The Complainant is Copypaste Limited of Hong Kong, China, represented by Randazza Legal Group, United States of America.
The Respondent is Fonco Trading Services of Panama, Panama, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with INTERNETX GMBH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2012. On June 21, 2012, the Center transmitted by email to INTERNETX GMBH a request for registrar verification in connection with the disputed domain name. On June 21, 2012, INTERNETX GMBH transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. The Response was filed with the Center on July 17, 2012.
On July 18, 2012, the Complainant submitted a Supplemental Filing.
The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on July 23, 2012. 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.
On the subject of supplemental filings, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states the following consensus view:
“[…] Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
Having reviewed the Complainant’s Supplemental Filing, the Panel decided to admit this on the basis that the Supplemental Filing seeks to address matters raised by the Response which would not have been known to the Complainant when it filed the Complaint, specifically, the Respondent’s claim that the disputed domain name was registered pursuant to its alleged earlier registration of the third level domain name in May 2008. The Panel resolved to allow the Respondent an opportunity to comment upon the said Supplemental Filing conform to the said consensus view.
The Complaint contained an averment by the Complainant that the Respondent was the registrant of some five additional domain names in the second level under the “.co” top level domain, namely , , , and (“the Additional Domain Names”). The Complainant did not provide a WhoIs output in respect of the Additional Domain Names, nor did the Complainant provide any other details such as their respective dates of registration. The Panel considered that the WhoIs output for the Additional Domain Names might be material to the present administrative proceeding and that this would be readily available from the public record. Before consulting the WhoIs, the Panel had regard to paragraph 4.5 of the WIPO Overview 2.0, entitled “May a panel perform independent research when reaching a decision?” The paragraph sets out the following consensus view, which the Panel respectfully adopts:
“A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at ) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases. A panel may also rely on personal knowledge. If a panel intends to rely on information from these or other sources outside the pleadings, especially where such information is not regarded as obvious, it will normally consider issuing a procedural order to the parties to give them an opportunity to comment. Alternatively or additionally, if the panel feels that it requires supplemental information to make a decision in a proceeding, it can issue a procedural order to the parties requesting the submission of such information.”
The Panel determined that it would rely upon the WhoIs output for the Additional Domain Names, details of which are set out in the Factual Background section below. In accordance with the said consensus view, on July 30, 2012, the Panel issued a Procedural Order to the Parties inviting their comments on this matter and also inviting the Respondent to address the terms of the Complainant’s Supplemental Filing. The said Procedural Order provided that any such comments were to be received by the Center no later than August 6, 2012, and that the due date for the Panel to forward its decision to the Center was extended to August 20, 2012. On August 7, 2012, the Center notified the Parties that no comments had been received from either Party pursuant to the said Procedural Order and that accordingly the Panel would proceed to render its Decision. 4. Factual Background
The Complainant is a provider of adult entertainment services, and notably is the publisher of a website at the URL “www.m” which the Complainant claims is the most popular adult entertainment website in the world. The Complainant’s said website has been in continuous operation since 2007, is one of the most visited sites on the World Wide Web and receives approximately 4.4 billion page views from over 350 million unique visitors every month.
The disputed domain name was created on February 25, 2010. According to the screenshots produced by the Complainant, the website associated with the disputed domain name appears to offer services which are similar to those offered by the Complainant through its own domain name, .
In addition to the disputed domain name, the Respondent is also listed as the registrant in respect of the following domain names: created February 24, 2010; created February 24, 2010; created February 24, 2010; created February 24, 2010; and created February 25, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant owns rights; the Respondent has no rights or legitimate interests in the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name is identical to the Complainant’s XVIDEOS mark, adding only the top level domain “.co”. The Complainant submits that the addition of a generic top-level domain does not create a distinct mark capable of overcoming a claim of identical or confusing similarity. The Complainant asserts that consumers around the world associate the XVIDEOS mark with the Complainant’s provision of adult entertainment services. The Complainant submits that “www.m” is currently one of the most visited websites on the World Wide Web and arguably the largest provider of adult entertainment services in the world. The Complainant states that, based upon its continuous use and promotion of the XVIDEOS mark worldwide since at least 2007, it has established rights to use that mark in association with the provision of adult entertainment services.
