Complainant is WGCZ S.R.O., United States of America (“United States” or “U.S.”), represented by Fischer Law, P.L., United States.
Respondent is Anna Zizek c/o Dynadot, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2019. On April 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.
The Center appointed Mark Partridge as the sole panelist in this matter on May 27, 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 owns trademark registrations for XVIDEOS, particularly U.S. Reg. No. 4341707, registered on May 28, 2013, for “[e]ntertainment services, namely, providing a web site featuring photographic, audio, video and prose presentations featuring adult-oriented subject matter.” Among other information, this registration indicates that the date of first use in commerce is April 1, 2007. Additionally, it has a European Union Trademark for XVIDEOS, Reg. No. 011945821, registered on November 26, 2013. Complainant owns and operates the domain name .
On June 8, 2014, Respondent registered the disputed domain name. The disputed domain name resolves to a webpage that provides adult-entertainment videos. 5. Parties’ Contentions A. Complainant
Complainant contends it has satisfied the three necessary elements under the Policy.
First, Complainant argues that the disputed domain name is identical or confusingly similar to its trademarks. Complainant alleges that it has used the domain name for several years for adult entertainment services. According to Complainant, Complainant or its predecessors-in-interest have used the XVIDEOS mark since 2007. Complainant notes this has been accepted and acknowledged by previous panels, citing, among other cases, Copypaste Limited v. Fonco Trading Services,WIPO Case No. DCO2012-0019, and WGCZ S.R.O. v. WhoIsProtectS Protectservice, Ltd. / Jose Rodriguez,WIPO Case No. D2014-0550. Based on its use, Complainant asserts that it has acquired registered trademark rights and developed extensive common law rights in the mark. Complainant also contends that the addition of “dl-“ does not lessen the likelihood of confusion created by the disputed domain name.
Second, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent will be unable to show it has rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is: not making a legitimate commercial or fair use of the disputed domain name; not making a bona fide offering of goods and services; and is not commonly known by the disputed domain name.
Third, Complainant argues that the disputed domain name was registered and is being used in bad faith. Complainant alleges that its mark was well known in 2006 and had become internationally recognized by 2013, making Respondent aware of Complainant’s rights in the mark when it registered the disputed domain name in 2014. Complaint also alleges that Respondent registered the disputed domain name and then “immediately launched a website that mimicked the Complainant’s website, which had been in operation for approximately eight years.” To support bad-faith use, Complainant argues that Respondent intended to disrupt Complainant’s business and to divert Internet traffic away from Complainant. Complainant asserts that Respondent profits when Internet users follow the links on its website. As further support, Complainant shows that Respondent’s intent is evident by Respondent’s use of “a website that is practically identical to the Complainant’s in content and services provided” and that states “Before it is Deleted! Let’s Download the XVIDEOS video”. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, and notwithstanding Respondent’s default, Complainant must prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Given that Respondent defaulted, the Panel has the discretion to accept reasonable contentions of Complainant as true. Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287 (citing Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292); see also OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009); Tata Sons Limited v. Domaincar,WIPO Case No. D2006-0285 (noting “[t]his is not a simple ‘rubber stamping’”); Rules, paragraph 14(b) (providing, in other words, that a Panel must use its discretion when a respondent is in default). A. Identical or Confusingly Similar
To satisfy the first element, a complainant must establish that the disputed domain name is identical or confusingly similar to the trademark in which the complainant has rights. This element has two distinct parts: (i) complainant’s rights in a trademark; and, (2) identical or confusingly similar.
First, the Panel finds that Complainant introduced substantial evidence establishing its trademark rights for purposes of the Policy. Complainant’s U.S. trademark registration is sufficient. “[T]his [prima facie] satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” Section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Second, the next inquiry generally involves a “side-by-side” comparison of the disputed domain name and the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.7. For purposes of the first element, the Top-Level Domain (“TLD”) “.com” in the disputed domain name, , may be disregarded. See WIPO Overview 3.0, section 1.11; see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918.
The Panel finds that Complainant’s XVIDEOS mark is wholly incorporated and clearly recognizable in the disputed domain name. Respondent’s addition of the prefix “dl-” does not eliminate or preclude a finding of confusing similarity. See WGCZ S.R.O. v. WhoIsProtectS Protectservice, Ltd. / Jose Rodriguez,WIPO Case No. D2014-0550 (noting addition of “new-“ as a prefix to the dominant element, XVIDEOS, does not, in other words, preclude a finding of confusing similarity); WGCZ S.R.O. v. WhoisGuard, Inc. / Tak Yama, Carrera,WIPO Case No. D2019-0908 (same but with the addition of the prefix “j-“ to XVIDEOS).
For the foregoing reasons, the Panel concludes that Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
To satisfy the second element, Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in a domain name. Once the complainant satisfies its initial burden, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name. AB Electrolux v. Mostafa Faheem,WIPO Case No. D2017-2233; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Where the respondent defaults, the Panel “is left to examine the record to determine whether there is a plausible rebuttal to Complainant’s prima facie case.” Staatsolie Maatschappij Suriname N.V. v. WhoisGuard, Inc. / Statee Loil,WIPO Case No. D2017-1117; see also WIPO Overview 3.0, section 4.3 (noting “a respondent’s default is not necessarily an admission that the complainant’s claims are true”).
Upon reviewing the record and making reasonable inferences, the Panel is satisfied that Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. And the Panel finds that there is no plausible rebuttal to it. See Staatsolie Maatschappij Suriname N.V.,WIPO Case No. D2017-1117. The Panel therefore finds that the second element is satisfied. See WGCZ S.R.O. v. WhoIsProtectS Protectservice, Ltd. / Jose Rodriguez,WIPO Case No. D2014-0550 (providing abbreviated discussion of this element, directing focus to points considered pursuant to the third element); WGCZ S.R.O. v. Kadu Norfox,WIPO Case No. D2015-0406 (same). C. Registered and Used in Bad Faith
Lastly, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy offers a non-exhaustive list of circumstances that indicate bad-faith use and registration of a domain name, particularly:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Policy, paragraph 4(b)(iv); see also WIPO Overview 3.0, section 3.1.
Although it is not required to show deference to decisions of previous panels, see WIPO Overview 3.0, section 4.1, the Panel agrees with prior UDRP decisions that “the XVIDEOS marks already had a strong reputation worldwide in June 2013 ….” WGCZ S.R.O. v. Kadu Norfox,WIPO Case No. D2015-0406. Accordingly, when Respondent registered the disputed domain name in 2014, it is more likely than not that Respondent knew of Complainant’s rights in the XVIDEOS mark. The Panel therefore finds that Complainant established bad-faith registration.
Among other claims, Complainant asserts that Respondent’s use of a “practically identical” website constitutes bad-faith use. The Panel notes that the disputed domain name resolves to a website that displays Complainant’s mark. Additionally, in light of Complainant’s unrebutted claims, the Panel finds it more likely than not that the hyperlinks on the disputed domain name are pay-per-click links, for which Respondent profits when Internet users click on such links. Under these particular circumstances and the evidence presented, the Panel concludes that Complainant sufficiently established Respondent’s bad-faith use, particularly within paragraph 4(b)(iv) of the Policy.
In sum, the Panel finds that Complainant has proven that the disputed domain name has been registered and is being used in bad faith, satisfying paragraph 4(a)(iii) 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 Complainant.
Mark Partridge
Sole Panelist
Date: June 12, 2019
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