The Complainant is NKL Associates S.R.O., United States of America (the “United States”), represented by Fischer Law, P.L., United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / James Andrade, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2020. On March 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2020, 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 March 20, 2020 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 March 21, 2020. 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 March 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2020. The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 21, 2020. 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 is a provider of online videos, images and other material of an adult nature through the website “www.xnxx.com”. According to the Complaint, the website has recently been rated the 181st most visited site globally, the 157th most visited site in the United States, and receives about 16.3 million unique visitors per month in the United States. Both XNXX and XNXX.COM are registered trademarks of the Complainant as follows: XNXX.COM, standard characters, United States Patent and Trademark Office (“USPTO”), principal register, filed September 18, 2012, registered July 9, 2013, registration number 4363782, in class 41; XNXX.COM, stylised, USPTO, principal register, filed May 25, 2016, registered April 18, 2017, registration number 5184832, in class 41; XNXX, standard characters, European Union Trade Mark, filed July 1, 2013, registered November 26, 2013, registration number 011946217, class 41; XNXX, stylised, European Union Trade Mark, filed July 1, 2013, registered November 26, 2013, registration number 011946134, class 41. The Complainant also owns and uses the domain name Nothing of substance is known about the Respondent, who has not replied, except for the contact details provided for the purpose of registration of the disputed domain name, which appears to have been first registered on December 1, 2019 and which has made use of a privacy service. The disputed domain name has resolved to the website of another domain name that displays images and stills from videos of similar genre to those offered by the Complainant. The WhoIs records of the disputed domain name stated the registrant of the disputed domain name to be the privacy service. The Complainant sent a cease and desist letter dated January 27, 2020 to the privacy service, requesting also the transfer of the disputed domain name and requesting a reply by January 31, 2020. There was no reply. 5. Parties’ Contentions A. Complainant The Complainant asserts ownership of the trademarks listed in section 4 above. The Complainant has attached documentation to the effect that the first registrant of USPTO trademark number 4363782, and of European Union Trade Marks numbers 011946217 and 011946134, assigned them to a second registrant in 2013, who assigned them to the Complainant in 2014. The USPTO trademark number 5184832 was first registered in the name of the Complainant. The Complainant also asserts common law rights in the trademark XNXX, which it says it has used in international commerce in connection with adult entertainment services since 2002, and has annexed screen captures from the Wayback Machine (“www.archive.org”) dating back to June 6, 2002 in evidence. The Complainant contends that the disputed domain name is identical to its trademark XNXX. The presence of the generic Top-Level Domain (“gTLD”) “.gold” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name and that it is for the Respondent to provide any evidence to the contrary. The Respondent would be unable to do so because the disputed domain name leads visitors to services similar to and competitive with those offered by the Complainant. The use of the Complainant’s trademark by the Respondent in order to sell goods or services in competition with the Complainant cannot amount to a bona fide provision of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. There is no evidence the Respondent is commonly known by the wording of the disputed domain name. The Complainant also states that the registration dates of its trademarks, and its earlier accrual of common law rights in those trademarks, predate the registration of the disputed domain name. The Complainant contends that the disputed domain name was registered and is being used in bad faith. Because the Complainant’s trademark was in use in 2002 and well known by 2004, it would not be credible that the Respondent did not know about it, and the principle of constructive knowledge of the Complainant’s trademark should apply. The Respondent’s use of the website to which the disputed domain name resolves has been in direct competition with the Complainant’s website. The registration of the disputed domain name should therefore be found to have been in bad faith. The Complainant says the disputed domain name has been used to capture Internet users who have searched for the Complainant’s trademark and arrived at the Respondent’s website by mistake, whereupon the Respondent profits if those users follow links from the website. The Respondent has intended to cause visitors to confuse its website with the Complainant’s website, at least initially. The Complainant has cited a number of previous decisions under the Policy, some involving the Complainant or its predecessor, that it considers relevant to its case. