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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

xHamster IP Holdings Ltd v. Denis Popov, tgptraffic / WhoisGuard, Inc.

Case No. D2020-3246

1. The Parties

The Complainant is xHamster IP Holdings Ltd, Antigua and Barbuda, represented internally.

The Respondent is Denis Popov, tgptraffic, France, / WhoisGuard, Inc., Panama.

2. The Domain Name and Registrar

The disputed domain name <sexhamster.pro> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 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 December 3, 2020.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on December 28, 2020.

The Center appointed Dennis A. Foster as the sole panelist in this matter on January 6, 2021. 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

Operating from Antigua and Barbuda, the Complainant has established a worldwide reputation and following for its online distribution and streaming of pornographic materials. These operations are conducted under its XHAMSTER service mark, which is registered with the Benelux Office for Intellectual Property (“BOIP”) (Registration No. 0986331; registered on December 3, 2015), the Antigua & Barbuda Trade Marks Office (“ABIPCO”) (Registration No. 9039; registered on November 3, 2015) and the European Union Intellectual Property Office (“EUPIO”) (Registration No. 018255445; registered on October 31, 2020).

The Respondent owns the disputed domain name, <sexhamster.pro>, whose date of creation is December 12, 2019. The disputed domain name is used to host a pornographic website.

5. Parties’ Contentions

A. Complainant

The Complainant, a company domiciled in Antigua and Barbuda, operates downloadable and streamed Internet adult entertainment services through a website found at its domain name, <xhamster.com>. The domain name <xhamster.com> has been used since 2007 when it was registered. The mark is registered with a few trademark authorities. Also, the Complainant’s website was rated the fourth most popular pornography website and the twentieth most trafficked website in the world.

The disputed domain name, <sexhamster.pro>, is confusingly similar to the Complainant’s XHAMSTER service mark. The only differences are the addition of the letters “se” in front of the full mark and the generic Top-Level Domain (“gTLD”) “.pro”.

The Respondent has no rights or legitimate interests in the disputed domain name. Because the disputed domain name is attached to a website that provides pornographic material similar to the Complainant’s offerings, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Moreover, the Respondent has never attempted to contact the Complainant to obtain affiliation or consent to use the Complainant’s mark.

The disputed domain name was registered and is being used in bad faith. As the Respondent is selling material competitive with that of the Complainant, it is clear that the Respondent’s intent is to illegitimately gain commercially due to creating the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website that is attached to the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In accordance with Policy paragraphs 4(a)(i) - (iii), the Panel may rule in favor of the Complainant and order a transfer of the disputed domain name, <sexhamster.pro>, if the Complainant proves that:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has submitted to the Panel evidence of registrations for its XHAMSTER service mark with the BOIP, ABIPCO and EUIPO. That evidence is sufficient for the Panel to declare that the Complainant has the requisite rights to satisfy Policy, paragraph 4(a)(i). See, Adventia Pharma, S.L. v. Super Privacy Service LTD c/o Dynadot LLC / bilal bal, WIPO Case No. D2020-1592 (“The Complainant has demonstrated rights in the PERMEACARE trademark through its registration in the EUIPO.”); and Greenfort Partnerschaft von Rechtsanwälten mbB v. CheapYellowPages.com, WIPO Case No. D2016-0796 (“The Panel accepts that the Complainant has rights in the GREENFORT mark based on its trade mark registrations [...]”).

The Panel finds that the disputed domain name, <sexhamster.pro>, is confusingly similar to the XHAMSTER service mark. Where the relevant trademark is recognizable within the disputed domain name, the addition of the letters, “se”, before the letter, “x”, found in the mark, does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

As has been explained in many previous UDRP decisions, the gTLD, “.pro”, offers no distinction whatsoever in this comparison. See, Comcast Corporation v. ICS INC, WIPO Case No. D2020-0222 (finding <fxfinity.com> to be confusingly similar to the XFINITY mark): and Andrey Ternovskiy d/b/a Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Bob Maynard, Bootlets, WIPO Case No. D2017-0408 (finding <sexchatroulette.win> to be confusingly similar to the CHATROULETTE mark).

