark under number 4,363,782 dating from September 18, 2012. Although the Panel recognises that many domain names relating to adult entertainment sites may include different combinations of the letters "X", the Complainant's mark includes the letter "N" as the second letter in its mark which is a key distinguishing factor. The Panel also notes the Complainant's submissions concerning the very substantial amount of website traffic to the Complainant's website at "www.www." and as a result the significant degree of reputation attaching to the XNXX and XNXX.COM marks.
The Disputed Domain Name wholly incorporates the Complainant's XNXX and XNXX.COM marks and differs from them only by the inclusion of the letters "hq" as a prefix. Although, the Panel need not determine whether that "hq" is necessarily intended to stand for "high quality" as submitted by the Complainant, the fact remains that the Respondent has incorporated the Complainant's mark wholly into the disputed domain name. While the Panel does not find that the XNXX or XNXX.COM marks are extremely distinctive, it is prepared to find that the addition of the "N" element as the second letter of these marks affords them a reasonable degree of distinctiveness which is only heightened by the degree of renown that they have developed as a result of the very substantial web traffic to the Complainant's domain name at "www.www.". Internet users searching for the Complainant's website might very well assume incorrectly that the Disputed Domain Name is associated with the Complainant.
In these circumstances the Panel finds that the XNXX element is the dominant element of the disputed domain name and that the Disputed Domain Name is confusingly similar to either the Complainant's XNXX.COM or XNXX marks and that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has demonstrated that it has developed a substantial reputation and goodwill for its XNXX and XNXX.COM mark since the commencement of its adult entertainment website at its "www." domain name in 2004. It submits that it has not authorised or licensed the use of its marks to the Respondent and that the Respondent has not provided any explanation for its registration of a domain name incorporating the Complainant's marks, nor has it explained its commercial and competing use of the Disputed Domain Name.
In view of the Panel's findings below concerning bad faith the Panel agrees that the Respondent has no rights or legitimate interests in the Disputed Domain Name and therefore finds that the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
By the time that the Respondent registered the Disputed Domain Name in 2012, the Complainant had, as noted above under the second element, been operating its adult entertainment service from its website at "www." for many years and so successfully that it asserts that it has recently been identified as being the the 102nd most visited website globally and 108th in the US.
According to the Complainant, the Respondent appears to have become a player in the adult entertainment services market as far back as 2008. In these circumstances the Panel agrees with the Complainant that it appears very unlikely that the Respondent was unaware of the Complainant's mark when it registered the Disputed Domain Name. Overall it seems highly unlikely to the Panel that the Respondent coincidentally chose a domain name incorporating the XNXX element featuring the second letter "N", as opposed to choosing to use any other letter of the alphabet.
The Panel infers that in these circumstances, considering the wholesale incorporation of the Complainant's marks into the Disputed Domain Name and the competing nature of the Respondent's website, that on the balance of probabilities, the Respondent chose to register the Disputed Domain Name with knowledge of the Complainant's website and marks and therefore in bad faith.
The Panel finds that the Disputed Domain Name is being used by the Respondent to resolve to a website that directly competes with the Complainant's website and also features competing third party links. The rationale for such use appears to the Panel to be to divert Internet traffic to the Respondent's website. Under paragraph 4(b) iv of the Policy the Panel finds that the Respondent has used the Disputed Domain Name to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of the website in terms of paragraph 4 (b) (iv) of the Policy and in order to divert Internet consumers for its own commercial purposes.
Accordingly, the Panel finds that the Respondent both registered and used the Disputed Domain name in bad faith and the Complaint also succeeds under this 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 be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: June 10, 2014
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