The Complainant is TMD Swiss AG of Schindellegi, Switzerland, represented by Merk-Echt B.V., the Netherlands.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / Viacheslav Kononov of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2016. On July 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2016, 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 August 16, 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 August 18, 2016.
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 August 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on September 16, 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
The Complainant owns a European Union trade mark registration for XLOVE under number 006971626, which was filed on June 9, 2008, and registered on November 13, 2008. The Complainant also owns a European Union trade mark registration for XLOVECAM under number 005506241, which was filed on November 28, 2006, and registered on October 17, 2007.
The Complainant uses the abovementioned trade marks in connection with its Internet-based adult entertainment services.
The disputed domain name was registered on July 2, 2014. The disputed domain name resolves to a website in French offering adult entertainment services in competition with those of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns European Union trade mark registrations for XLOVE and for XLOVECAM as set out above. It says that the disputed domain name contains both of these marks together with the expression “en ligne” which it says is a descriptive reference in French that means “online”. The Complainant submits that this suffix does not distinguish the disputed domain name from its trade marks and is therefore confusingly similar to the Complainant’s trade marks.
It further submits that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has not obtained any authorisation to use the Complainant’s trade marks and its use in the disputed domain name cannot be considered as a legitimate, noncommercial or fair use in circumstances that the Respondent has no legitimate rights, other than commercial gain.
As the Complainant’s trade marks were registered earlier than the disputed domain name, the Complainant submits that the Respondent should be presumed to have had notice of the Complainant’s registered trade marks at the date of registration of the disputed domain name.
The Complainant says that the Respondent is a competitor of the Complainant and that as a result there is a likelihood of confusion for Internet users between the Complainant’s trade marks and the disputed domain name. The Complainant maintains that the Respondent attempts to attract Internet users to its website for commercial gain by taking advantage of this likelihood of confusion and notes that there are striking similarities between the respective websites with regard to colour and layout. It notes also that the marks XLOVE and XLOVECAM are mentioned on the website several times, showing that the Respondent is trying to make consumers think that there is some relationship between the Parties that does not exist. As a result the Complainant submits that the disputed domain name was registered and has been used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns European Union trade mark registrations for its XLOVE and XLOVECAM marks as set out above. The disputed domain name wholly incorporates both of the Complainant’s trade marks in addition to the French expression “en ligne”, meaning “online” in English. The Panel accepts the Complainant’s submission that this expression is a generic term and that its inclusion in the disputed domain name does not distinguish it from the Complainant’s XLOVECAM trade mark. As a result the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trade marks and the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has not obtained any authorisation to use the Complainant’s trade marks and its use in the disputed domain name cannot be considered as a legitimate, noncommercial or fair use in circumstances that the Respondent is obviously using it to resolve to its own website for commercial gain.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This case has not been rebutted by the Respondent and as a result the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on July 2, 2014, many years after the Complainant obtained its European Union trade mark registration for XLOVECAM in 2006. The Complainant’s XLOVECAM mark is not a commonly used English expression and the only additional element in the disputed domain name is the generic French term “en ligne” as discussed earlier. In these circumstances and considering that the Complainant and the Respondent are competitors and the use made of the disputed domain name as described below, the Panel infers that the Respondent must have been aware of the Complainant’s use of its marks when it registered the disputed domain name. As a result the Panel finds that the disputed domain name was registered in bad faith.
The disputed domain name resolves to a website at which the Respondent operates a webcam site offering virtual encounters with female models online, which the Complainant says competes directly with the services offered by the Complainant on its website. The Complainant submits that the Respondent is attempting to attract Internet users to its website for commercial gain by taking advantage of this likelihood of confusion and notes that there are striking similarities between the respective websites with regard to colour and layout. It notes also that the marks XLOVE and XLOVECAM are mentioned on the Respondent’s website several times, showing that the Respondent is trying to make consumers think that there is some relationship between the Parties that does not exist.
The Panel notes that the home page of the Respondent’s website certainly offers the services as stated by the Complainant and repeatedly uses the Complainant’s XLOVECAM mark in the text on the home page. On the basis of the Complainant’s submissions as to the competitive nature of the Respondent’s services and in the absence of any rebuttal by the Respondent in this regard, the Panel finds that on the balance of probabilities that it appears that the Respondent is attempting to confuse Internet users in to thinking that there is some connection or affiliation between the website at the disputed domain name and the Complainant’s XLOVECAM mark. In addition, the Respondent is clearly using the website at the disputed domain name for commercial purposes. On this basis, the Panel finds that the elements required under paragraph 4(b)(iv) of the Policy have been made out and this amounts to evidence of registration and use of the disputed domain name in bad faith under the Policy.
Accordingly the Panel finds that the Complaint 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: September 22, 2016
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