The Complainant submits that no facts exist that would lead a reasonable person to conclude that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent intended to adopt a domain name substantively identical to that of the Complainant. The Complainant asserts that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and that it appears to have no intention of doing so. The Complainant states that the website associated with the disputed domain name provides adult entertainment services closely related or identical to the adult entertainment services offered by the Complainant on its world-famous XVIDEOS website. The Complainant asserts that the Respondent has no authority to use the XVIDEOS mark for the provision of any goods or services, particularly the adult entertainment services already offered by the Complainant using the mark and that as such, the Respondent is incapable of using the disputed domain name for the bona fide offering of its goods or services. The Complainant submits that because the disputed domain name is identical or confusingly similar to the Complainant’s XVIDEOS mark, and because it advertises and provides related or identical services to those of the Complainant, the Respondent is incapable of using the disputed domain name for a legitimate purpose.
The Complainant states that it has uncovered no evidence that the Respondent is commonly known by the text of the disputed domain name and that all evidence indicates that the Respondent is commonly known as “Fonco Trading Services.” The Complainant notes that the Respondent does not use the XVIDEOS mark on its own website and that the website to which the disputed domain name resolves states “Welcome to YOUVIDEO.CO.”
The Complainant submits that the Respondent was aware of Complainant’s XVIDEOS mark and the services offered thereunder when it registered the disputed domain name in 2010 due to the fame which the Complainant had established in the XVIDEOS mark by that date. The Complainant asserts that by 2010 it was already one of the largest providers of adult entertainment services in the world and “www.m” was one of the most visited websites on the Internet. The Complainant asserts that the Respondent desired to disrupt the Complainant’s business and to divert web traffic away from the Complainant’s said website.
The Complainant states that the Respondent has engaged in a pattern of registering domain names in the “.co” top level domain space that contain marks used by well-known Internet businesses. The Complainant states that such domain names include , which the Complainant notes contains the entire name of YouPorn, another well-known provider of adult entertainment services on the Internet; together with , , , and which correspond to the well-known domain names , , and . The Complainant produces corresponding extracts from the United States Patent and Trademark Office in respect of third party owned registered trademarks in respect of the marks WEATHER.COM, AUTOTRADER.COM, and ASK.COM.
The Complainant states that in selecting the XVIDEOS mark for the disputed domain name, the Respondent hoped that Internet users would stumble upon its website when searching for the “www.m” website on the World Wide Web and accordingly that the Respondent hoped to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of the website associated with the disputed domain name. B. Respondent
The Respondent asserts that the third level domain name was delegated to the Respondent in May 2008 after the Respondent had confirmed that there was no conflicting trademark in accordance with Internet standard RFC1591. The Respondent acknowledges that it is not a trademark expert and might have made a mistake.
The Respondent notes that holders of third level domain names delegated before July 30, 2008 had priority to register the names of second level domains in accordance with the Colombian country code policy and that the Respondent duly applied for and effected the registration of the disputed domain name based upon its previous registration. The Respondent states that it intended to use the disputed domain name to develop a business plan related to adult content along with other domain names including , , and , and that it conducted market research and invested time and resources to this end. The Respondent notes that it finds it curious that the Complaint has been made some four years after it registered .
The Respondent submits that it is not its purpose to create confusion among Internet users relative to the name “xvideos” but that the Respondent’s partners had thought that this was a general word related to adult video content. The Respondent states that it has no intention of expending resources on defending its rights to use the disputed domain name particularly as it considers that it has acted in good faith without intending to harm the interests of others. C. Complainant’s Supplemental Filing
The Complainant asserts that supplemental submissions are relevant and permissible if a respondent makes false claims in its response and that the Respondent in the present case has falsely claimed that it registered the disputed domain name in 2008 and used it in good faith.
The Complainant submits that the Respondent registered and used the disputed domain name in bad faith and that the Respondent’s representations to the contrary are unpersuasive and untrue. The Complainant submits that the Respondent has made a false averment that the disputed domain name was delegated to the Respondent in May 2008. The Complainant notes that the WhoIs of the disputed domain name shows a creation date of February 2010. The Complainant asserts that the Respondent’s alleged false averment is evidence of bad faith under the Policy.