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that: “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.” The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar The Panel has inspected the evidence of trademark registration and assignment of ownership produced and is satisfied that the Complainant has the required rights under the Policy in the trademarks XNXX and XNXX.COM. The disputed domain name The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has asserted prima facie that the Respondent does not have rights or legitimate interests in the disputed domain name and that it is for the Respondent to produce evidence to the contrary. The Complainant has also provided evidence that the registrations of its trademarks for XNXX and for XNXX.COM, both in 2013, predate the registration of the disputed domain name in 2019; it is not necessary in this instance to consider the Complainant’s claims of earlier common law rights in its trademarks. Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent has not replied and has not asserted rights or legitimate interests in the disputed domain name in the terms of paragraphs 4(c)(i), (ii) or (iii) of the Policy or in any other way. On the evidence including screen captures, the adult entertainment services offered through the website to which the disputed domain name ultimately redirects cannot be a bona fide offering of a service within the meaning of paragraph 4(c)(i) of the Policy, because the website relies on the Complainant’s trademark in order to attract clients and is similar to and in direct competition with the Complainant’s own website. There is no evidence of noncommercial or fair use of the disputed domain name by the Respondent, or any evidence the Respondent as an individual or as a business has ever been commonly known by the disputed domain name. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (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 website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy is particularly applicable to the present case. According to screen captures produced by the Complainant, the website to which the disputed domain name redirects is headed prominently “XMXX” (not “XNXX”). It is broadly similar to the Complainant’s website in displaying a selection of small images labelled with their content or the categories of interest to which they belong. The Respondent’s website, immediately below its masthead, has five indexes or links such as “Categories”, one of which is “xnxx”. The Respondent’s website also has a page describing the Complainant’s website in some detail, for reasons that can be only speculation, but which may reveal an apparent attempt to create the illusion of an association with the Complainant. These references to the Complainant do, however, eliminate any possibility that the Respondent was unaware of the Complainant, its trademark and its business. The Complainant, whose own website according to the screen capture uses the word “free”, has not explained the business model of the adult entertainment industry beyond a mention that it has been using its trademark “in international commerce in connection with adult entertainment services” since 2002. The Complainant has also attached a screen capture of an article in “Men’s Health” of July 20, 2018 (“www.menshealth.com”) about the ranking of adult entertainment websites, that refers, in the context of one related website, to “the now-$1 billion webcam industry”. The Panel needs not know whether the Respondent, having attracted viewers, might intend to derive revenue from, hypothetically, a charge for viewing some content, a charge to providers of content, a charge for advertisements, from pay-per-click commissions, or any other sources. In the absence of any alternative explanation from the Respondent, it may reasonably be assumed that the intended purpose of the disputed domain name is commercial. In and of itself, the adult entertainment website industry may be entirely legitimate, subject to law, but each website depends for its success upon the attraction of Internet visitors. On the evidence, the Respondent, in order to attract visitors, has created the disputed domain name by appropriating the trademark of a business of some 17 years standing that is the 181st most visited website in the world and already attracts about 16 million unique visitor per month in the United States alone. A proportion of Internet users intending to visit the Complainant’s website may be misled by search results into visiting the Respondent’s website unintentionally. It is of no consequence that on arrival at the Respondent’s website some visitors may realise their mistake, particularly as it features some non-Latin script, since initial interest confusion has already occurred in their mistaken referral. On the totality of the evidence and on the balance of probabilities the Respondent is found to have attempted intentionally to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark within the terms of paragraph 4(b)(iv) of the Policy. There is no evidence of the disputed domain name having been used for any other than its present purpose. The Panel finds on the balance of probabilities that the disputed domain name was registered for the purpose for which it has been used and in bad faith. Accordingly the Panel finds registration and use of the disputed domain name in bad faith by the Respondent in the terms of 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 Dr. Clive N.A. Trotman
Sole Panelist
Date: April 28, 2020
Full & Egal Universal Law Academy