WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NKL Associates S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / Mark Frolov

Case No. D2015-0407

1. The Parties

The Complainant is NKL Associates S.R.O. of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.¹

The Respondents are WhoIsProtectService.net Protectservice, Ltd. of London, United Kingdom of Great Britain and Northern Ireland and Mark Frolov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The domain name <xnxxhdtube.com> (referred to below as the “Disputed Domain Name”) is registered with EvoPlus Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2015. On March 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2015 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 23, 2015 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 30, 2015.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2015.

The Center appointed Nick J. Gardner as the sole panelist in this matter on April 28, 2015. 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 evidence filed by the Complainant, which has not been disputed by the Respondent, establishes to the Panel’s satisfaction the following background.

The Complainant’s predecessor-in-interest acquired the domain name <xnxx.com> in 2003, which Complainant uses in relation to the website “www.xnxx.com” (the “Complainant’s Website”). The Complainant’s Website provides to visitors access to what the Complainant describes as “adult entertainment services”, although this is a euphemism for a wide range of pornographic material. The Complainant or its predecessor-in-interest has carried on this business since at least 2004.

The Complainant’s Website receives a very large amount of traffic. According to Alexa Internet, a company that tracks global website traffic, “www.xnxx.com” is currently the 123rd most visited site globally.

The Complainant has submitted evidence that it is the current owner of the following trademark registrations for XNXX:

U.S. Registration No. 4,363,782 in respect of the word mark XNXX.COM filed on September 18, 2012 and registered on July 9, 2013.

Community Trademark No. 011945821 for XNXX registered on November 26, 2013.

The Disputed Domain Name <xnxxhdtube.com> was registered on April 2, 2013. The Disputed Domain Name has been used to provide services directly competitive with those offered by the Complainant. The website to which the Disputed Domain Name resolves provides the same kind of adult videos that can be found on the Complainant’s Website.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions are lengthy and cite numerous previous UDRP cases. In summary the principal points the Complainant makes are as follows.

It says that it has registered trademark rights (see above) and also has developed extensive common law trademark rights in the XNXX trademark. The common law rights are extensive and evidenced by the granting of the registered rights under Section 2(f) of the US Trademark Act.

The XNXX trademark has achieved secondary meaning both in the press and in the relevant marketplace. The Complainant’s Website is currently one of the most popular adult entertainment websites in the world. The strength of the XNXX mark is further evidenced by the sheer volume of traffic it receives. The Complainant’s Website has been continuously operated by the Complainant or its predecessors-in-interest since 2004 and the Complainant’s rights to the XNXX mark predate the registration date of the Disputed Domain Name.

The distinctiveness of the XNXX trademark and the Complainant’s rights in the mark have been recognized by several UDRP panels. Numerous cases are cited including for example WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. /AVO Ltd AVO Ltd, WIPO Case No. D2014-0545 (in complaint brought by predecessor-in-interest, recognizing “the significant degree of reputation attaching to the XNXX and XNXX.COM marks”).

The Disputed Domain Name is legally identical to the Complainant’s trademark, merely adding the term “hdtube” after it. Adding a descriptive term to a registered trademark does nothing to lessen the likelihood of confusion created by the Disputed Domain Name.

“XNXX” is a coined term, with no inherent meaning – the strongest kind of trademark. It is inconceivable that the Respondent has any legitimate argument as to why it registered this domain name except to try and confuse the public. The Respondent purchased it for the purpose of redirecting users from the Complainant’s Website and profiting from their confusion.

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 or a legitimate noncommercial or fair use. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather, the Respondent is using the Disputed Domain Name for a commercial purpose, as its website contains advertisements and links to third party websites that compete with the Complainant. The Respondent is undoubtedly compensated for those links and advertisements.

The Respondent registered the Disputed Domain Name to profit from the goodwill of the Complainant’s trademark XNXX. The registration occurred long after the Complainant began use of the mark and accrued common law rights. After registering the Disputed Domain Name, all available evidence indicates that the Respondent’s website immediately offered adult entertainment services identical to those provided by the Complainant and continues to do so to this day.

No evidence indicates that the Respondent is commonly known by the Disputed Domain Name. The Respondent was undoubtedly aware of the Complainant’s XNXX mark and the services offered thereunder when it commenced bad faith use and registration of the Disputed Domain Name. The Respondent registered the Disputed Domain Name then immediately launched a website that mimicked the Complainant’s website, which had been in operation for eight years. The Respondent hoped to create a likelihood of confusion amongst the consuming public as to the source, sponsorship, affiliation, or endorsement of the website located at the Disputed Domain Name. Thus, the Respondent registered the Disputed Domain Name for the purpose of redirecting users from the Complainant’s website and profiting from their confusion.

Relying on the above arguments the Complainant says that it is clear that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the Disputed Domain Name; and that the Disputed Domain Name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Preliminary Issues

As a preliminary issue the Panel notes this is a case where one of the Respondents (WhoIsProtectService.net Protectservice, Ltd.) appears to be a privacy or proxy registration service while the other Respondent (Mark Frolov) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, as follows “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.

The Panel also notes that no communication has been received from the Respondent Mark Frolov. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in paragraph 4.9 of the WIPO Overview 2.0 namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the second Respondent’s failure to file any Response.

Substantive Issues

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark XNXX. The Panel notes that both registrations relied upon by the Complainant post date the registration of the Disputed Domain Name (although at least the United States mark had been applied for before that date). The point however does not matter as, in addition, it has been argued by the Complainant that it has common law trademark rights in the mark XNXX predating the Respondent’s registration of the Disputed Domain Name and the Complainant has submitted evidence to support this claim. Previous UDRP panels have recognized that the XNXX mark has developed sufficient goodwill through use as to qualify as a relevant unregistered right for the purposes of the Policy – see for example WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. /AVO Ltd AVO Ltd, WIPO Case No. D2014-0545. Based upon the evidence, the Panel accepts that the Complainant has, since it or its predecessor’s commencement of use in 2004, developed a reputation for its XNXX trademark and the Complainant’s Website. Accordingly the Complainant has rights in the XNXX trademark.

The Disputed Domain Name incorporates the Complainant’s trademark XNXX in its entirety with the addition of the term “hdtube”. The Panel regards this term as descriptive, being a common way to refer to a video streaming service (derived from “high definition tube”).

Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is also well established that where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that the addition of a generic term (such as here the term “hdtube”) to a disputed domain name has little, if any, effect on a determination of legal identity between that domain name and a mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights and, therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:

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 organisation) 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.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the XNXX trademark. The Complainant has prior rights in the XNXX trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Complainant has submitted evidence indicating that the Respondent registered the Disputed Domain Name after the Complainant had established common law rights in the trademark XNXX. Furthermore, the submitted evidence indicates that the Respondent, shortly after having registered the Disputed Domain Name, created a website very similar to the Complainant’s Website. The evidence establishes that the Respondent is seeking to attract to its own website visitors who were looking for the Complainant’s Website. The Panel has no doubt that it derives revenue in the form of advertising payments in relation to its website and that its motive was commercial gain.

Thus, the evidence in the case before the Panel indicates that the Disputed Domain Name has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the Disputed Domain Name has been registered and used in bad faith.

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 <xnxxhdtube.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: May 6, 2015

¹ While the Complaint lists the Complainant as having the same Las Vegas address as its authorized representative, an annex filed with the Complaint indicates that the Complainant is in fact located in the Czech Republic.