1.1 The Complainant is TMD Swiss AG, Schindellegi, Switzerland, represented by Merk-Echt B.V., Netherlands.
1.2 The Respondent is Privacy Protection Service INC d/b/a PrivacyP, Queensland, Australia / Urucu Costinel Laurentiu, Zimnicea, Romania. 2. The Domain Name and Registrar
2.1 The disputed domain name (the "Domain Name") is registered with L Inc. (the "Registrar"). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2016. At that time the Domain Name was registered in the name of "Privacy Protection Service INC d/b/a PrivacyP", which appears to be name of the Reqistrar's "privacy service".
3.2 On June 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 28, 2016, the Registrar transmitted by email to the Center its verification response disclosing details of the registrant behind the privacy service and associated contact details. The Center sent an email communication to the Complainant on July 1, 2016 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 July 4, 2016.
3.3 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").
3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 27, 2016.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 8, 2016. 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
4.1 The Complainant would appear to be a company based in Switzerland, providing adult website services.
4.2 The Complainant is the registered owner of the following trade marks:
(i) European Union (EU) registered trade mark no. 006971626 for the word mark XLOVE filed on June 9, 2008 and registered on November 13, 2008 in class 38;
(ii) EU registered trade mark no. 005506241 for the word mark XLOVECAM filed on November 28, 2006 and registered on October 17, 2007 in class 38.
4.3 It would appear that until relatively recently these trade marks were registered in the name of AC Webconnecting B.V.
4.4 The Respondent would appear to be an individual located in Romania.
4.5 The Domain Name was registered on September 5, 2014.
4.6 On April 22, 2016, the Complainant's representative sent a letter to the Respondent. It referred to an earlier email sent to the Respondent and contended that the Domain Name was confusingly similar to the Complainant's mark. Further it contended that by registering and using the Domain Name the Respondent was taking advantage of that confusion and that this indicated bad faith. It asserted that in previous correspondence the Respondent has indicated that it would only transfer the Domain Name in return for a payment and this was also said to indicate bad faith.
4.7 This letter threatened legal proceedings against the Respondent including proceedings under the Policy and claimed that the Complainant had brought such proceedings in the past. Although the relevant proceedings are not identified, this appears to have been a reference to the following:
(i) AC Webconnecting B.V. v. Virtual Media Entertainment,WIPO Case No. D2010-0994 in respect of the domain name ; and
(ii) AC Webconnecting B.V. v. SC VIRTUAL MEDIA SRL,WIPO Case No. DRO2010-0001 in respect of the domain name .
4.8 On June 6, 2016, the Respondent sent an email to the Complainant as follows:
"My domain contain xlovegirls and not xlove. if your client want my domain.. he must MAKE ME AN OFFER, otherwise, do not contact me again.
if you will find 'xlove' on my site, then let me know. i have xlovegirls and not xlove. you can't do anything, ok?
do not contact me again or i will mark your email as spam."
4.9 As at the date of the Complaint, the Domain Name is being used for an adult website. 5. Parties' Contentions A. Complainant
5.1 Both the Complaint and the amended Complaint in this case appear to have been prepared with limited care and attention. For example, it would appear that at least since April 22, 2016 the Complainant was aware of the identity of the individual who actually controlled the Domain Name notwithstanding the fact that the Domain Name was registered in the name of a privacy service at that time. This is apparent from the fact that the letter sent by the Complainant on that date (and identified in the Factual Background section of this decision above) was addressed to Mr. Laurentiu, the individual Respondent in these proceedings. However, contrary to paragraph 3(b)(iv) of the Rules, Mr. Laurentiu was not identified in the appropriate section of the initial Complaint.
5.2 The Complainant asserts that the Domain Name is confusingly similar to its mark, contending that the word "girls" in the Domain Name is descriptive "refer[ring] to a characteristic of services offered on the website ."
5.3 The Complainant maintains that the Respondent has no rights or legitimate interests in the Domain Name, not having obtained authorisation from the Complainant to use its trade marks and contending that the "use of the Domain Name cannot be considered as a legitimate, non-commercial or fair use, considering the Respondent has no legitimate rights, other than commercial gain".
5.4 So far as bad faith is concerned, the entirety of the Complainant's submission is as follows:
"As the trademark of the Complainant was registered earlier than the Domain Name, the Respondent is presumed to have taken notice of the Trademark at the time of registration of the Domain Name. Further, the Respondent is a competitor of the Complainant. Therefore, there is a likelihood of confusion for Internet users between the Complainants Trademark and the contested Domain Name. The Respondent attempts to attract Internet Users to his website for commercial gain, taking advantage of this likelihood of confusion. By letter of April 22, 2016 (Annex 5) the domain name holder was contacted on behalf of the Complainant regarding the alleged infringement. In response (Aneex [sic] 3) thereto by e-mail (poseidon340@[...].com), the Respondent he asked to stop contacting him unless an offer would be made. This should be considered proof of bad faith of the Respondent, as the Respondent is clearly after commercial gain."
5.5. However, nowhere in the Complaint is to be found any explanation of the Complainant's business, how and to what extent its marks have been used and how exactly it is that the Respondent competes with the Complainant. B. Respondent
5.6 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate". A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name can only be sensibly read as the terms "x", "love" and "girls" in combination with the ".com" generic Top-Level Domain. It incorporates the Complainant's XLOVE mark in its entirety and as a consequence the Panel holds that the Domain Name is confusingly similar to that mark for the purposes of the Policy. The incorporation of the word "girls" in the Domain Name does not so change the way in which the Domain Name would be read as to prevent that finding (see Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227). In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.5 The Respondent would appear for some time to have been using the Domain Name for a website that competes with the Complainant. As is explained in greater detail in the context of a discussion of bad faith later on in this decision, the Panel has reached the view that it is more likely than not that the Respondent adopted and used the Domain Name for that website with the primary intention of taking unfair advantage of the association of the term "xlove" with the Complainant's business and marks rather than because of any suggestive or descriptive association between that term and the services offered on that website.
