Complainant is WGCZ S.R.O. in care of and represented by Fischer Law, P.L., United States of America.
Respondent is WhoisGuard, Inc., Panama / Tak Yama, Carrera, Japan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 1, 2019.
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 Respondent of the Complaint, and the proceedings commenced on May 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 22, 2019.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on May 24, 2019. 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
Complainant and its predecessors have operated a website under the domain name and has used this domain name for several years in connection with the provision of adult entertainment services. According to Alexa Internet the website of Complainant is currently the 46th most visited site globally, as well as the number 1 most visited site under the “Adult” category.
According to the evidence submitted by Complainant, Complainant through its associated company WGCZ a.s. of Prague, Czech Republic, has obtained several registrations for the trademark XVIDEOS, including:
- the trademark XVIDEOS registered with the United States Patent and Trademark Office under number 4341707, filed on September 11, 2012 and a registration date of May 28, 2013; the trademark mentions a date of first used in commerce of April 1, 2007;
- European Union Trade Mark XVIDEOS, number 011945821, filed on July 1, 2013 and registered on November 26, 2013.
The Domain Name was registered on March 28, 2013. The Domain Name resolves to a website containing pay-per-click links redirecting to various adult content websites competing with Complainant’s services. 5. Parties’ Contentions A. Complainant
Complainant submits that the Domain Name is identical or confusingly similar to Complainant’s XVIDEOS mark as it merely adds “j-” before the mark to make it appear as if it is affiliated with Complainant. Merely adding such letters and/or terms to a registered trademark does nothing to lessen the likelihood of confusion created by the Domain Name. Complainant also submits that it has extensive common law unregistered rights in the XVIDEOS mark, which arose before Respondent registered the Domain Name.
According to Complainant, Respondent has neither rights nor legitimate interests in the Domain Name. Complainant asserts that Respondent has no rights or legitimate interests with respect to the Domain Name, the burden then shifts to Respondent to provide concrete evidence that it has rights to, or legitimate interest in the Domain Name. Complainant asserts that Respondent will be unable to provide concrete evidence that it has legitimate rights or a legitimate interest in the Domain Name. The Domain Name has been used to provide services directly competitive with those offered by Complainant; the Domain Name provides the same kind of adult videos that can be found on the domain name . Complainant submits that capitalizing on the fame of a trademark in order to sell goods or services that directly compete with the trademark owner is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant asserts that Respondent is using the Domain Name for a commercial purpose, as its “www.” website contains advertisements and links to third party websites that compete with Complainant. Respondent is undoubtedly compensated for those links and advertisements. This conduct makes Respondent incapable of using the Domain Name for the bona fide offering of goods and services. Complainant finally submits that after registering the Domain Name all available evidence shows that Respondent’s website immediately offered adult entertainment services identical to those provided by Complainant, going so far as to create a copycat site with a similar layout and duplicating Complainant’s trademark. Respondent’s conduct described continues to this day.
According to Complainant, the Domain Name was registered and is being used in bad faith. Complainant’s common law unregistered trademark rights were well established in 2007. Complainant’s mark was first used in commerce in 2007, and it had both obtained United States trademark rights and become internationally recognized by 2013. Any claim by Respondent that it was not aware of Complainant’s mark when it first registered the Domain Name is not credible. Accordingly, Complainant submits that Respondent’s registration in 2013 was undeniably in bad faith.
Complainant asserts that the use of the Domain Name is also in bad faith. Respondent desired to disrupt Complainant’s business and to divert Internet traffic away from the website of Complainant when Internet users mistakenly arrived at the website of Respondent after searching for the term “xvideos” on an Internet search engine, and then profit when Internet users followed the links on its website. In other words, Respondent hoped to create a likelihood of confusion amongst the public as to the source, sponsorship, affiliation, or endorsement of the website located at the Domain Name. This intent is obvious, given that Respondent is using a website that is practically identical to Complainant’s in content and services provided.
There is no question that this use is in bad faith, as the website under the Domain Name has always existed to poach Internet users from the website of Complainant and profit from the confusion. Respondent could not possibly have independently come up with the Domain Name and then, coincidentally, launched a site that mimics Complainant’s website. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(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 respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to that trademark or service mark.
Complainant has established that it through its associated company WGCZ a.s. is the owner of several trademark registrations for XVIDEOS. The Domain Name , which adds the letter “j” and the sign “-“ to the XVIDEOS trademark, fully incorporates this trademark. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the entirety of a trademark. See section 1.7 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The generic Top Level Domain (“gTLD”) “.com” is disregarded under the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks under paragraph 4(a)(i) of the Policy.
The Panel adds that the fact that the Domain Name has been registered before Complainant acquired trademark registrations does not preclude Complainant’s standing as the UDRP makes no specific reference to the date on which the holder of the trademark acquired its rights, provided such rights exist at the time the complaint is filed. The Panel also adds that in several cases under the Policy UDRP panels have decided that Complainant has proved to have both registered and unregistered rights in the trademark XVIDEOS. See WGCZ s.r.o. v. Registration Private, Domains by Proxy, LLC/Lars Pimentel,WIPO Case No. D2016-1069. B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the undisputed submission and evidence provided by Complainant the Domain Name resolves to a pay-per-click page with various sponsored links to websites of competitors of Complainant. The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website under the Domain Name does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the XVIDEOS trademark, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith.
Respondent registered the Domain Name on March 28, 2013 before the date of Complainant’s United States trademark registration. However, by this time Complainant had already since 20071 been using its unregistered mark in the domain name and at the website to which it resolves. The Panel notes that Complainant’s website has developed a very large following.
Noting the status of the XVIDEOS mark and the overall circumstances of this case, the Panel finds it more likely than not that Respondent at the time of registering the Domain Name knew or should have known of Complainant’s XVIDEOS unregistered mark. Previous UDRP panels have recognized that the XVIDEOS mark developed sufficient renown and goodwill through use as to qualify as a relevant unregistered right for the purposes of the Policy. See WGCZ s.r.o. v. Registration Private, Domains by Proxy, LLC/Lars Pimentel, supra; WGCZ S.R.O. v. WhoIsProtectS, Protectservice, Ltd. / Adam Hokke,WIPO Case No. D2015-0408; WGCZ S.R.O. v. WhoIsProtectS Protectservice, Ltd. / Jose Rodriguez,WIPO Case No. D2014-0550 and WGCZ S.R.O. v. WhoIsProtectS Protect service, Ltd. / AVO Ltd,WIPO Case No. D2014-0549.
Based upon the above, the Panel accepts that Complainant has, since its commencement of use in 2007, developed a reputation for its mark and website at the domain name , thus well before Respondent registered and started using the Domain Name in 2013.
The Panel notes that the Domain Name resolves to a website containing pay-per-click links to competitors of Complainant and including the logo of Complainant on its home page. The Panel also notes that the Domain Name contains the entirety of Complainant’s XVIDEOS trademark, which indicates, in the circumstances of this case, that Respondent registered and uses the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has proven that the Domain Name has been registered and is being used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Name be transferred to Complainant.
Dinant T. L. Oosterbaan
Sole Panelist
Date: May 31, 2019
1 the Unites States trademark registration indicates a first use in commerce as of April 1, 2007
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