WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WGCZ S.R.O. v. WhoIsProtectService.net / Ivan Makarov
Case No. D2014-0468
1. The Parties
The Complainant is WGCZ S.R.O. of Las Vegas, Nevada, United States of America, represented by Randazza Legal Group, United States of America.
The Respondent is WhoIsProtectService.net of London, United Kingdom of Great Britain and Northern Ireland / Ivan Makarov of Sverdlovsk, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <new-xnxx.com> (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 26, 2014. On March 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 27, 2014, 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 April 8, 2014 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 April 14, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 5, 2014.
The Center appointed Alistair Payne as the sole panelist in this matter on May 12, 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
The Complainant or its predecessor in title has owned the domain name <xnxx.com> since February 22, 2003 and has provided adult entertainment services from a website at this domain name since 2004. The Complainant or its predecessor in title owns a Community Trade Mark registration for XNXX under trade mark registration number 011946217 dating from November 2013 and United States trade mark registration XNXX.COM under number 4,363,782 dating from September 18, 2012.
The Respondent registered the Disputed Domain Name on September 26, 2012.
5. Parties' Contentions
The Complainant submits that the Disputed Domain Name is confusingly similar to its registered trade marks as listed above, which it says that it owns or its wholly owned subsidiary has previously owned, as a consequence of various assignments, evidence of which it has submitted in these proceedings. It says that the Disputed Domain Name only differs from its XNXX.COM mark in that it contains the word "new" and also a hyphen. The Complainant notes that either it, or its predecessor, has provided adult entertainment services at its domain name <xnxx.com> from as early as June 2004 and that the website has gained a very considerable following since that time such that by 2012 it had become one of the most visited adult entertainment websites in the world. The Complainant notes that according to Alexa Internet, the company that tracks global website traffic, <xnxx.com> is currently the 102nd most visited website globally and 108th in the United States.
The Complainant argues that the Respondent cannot have any rights or legitimate interests in the Disputed Domain Name in circumstances that it has registered and used the Disputed Domain Name in bad faith. The Complainant submits that considering the following that has developed for the Complainant's website and the degree of renown attaching to its XNXX.COM mark as a result, that the Respondent's use of the Disputed Domain Name to resolve to a site containing adult entertainment material and links to third party adult websites can only be targeted at trading off the goodwill and reputation attaching to the Complainant's mark. It says that this conduct is a form of bait-and-switch selling, which is calculated to mislead Internet users and cannot be regarded as a bona fide offering of goods or services capable of conferring any rights or legitimate interests in the Disputed Domain Name. This is only reinforced according to the Complainant by the fact that its XNXX mark is a coined term.
The Complainant says that its mark was well known in 2004, and it had obtained registration of the mark in the United States and an international reputation by 2012 and therefore any claim by the Respondent that it was not aware of the Complainant's mark when it first registered the Disputed Domain Name is in no way credible. The Respondent's registration of the Disputed Domain Name including the word "new" as in <new-xnxx.com> is indicative, according to the Complainant of the Respondent's awareness of the Complainant's rights and intent to register the Disputed Domain Name in bad faith. Even if this were not the case, the Complainant says that speculative registration by the Respondent, either to sell the Disputed Domain Name, or to divert Internet traffic from the Complainant's website would amount to registration in bad faith.
The Complainant submits that 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 <new-xnxx.com>. It says that in September 2012, after <xnxx.com> had garnered international acclaim and after the Complainant had filed its trade mark application with the United States Patent and Trademark Office, the Respondent began using the Disputed Domain Name to provide the exact services offered on the Complainant's website at <xnxx.com>. This, says the Complainant, is evidence of the Respondent having used the Disputed Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Complainant made a supplemental filing on April 22, 2014 as it had omitted to include a copy of its Community Trade Mark registration for XNXX. This filing was made prior to the date for response by the Respondent and provides supplementary evidence that is relevant to the case. The Panel exercises its discretion under the Policy on this occasion to accept the filing into these proceedings.
