WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WGCZ S.R.O. v. WhoIs Agent, Profile Group

Case No. D2014-0665

1. The Parties

Complainant is WGCZ S.R.O., Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.

Respondent is WhoIs Agent, Profile Group of Wilmington, Delaware, represented internally.

2. The Domain Name and Registrar

The disputed domain name <xnxx.pro> is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2014. On April 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2014, the Registrar 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 Respondent of the Complaint, and the proceedings commenced on May 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2014. In Response to a request by Complainant, the proceeding was suspended for the purpose of settlement negotiations on May 23, 2014. The proceeding was reinstituted on June 5, 2014. An amended Complaint was received by the Center the same day, as well as Complainant’s request that the Center grant Respondent the full period for Response to the amended Complaint. In light of Complainant’s request, the Response due date was set for June 25, 2014. The Response was filed with the Center on June 15, 2014. Complainant submitted a Supplemental Filing on June 19, 2014. Respondent submitted a Supplemental Filing on June 24, 2014.

The Center appointed Michael A. Albert as the sole panelist in this matter on June 20, 2014. 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 and operates the domain name <xnxx.com>, and has used this domain name for several years in connection with the provision of adult entertainment services on the World Wide Web. Complainant’s predecessor-in-interest, a wholly owned subsidiary of Complainant, was granted a trademark registration by the United States Patent and Trademark Office for the XNXX.COM mark (U.S. Reg. No. 4,363,782, filed September 18, 2012, and registered July 9, 2013). Complainant’s predecessor-in-interest acquired the <xnxx.com> domain name on February 22, 2003 and the domain name has been used in connection with the provision of adult entertainment services on the World Wide Web since at least 2004.

The disputed domain name <xnxx.pro> was registered on March 21, 2014.

5. Parties’ Contentions

A. Complainant

For several years, Complainant has owned and operated the domain name <xnxx.com>. During that time, Complainant has used this domain name in connection with the provision of adult entertainment services on the World Wide Web. In addition to Complainant’s registered trademark rights, which pre-date Respondent’s registration of the disputed domain name, Complainant contends that its common law rights pre-date Respondent’s registration by nearly ten years. By 2004, Complainant contends, Complainant’s use of XNXX.COM as a trademark for the provision of adult entertainment was extensive, as evidenced by data from Google Trends documenting a sharp rise in Internet user interest in the term “xnxx.com”. Today, Complainant contends that <xnxx.com> is one of the most popular adult entertainment websites in the world, as evidenced by data from Alexa Internet, a company that tracks global website traffic, which ranks <xnxx.com> as the 103rd most visited website globally and 105th most visited in the United States.

Complainant contends that the disputed domain name, <xnxx.pro>, is nearly identical and confusingly similar to Complainant’s mark. Complainant contends that Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name. Complainant contends that both its common law rights and its registered rights pre-date the Respondent’s registration of the disputed domain name. Further, Complainant contends that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services. Instead, Complainant contends, Respondent has used the disputed domain name as a pay-per-click domain parking site to take advantage of Complainant’s rights. Complainant contends that Respondent registered the <xnxx.pro> disputed domain name not because it refers to, or is associated with, Respondent, but because it is confusingly similar to Complainant’s <xnxx.com> domain name and XNXX.COM mark.

Complainant contends that Respondent’s registration and use of the disputed domain name occurred in bad faith. Complainant contends that, because its “XNXX” mark is a coined term, with no inherent meaning, bad faith is found because it is highly unlikely that Respondent would have selected the domain name without knowing of the reputation of the mark in question, XNXX.COM. Complainant contends that after registering the disputed domain name, Respondent immediately launched a website with pay-per-click ads offering links that included services competitive with Complainant’s site. In light of the circumstances, Complainant contends that Respondent knew or should have known of the XNXX.COM mark at the time of its registration of the disputed domain name. Complainant contends that Respondent, after becoming aware of the original Complaint, changed its <xnxx.pro> site so as not to include links competitive with Complainant. Moreover, Complainant contends that Respondent started to offer the disputed domain name for sale within a month of acquiring it. Although Respondent, after becoming aware of the original Complaint, contacted Complainant and offered to transfer the disputed domain name to Complainant at no expense, Complainant contends that this offer does not demonstrate good faith on the part of Respondent when considered alongside Respondent’s previous conduct, which unambiguously shows that Respondent used the disputed domain name in bad faith.

B. Respondent

Respondent contends that Complainant has not established that the disputed domain name is confusingly similar to Complainant’s XNXX.COM mark because the “.COM” portion of the mark suffices to distinguish it from the disputed domain name.

Respondent contends that Complainant has not established that Respondent has no rights or legitimate interests with respect to the disputed domain name. Respondent contends that it registers generic, descriptive, and otherwise non-infringing domain names for the purpose of deriving advertising income by the use of each such domain name in connection with a click-through service which serves as a starting point for Internet users seeking certain information. Respondent contends that the sole reason it registered the disputed domain name is because of its short length of four characters. Respondent contends that its use of a click-through service in connection with the disputed domain name establishes rights and legitimate interests with respect to the disputed domain name.

Respondent contends that Complainant is unable to establish that Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent contends that it was motivated to register the disputed domain name by an independent intent, unrelated to Complainant. Respondent contends that it did not register the disputed domain name in an attempt to disrupt the business of Complainant. Respondent contends that it legitimately utilizes a third-party service to provide links on the disputed domain’s website and that these links are not static. Therefore, Respondent contends, the fact that the disputed domain name has ceased to link to competitors of Complainant does not provide any information about Respondent’s intentions. Respondent contends that its offer to transfer the disputed domain name to Complainant was done in good faith, in an effort to avoid the time and expense associated with filing a response to the Complaint.