The Complainant states that the Respondent did not control the disputed domain name in 2008 and that the Respondent was aware of the implications of registering the disputed domain name in 2010, being three years after the Complainant began using the XVIDEOS mark in commerce. The Complainant asserts that, by 2010, the Complainant already had deeply-entrenched common law rights in the XVIDEOS mark, as it was already one of the largest providers of adult entertainment services in the world and one of the most visited sites on the World Wide Web.
The Complainant submits that although the Respondent contends that it did not intend to create confusion with the Complainant’s well-known and distinctive XVIDEOS mark, the Respondent clearly designed its website for the purpose of eliciting confusion and mistake among Internet users and for eliciting profit from users who mistype the address when looking for the Complainant’s site. The Complainant submits that while Respondent was aware of the Complainant’s XVIDEOS mark when the Respondent took possession of the disputed domain name, its subsequent use of the disputed domain name and the confusing similarity of the services provided on the website associated therewith show the Respondent’s true intentions, namely to profit from the Complainant’s distinctive and well-known brand. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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. A. Identical or Confusingly Similar
In the present case, the Complainant seeks to rely upon rights in an unregistered trademark consisting of the term “xvideos”. In this connection, it is convenient to refer to paragraph 1.7 of the WIPO Overview 2.0 entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” which provides the following consensus view:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The Panel respectfully adopts the consensus view. In the present case, the Panel is convinced by the compelling evidence of media recognition produced by the Complainant that the mark XVIDEOS has become a distinctive identifier associated with the Complainant. Two recent news articles about the Complainant’s website, which uses the domain name , are produced which provide coverage of its activities and global popularity. Each of the articles appears to the Panel to derive from an independent and credible source and each supports the Complainant’s contention that the said website is one of the largest adult entertainment sites and indeed one of the most visited websites on the World Wide Web. The Alexa report relative to , which provides a three-month traffic rank of sixty-second in the world with estimated visits in the same period from 1.6 per cent of all Internet users worldwide, is similarly supportive of the Complainant’s submissions as to the global fame of its said website. For its part, the Respondent does not take issue with or dispute any of the Complainant’s evidence on this topic.
Having determined that the Complainant has successfully asserted common law trademark rights in the mark XVIDEOS, the Panel compares this to the disputed domain name and notes that, for the purposes of such comparison, the country code top level domain of the disputed domain name (“.co”) is disregarded on the grounds that this is required for technical reasons and is wholly generic. Accordingly, when the Complainant’s trademark XVIDEOS is compared to the disputed domain name it is evident that the disputed domain name is identical thereto. In these circumstances, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the domain name. In the present case, the Complainant asserts that no facts exist that would lead a reasonable person to conclude that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant also submits that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and that in any event the Respondent has no authority to use the XVIDEOS mark for the provision of any goods or services. The Complainant also states that it has uncovered no evidence that the Respondent is commonly known by the disputed domain name and that, on the contrary, the Respondent uses the name “YOUVIDEO.CO” on the website associated with the disputed domain name. The Panel considers that the Complainant’s submissions are adequate to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Consequently, the burden of production falls upon the Respondent to bring forward evidence of its rights or legitimate interests, if any, in the disputed domain name.
The Respondent’s submissions as contained in its informal Response are extremely scant. The essence of these is that the Respondent registered the disputed domain name to develop its own business plan related to adult content along with various other domain names. The Respondent states that it has been conducting market research for this business plan. The Respondent also asserts that it believed the term “xvideos” to be generic.
In the Panel’s view, the Respondent’s submissions do not withstand scrutiny. In the first place, each is a bare assertion. The Respondent has produced no evidence whatsoever of any business plan or corresponding market research relating to its alleged preparations to use either the disputed domain name or the corresponding third level domain name in connection with a bona fide offering of goods or services, nor has it produced any evidence demonstrating that it has been commonly known by the name “xvideos”. Secondly, despite being provided with a suitable opportunity, the Respondent has failed to address the Complainant’s submissions in its Supplemental Filing that the Complainant’s website was already one of the most visited in the world by the date of registration of the disputed domain name and was a very well-known website by 2008 when the Respondent says it registered . Accordingly, the Respondent’s claim that it believed the mark XVIDEOS to be generic when it registered the disputed domain name can reasonably be called into question. Thirdly, all of the Respondent’s claims must be set against the fact that it registered a range of second level domain names under the “.co” top level domain relating to well-known trademarks and/or to the names of popular websites at the same time as the disputed domain name, thus giving rise to a reasonable inference in the opinion of the Panel that the Respondent’s purpose did not have any legitimate objective but was rather to profit from an association with each of such trademarks and website names to which the Respondent was not entitled. While the Respondent was offered an opportunity to comment on its registration of these domain names, it chose not to do so.