Therefore, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Previous UDRP decisions have established that a complainant, who bears the ultimate burden of proof, may first put forth a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name in order to place the burden upon that respondent to produce evidence that it does possess those rights or interests. See, WIPO Overview 3.0, section 2.1 (“[...] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.”).

The Complainant has established to the Panel’s satisfaction that the disputed domain name is confusingly similar to the Complainant’s XHAMSTER service mark. Also, the Complainant contends unequivocally that there is no relationship between the Complainant and the Respondent. Moreover, the Panel agrees with the Complainant that there is no reason to believe that the Respondent is commonly known as the disputed domain name, which may have otherwise supported a claim by the Respondent to rights or legitimate interests in the disputed domain name per Policy, paragraph 4(c)(ii). Given these circumstances, a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name has been sustained, which requires a rebuttal from the Respondent.

Since the Respondent has submitted no Response, the Panel will try to determine whether a winning rebuttal to the Complainant’s case exists based on the reasonable contentions found in the Complaint and any inferences that may be appropriate. See, WIPO Overview 3.0, section 2.1 (“The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed.”).

According to Policy paragraph 4(c)(i), the Respondent can claim rights or legitimate interests in the disputed domain name if it is used in connection with “a bona fide offering of goods or services”. In this case, the disputed domain name is composed of two descriptive words, “sex” and “hamster”, and some prior UDRP decisions take the position that a disputed domain name so composed might fit within the parameters of paragraph 4(c)(i), if the goods or services provided in connection with that disputed domain name relate to the meaning of those descriptive words. See, WIPO Overview 3.0, section 2.10.1.

But in this instance, the Panel finds that the disputed domain name is used, as asserted by the Complainant, to offer exactly the same sort of people-oriented pornography that the Complainant offers. Thus, as the disputed domain name is confusingly similar to the Complainant’s service mark, the Panel is led to find that the Respondent is not engaged in a “bona fide offering of goods or services” as understood under Policy, paragraph 4(c)(i). See, Star Stable Entertainment AB v. WhoisGuard Protected, WhoisGuard Inc. / Federico James, WIPO Case No. D2016-1427 (“It is clear from the evidence that the Respondent has used the site attached to the Domain Name to promote computer software services in competition with those of the Complainant. [...] As such, it cannot amount to the bona fide offering of goods and services.”); and Ritzio Purchase Limited v. Whoisguard Protected, Whoisguard, Inc / Z-P. M, WIPO Case No. D2015-0295.

Because the Respondent uses the disputed domain name to profit illegitimately from services that compete directly with those furnished by the Complainant, Policy, paragraph 4(c)(iii), which might allow the Respondent a rebuttal based upon “legitimate noncommercial or fair use” of the disputed domain name, also does not apply to the present circumstances.

As Policy, paragraph 4(c) cannot be used by the Respondent to validate a claim to rights or legitimate interests in the disputed domain name, and the Panel did not find in the record any other evidence supporting such a claim, the Panel concludes that the Complainant’s prima facie case prevails with respect to this issue.

Therefore, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Policy, paragraphs 4(b)(iii) and (iv) cite two applicable circumstances that give rise to a finding of bad faith registration and use of a disputed domain name as follows:

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel has accepted the Complainant’s evidence that the disputed domain name is used by the Respondent to offer the same sort of online pornographic material offered by the Complainant. The Panel finds that those efforts by the Respondent deprive the Complainant, a direct competitor of the Respondent, of potential sales, thus disrupting the Complaint’s business. Ergo, the Panel concludes that the disputed domain name was registered and is being used in bad faith per Policy, paragraph 4(b)(iii). See, Travellers Exchange Corporation Limited v. Travelex Forex Money Changer, WIPO Case No. D2011-1364 (“The Panel concludes that Respondent is seeking to disrupt the business of a competitor, Complainant, by offering at its website the very services Complainant has offered...”).

Furthermore, as the Respondent clearly intends to gain commercially from its use of the disputed domain name based upon a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, the Panel also determines that the bad faith circumstances set forth in Policy, paragraph 4(b)(iv) are also applicable to this case.

Therefore, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(iii).

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, <sexhamster.pro>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: January 20, 2021

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