On May 26, 2014 the Panel issued a Panel Order in the following terms:
"Having reviewed the available record, the Panel requests the Complainant to file further submissions in order to clarify the following matters:
1. The relationship between the Complainant and Vlab Limited (a Hong Kong based company) as the trade mark owner of both the US and CTM registrations nos. 4,363,782 and 011946217 respectively and the basis on which the Complainant claims that it has registered trade mark rights for the purposes of the Policy; and
2. Brief details concerning the transfer of common law rights/goodwill to the Complainant by its "predecessor in title" as referred to in the Amended Complaint, including the nature of those rights and the date of transfer.
Any submissions or communications in reply to this Order should be made on or before June 2, 2014, by email (only) to email@example.com and be copied to the other party, pursuant to paragraph 2(h) of the Rules.
In order to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, the Respondent may submit, on its discretion, a response strictly relating to matters arising from the Complainant's reply to this Order (if any) on or before June 9, 2014.
The parties are reminded that direct communication with the Panel is not permitted under paragraph 8 of the Rules.
The Panel hereby extends the decision due date to June 16, 2014. "
The Complainant filed an additional submission in response to the Panel Order on June 3, 2014. The Respondent filed no submission in response.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns a Community Trade Mark for XNXX under number 011946217 dating from November 2013 and also owns a United States registered trade mark for XNXX.COM under number 4,363,782 dating from September 18, 2012. The Disputed Domain Name differs from this latter mark only by the addition of a prefix, namely, the word "new" followed by a hyphen. The Panel finds that the addition of this common non-distinctive English word together with a hyphen does not distinguish the Disputed Domain Name from the Complainant's mark as it merely suggests to Internet users that the website to which the Disputed Domain Name resolves is a "new" version of the Complainant's website at <xnxx.com>.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's XNXX.COM mark and that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has demonstrated that it has developed a very substantial following for its XNXX mark since the commencement of its adult entertainment website at <xnxx.com> in 2004. It submits that it has not authorised or licensed the use of its mark to the Respondent and the Respondent has not provided any explanation for its commercial use of the Disputed Domain Name.
In these circumstances, the Respondent's use of the Disputed Domain Name to resolve to a website that directly competes with the Complainant's website and further considering the Panel's finding of registration and use in bad faith as set out below, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. As a result the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name in 2012 one week after the Complainant filed its trade mark application for the XNXX.COM mark in the United States. As noted above the Disputed Domain Name differs from the XNXX.COM mark only in that it contains the word "new" and a hyphen. In the Panel's view this was no coincidence.
By the date of the Respondent's registration of the Disputed Domain Name, the Complainant, or its predecessor in title, had used the XNXX mark for the provision of adult entertainment services at its website "www.xnxx.com" for approximately eight years and had developed a very considerable following to the extent that the Complainant submits that according to Alexa Internet it is the 102nd most visited website globally and 108th most visited website in the United States. In these circumstances and considering the directly competing use made by the Respondent of the Disputed Domain Name, the Panel infers that the Respondent registered the Disputed Domain Name in full knowledge of the Complainant's XNXX mark
The Respondent has used the Disputed Domain Name to resolve to a website that provides adult entertainment services and competes directly with the Complainant's website at <xnxx.com>. The Panel finds that the Respondent has used the Disputed Domain Name, which differs from the Complainant's mark only by the addition of the word "new" and of a hyphen, to confuse Internet users in order to divert them to the Respondent's website at the Disputed Domain Name. It appears that the Respondent has done this for commercial purposes which amounts to confusing Internet users as to the source, sponsorship, affiliation, or endorsement of the website in terms of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Respondent has both registered and used the Disputed Domain Name in bad faith and that the Complaint succeeds under the third element of the Policy.
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 <new-xnxx.com> be transferred to the Complainant,
Date: June 10, 2014