For these reasons the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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 online 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.”
On this topic, the Complainant notes that the Respondent registered the Additional Domain Names along with the disputed domain name and avers that each of these contain marks used by well-known Internet businesses. The Complainant also notes that the website associated with the disputed domain name provides adult entertainment services closely related or identical to the adult entertainment services offered by the Complainant and submits that the Respondent thereby intended to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. For its part, in its informal Response, the Respondent states that it exercised its right to acquire the disputed domain name on the strength of its original registration in May 2008 of the third level domain name and that it checked at the time of making that earlier registration that there was no corresponding trademark. The Respondent also adds that it had no intention of creating harm or confusion among Internet users by virtue of its registration and use of the disputed domain name.
As noted in the preceding section, the Panel considers that the bulk of the Respondent’s submissions are lacking in credibility. In the Panel’s opinion, the Respondent’s protestations of good faith registration of the disputed domain name in the present case are tainted by the Respondent’s contemporaneous registration of the Additional Domain Names and by the Respondent’s marked failure to explain or comment upon these despite having been given an opportunity to do so. The Additional Domain Names and the disputed domain name, taken together, convey to the Panel the impression of a calculated strategy on the part of the Respondent to register domain names which are confusingly similar to well-known Internet names and marks, particularly names which are used in domain names for popular websites in the corresponding “.com” top level domain space. This is a common cybersquatting practice recited in numerous cases under the Policy in which the registrant of a “.co” domain name seeks to benefit from Internet traffic generated by users who inadvertently fail to type the final letter “m” of the corresponding well-known “.com” domain name, thus inadvertently typing the “.co” domain name instead.
The Respondent submits that it registered in May 2008 and that the subsequent registration of the disputed domain name was made pursuant thereto, in terms of the policy defined for the “.co” country code top level domain. The Respondent provides a link to the “.co” registry’s website in support of this submission however the link produces a message stating that the web page cannot be found. For its part, the Complainant largely proceeds in its Supplemental Filing upon a misunderstanding of the Respondent’s position, arguing that the Respondent has made a false representation in the Response that it registered the disputed domain name itself in May 2008. This is not the case; it is the third level domain registration under “.” that the Respondent claims to have effected at that date. That said, in the view of the Panel, the Complainant correctly identifies that it is the Respondent’s intentions and motivation as at the date of the registration of the disputed domain name, rather than at any earlier date, which is critical for present purposes.
The Respondent’s submission regarding the third level domain name is a bare assertion. Even if the fact of its registration had been demonstrated to the satisfaction of the Panel, which it has not, the Panel has no reason to believe that any such prior registration was effected in good faith and without intent to target the Complainant. The Complainant notes in the Supplemental Filing that it had commenced using the XVIDEOS mark in 2007 and that its website was already very well-known by 2008. In any event, the existence of any such third level registration would not, in and of itself, have given rise to any inference that the disputed domain name must have been registered in good faith. On the contrary, the Panel considers that whatever the position in the past, it is more likely than not that when the Respondent registered the disputed domain name in March 2010 the Respondent knew that it was targeting the Complainant’s XVIDEOS mark and the associated domain name. The Panel accepts the Complainant’s contention that by that date was associated with one of the most visited websites on the Internet and the Panel considers the Respondent could not have been unaware of this fact. Furthermore, the Respondent’s contemporaneous registration of the Additional Domain Names supports the contention that the Respondent was actively engaged in a pattern of conduct which prevented the owners of various trademarks from reflecting such marks in corresponding domain names in the “.co” space.
In these circumstances, the Panel finds that the Complainant has proved on balance of probabilities that the Respondent registered and used the disputed domain name in bad faith and accordingly, that the requirements of paragraph 4(a)(iii) of the Policy have 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 disputed domain name be transferred to the Complainant.
Andrew D.S. Lothian
Sole Panelist
Date: August 20, 2012
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