Respondent also asks the Panel to apply the equitable doctrine of laches to deny the Complaint, which was brought in 2014, although the disputed domain name has been in existence in some form since 2009 under at least one registrant prior to Respondent.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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 Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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. Supplemental Submission

Paragraph 10 of the Rules directs the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” As a result, Panels generally seek to discourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. See, e.g., Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. In this case, because the Panel is of the opinion that each Party was given a fair opportunity to present its case in its first filing, the Panel declines to accept the Supplemental Submission as a part of the record in this proceeding.

B. Identical or Confusingly Similar

Complainant provides sufficient evidence that it is the owner of the XNXX.COM mark. In addition to Complainant’s registered trademark for XNXX.COM, with an effective date of September 18, 2012, Complainant has contended, and Respondent has not denied, that Complainant has continuously used the distinctive XNXX.COM mark and its <xnxx.com> domain name in connection with the provision of adult entertainment services on the World Wide Web since at least 2004. Further, Complainant has provided evidence of website traffic and Internet user search data to support its contention that Complainant’s use of XNXX.COM as a trademark for the provision of adult entertainment was extensive and well-known.

UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of a Policy and will proceed to the merits of the case under the other elements of the Policy if there is “sufficient similarity” between the disputed domain name and the relevant trademark. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011. Confusing similarity is tested “by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression.” Id.

Under the confusing similarity test, the Top-Level Domain (TLD) suffix of the disputed domain name, <.pro>, is generally disregarded. See Mozilla Foundation and Mozilla Corporation v. Limpkin Walker, WIPO Case No. DME2008-0007. Consumers would be expected to understand Complainant’s mark as referring to a website because the TLD suffix “.com” is so widely known. As a result, the dominant part of Complainant’s mark, as determined by the overall visual and aural impact of the mark, is “XNXX”. See WGCZ S.R.O. v. Marcel Pondi / WhoIsProtectService.net Protectservice, Ltd., WIPO Case No. D2014-0491; 32Red Plc., Trafalgar Media Limited v. Baysound LLC, WIPO Case No. D2012-0378. The relevant portion of the disputed domain name, “xnxx”, is identical to the dominant part of Complainant’s trademark, “XNXX.” Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.

C. Rights or Legitimate Interests

Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by

showing that:

(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;

(ii) Respondent has been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

Complainant contends, and Respondent does not deny, that Respondent has no rights in the XNXX mark, is not commonly known by the disputed domain name, and is not making noncommercial fair use of the disputed domain name. Further, Complainant has alleged that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and is seeking to benefit from Internet traffic directed to Respondent’s website associated with the disputed domain name to profit from the established reputation of Complainant. Use of a domain name as a pay-per-click website is not in and of itself illegitimate. McMullen Argus Pbl’g Inc. v. Moniker Privace Services/Jay Bean, MDNH, Inc., WIPO Case No. D2007-0676. However, where pay-per-click links are based on a trademark’s value, as Complainant alleges here and as Respondent has not convincingly refuted, prior decisions have considered the use of a domain name to post pay-per-click links to be unfair use. See, e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

For the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the disputed domain name. Therefore, the Panel finds that Complainant has proven the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

Registered in Bad Faith

When Complainant’s mark is well-known, Complainant may satisfy its burden of proving that the registration was in bad faith by showing that Respondent knew or should have known about the existence of Complainant’s mark. Research in Motion Limited v. Privacy Locked LLC / Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. Complainant contends that Complainant’s well-known website and established reputation at the time the disputed domain name was registered indicate that Respondent knew or should have known of Complainant’s rights in XNXX.COM and thus constitute evidence of registration in bad faith. Respondent denies that it was motivated to register the disputed domain name in order to target or usurp the goodwill of Complainant. However, Respondent does not deny that it knew of Complainant’s XNXX.COM mark.

Respondent registered the disputed domain name on March 21, 2014. At that time, Complainant had possessed registered rights in the XNXX.COM mark as a trademark for the provision of adult entertainment for over a year, and had used the XNXX.COM mark in the same area of commerce for ten years. Complainant has provided ample evidence, which Respondent has not contested, that its mark was well-known and that Respondent should have known about the existence of Complainant’s mark.

Based upon the foregoing circumstances, the Panel finds that Respondent registered the disputed domain name in bad faith.

Used in Bad Faith

The Panel also finds that Respondent used the disputed domain name in bad faith.

Complainant has provided evidence, and Respondent has not provided sufficient reason for this Panel to doubt, that Respondent registered and used the disputed domain name to confuse Internet users as to the source or affiliation of the website and to divert Internet users seeking Complainant’s website for its own commercial purposes. The website associated with the disputed domain name included pay-per-click links to other adult entertainment websites that are competitors of Complainant. The commercial impression conveyed by Respondent’s disputed domain name is that any adult entertainment content associated with it is affiliated with Complainant. Accordingly, the Panel finds that Complainant has sufficiently demonstrated that Respondent attempted to attract Internet users to its site by creating a likelihood of confusion with Complainant’s trademark in XNXX.COM.

For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy.

E. Laches

The Panel declines to endorse Respondent’s argument that the doctrine of laches should rebut the presumption in favor of Complainant upon satisfaction of the first element of the Policy. Because the remedies under the Policy are injunctive rather than compensatory in nature, with a focus on avoiding confusion on the part of consumers as to the source of goods or services, “UDRP panels have generally declined to apply the doctrine of laches.” Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.

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 <xnxx.pro> be transferred to the Complainant.

Michael A. Albert
Sole Panelist
Date: July 2, 2014