6.6 Such use does not constitute use in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy and does not provide the Respondent with a right or legitimate interest under the Policy.
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.8 Frequently, the key factual question a panel needs to address in proceedings under the Policy, is the respondent's motives for registering the domain name and in particular whether that domain name was registered with the intention of taking some unfair advantage of the trade mark or trade marks of the complainant.
6.9 Given this, it is not sufficient for a complainant simply to refer to a trade mark and to assert that there is a likelihood of confusion with that mark. What is usually required is at least some factual description of how the mark has been used by the complainant, some argument or explanation as to why the respondent is likely to have been aware of that mark at the time that the domain name was registered and some argument or explanation as to why that registration took unfair advantage of that mark. In those cases where the domain name has been actively used by the respondent, that use is also likely to inform the assessment of the respondent's motives for registration. Accordingly, a panel would usually expect a complainant to describe and evidence that use.
6.10 Where the trade mark relied upon is neologism and obviously does not contain any descriptive or generic terms, it may be that very little is required in this respect. In such a case it may be that the only credible explanation for the registration of the domain name is that the respondent was aware of and intended to take advantage of the complainant's mark. Nevertheless, if this is so, a panel will expect the complainant at least to allege that this is the case.
6.11 Further, it has now long been established that so far as knowledge of the complainant's mark is concerned, it will usually be insufficient merely to assert that the respondent must have been or should be deemed to have been aware of the trade mark relied upon because the trade mark was registered and pre-dated the registration of the domain name (i.e., that the respondent has "constructive knowledge" of the trade mark). This is an issue that is discussed in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0").
6.12 With this in mind, the Panel turns to the specific allegations made by the Complainant in the Complaint.
6.13 It is notable that the Complainant fails in its Complaint to identify for how long, and in what manner, and to what extent the Complainant has used the mark. Crucially, there is no real explanation or argument as to why at the time of registration the Respondent is likely to have been aware of the Complainant's mark. The Complainant does not claim that the term "xlove" is so well known by reason of its use by the Complainant or so non-descriptive or non-suggestive, that the only possible reason for the adoption of the Domain Name that incorporates the terms "x", "love" and "girls", is because of its associations with the Complainant's marks.
6.14 The Complainant does contend that its mark predates the Domain Name and, therefore, that the respondent "should be presumed to have taken notice of the Trademark at the time". But this appears to be very similar to an argument of "constructive knowledge", which as the Panel has already explained, is usually insufficient.
6.15 In the circumstances, the Panel was initially highly tempted to find against the Complainant. It is incumbent on those who engage the Policy and in particular professional advisors who advise and assist Complainants, to properly address the requirements of the Policy. This has not been satisfactorily done in this case.
6.16 Nevertheless, the Panel has not given in to that temptation. The Complainant claims that the Domain Name has been used for a website that competes with the Complainant and (as has already been recorded in the factual background of this decision) at the time this decision is made the Domain Name appears to be being used by the Respondent for an adult website. So it is reasonably clear that the parties in these proceedings operate and have operated competing adult websites.
6.17 Further, it is reasonably clear from the decisions AC Webconnecting B.V. v. Virtual Media Entertainment, supra and AC Webconnecting B.V. v. SC VIRTUAL MEDIA SRL, supra, that the Complainant (or more likely its predecessor in business) has used the term "xlove" for these sorts of websites since at least 2010.
6.18 It does not necessarily follow from this that at the time the Domain Name was registered it must have been chosen with the Complainant's (or the Complainant's predecessor in business) use of the term "xlove" in mind. The term "xlovegirls", which combines the letter "x" and the words "love" and "girls", is suggestive of an adult website. Therefore, it is not completely impossible that the Respondent independently adopted that term for his website because of those associations.
6.19 However, had the Respondent not been aware of the Complainant's business at the time he registered the Domain Name and/or had really independently decided to adopt the Domain Name because of its potentially suggestive nature, one would have expected the Respondent to say precisely that both in his email of June 6, 2016 and in these proceedings. He has not done so. Instead, in his email he tried to make a distinction between "xlove" and "xlovegirls" that is wholly unconvincing.
6.20 In the circumstances, the Panel concludes that on balance it is more likely than not that the Domain Name was registered and has been subsequently used with knowledge of the Complainant's prior use of the "xlove" mark and with the primary intention of taking unfair advantage of that mark; whether that be by operation of a competing website from the Domain Name and which hopes to take advantage of a confusing similarity between the Domain Name and the Complainant's marks (as per paragraph 4(b)(iv) of the Policy) or otherwise.
6.21 The Panel is reinforced in that conclusion by the fact that the Respondent in his email of June 6, 2016 was at pains to make it clear that if the Complainant wanted the Domain Name, the Complainant should make the Respondent an offer for it (even placing the words in capitals in order to emphasise this point). The Complainant had not expressed any interest in purchasing the Domain Name at that time. Therefore, this attempt by the Respondent to solicit an offer from the Complainant suggests that one of the reasons why the Domain Name had been registered and continued to be held, was with a possible sale to the Complainant in mind.
6.22 Therefore, notwithstanding the poor nature of the Complaint, the Complainant has (albeit only just) satisfied the Panel that the Domain Name was both registered and has subsequently been held by the Respondent in bad faith. It, therefore, follows that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: August 9, 2016
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