WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WGCZ S.R.O. v. Marcel Pondi / WhoIsProtectService.net Protectservice, Ltd.
Case No. D2014-0491
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 Marcel Pondi of Akcha, Afghanistan / WhoIsProtectService.net Protectservice, Ltd. of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <xnxxnow.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 27, 2014. On March 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 31, 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 March 31, 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 2, 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 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 2, 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 provides adult entertainment services from its website at <xnxx.com> and either it or its predecessor in interest has done so since approximately 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 a 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 April 16, 2012.
5. Parties' Contentions
The Complainant submits that it owns registered trademarks as noted above and that the Disputed Domain Name is confusingly similar to its XNXX.COM trade mark in that it differs only by the addition of the word "now". It says that the website "www.xnxx.com" is one of the most popular adult entertainment websites in the world. According to Alexa Internet, the company that tracks global website traffic, "www.xnxx.com" is currently the 102nd most visited website globally and 108th in the United States. As a consequence the Complainant says that it has developed a very substantial goodwill and reputation in connection with its XNXX.COM mark
The Complainant submits that it has not authorised or licensed the Respondent's use of its mark and that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In addition to using the XNXX.COM mark to offer services that directly compete with the Complainant's services, the Respondent's "www.xnxxnow.com" website contains links and advertisements to third party websites that also compete with the Complainant. The Complainant says that this is not bona fide or legitimate use and therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant says that its mark is a coined term and that the Respondent purposefully registered the confusingly similar Disputed Domain Name some eight years after the Complainant's business had become very well established in order to confuse Internet users into thinking that there was some association or link with its website so as to profit from this diverted custom. In addition the Complainant submits that the Respondent has submitted false "WhoIs" information by listing its address as being in a remote village in Afghanistan which the Complainant says is extremely unlikely to be the base from which an adult entertainment site such as this one operates. As a consequence the Complainant says that the Respondent both registered and used the Disputed Domain Name in bad faith.
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 Community Trade Mark registration for XNXX under trade mark registration number 011946217 dating from November 2013 and also United States trade mark registration XNXX.COM mark under number 4,363,782 dating from September 18, 2012. The Disputed Domain Name differs from the Complainant's mark only by the addition of the word "now" after the "xnxx" element of the Disputed Domain Name. The Panel finds that this addition does not distinguish the Disputed Domain Name from the Complainant's XNXX.COM mark as the Complainant's mark is wholly incorporated within the Disputed Domain Name and the insertion of the word "now" in the middle does not alter the primacy of the XNXX element of the mark but merely suggests to Internet users that this is a variant of the Complainant's domain name and is somehow associated with the Complainant.
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 this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has demonstrated that it has developed a very substantial reputation and goodwill 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 that the Respondent has not provided any explanation for its registration of a domain name incorporating the Complainant's mark, nor has it explained its commercial and competing use of the Disputed Domain Name.
In view of the Panel's findings below concerning bad faith the Panel agrees that the Respondent has no rights or legitimate interests in the Disputed Domain Name and therefore finds that the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
By the time that the Respondent registered the Disputed Domain Name in 2012, the Complainant had, as noted above under the second element, been operating its adult entertainment service from its website "www.xnxx.com" for many years to the point that it has recently been identified as being the the 102nd most visited website globally and 108th in the United States. In these circumstances and considering the competing nature of the Respondent's website at the Disputed Domain Name and the fact that the Disputed Domain Name only differs from the Complainant's mark by one word, the Panel infers that on the balance of probabilities the Respondent chose to register the Disputed Domain Name with knowledge of the Complainant's website and mark and therefore in bad faith.
The Panel finds that the Disputed Domain Name is being used by the Respondent to resolve to a website that directly competes with the Complainant's website and also features competing third party links. Under paragraph 4(b)(iv) of the Policy the Panel finds that the Respondent has used the Disputed Domain Name to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of the website in terms of paragraph 4(b)(iv) of the Policy and in order to divert Internet users for its own commercial purposes.
Accordingly, the Panel finds that the Respondent both registered and used the Disputed Domain Name in bad faith and the Complaint also succeeds under this 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 <xnxxnow.com> be transferred to the Complainant.
Date: June 10, 2014