WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NKL Associates S.R.O. v. WhoIsProtectService.net Protectservice Ltd / AVO Ltd
Case No. D2015-0322
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.
The Respondent is WhoIsProtectService.net Protectservice, Ltd. of London, United Kingdom of Great Britain and Northern Ireland / AVO Ltd. of Mahe, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <xnxxfree.net> is registered with EvoPlus Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2015. On February 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 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 9, 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 16, 2015.
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 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2015.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on May 18, 2105. 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 is the owner of the following trademarks:
- XNXX.COM, United States Patent and Trademark Office (USPTO) service mark with registration No. 4,363,782, filed on September 18, 2012, with first use in commerce June 1, 2004, and registered in class 41.
- XNXX, Community trademark with registration No. 011945821, filed on July 1, 2013, and registered in class 41.
The disputed domain name <xnxxfree.net> was registered on October 9, 2012.
According to the disclosed information about the disputed domain name and its registrant, AVO Ltd. is considered to be the actual Respondent.
5. Parties’ Contentions
The 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 Internet.
Common Law Rights
The Complainant has extensive common law rights in the XNXX.COM mark that commenced at least since 2004 and the use of the mark has been extensive since 2004. The Complainant is one of the most popular adult entertainment websites in the world. The domain name of the Complainant, <xnxx.com>, is currently the 118th most visited website globally which clearly demonstrates the establishment of common law rights beginning in 2004.
Identical or confusingly similar
The disputed domain name is identical or confusingly similar to the Complainant’s mark. The adding of the word “free” does nothing to lessen the likelihood of confusion created by the domain name. Further, it is well-settled that the addition of the generic Top-Level Domain (gTLD) “.net” does not create a distinct mark capable of overcoming a claim of identity or confusing similarity.
A side-by-side comparison of the Complainant’s website and the Respondent’s website clearly indicates that the Respondent deliberately attempts to create a likelihood of confusion.
Rights or Legitimate Interests
The disputed domain name has been used to provide services directly competitive with those offered by the Complainant. Capitalizing on the fame of a mark 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 website of the disputed domain name does also contain links to third party websites that compete with the Complainant. The Respondent has chosen the disputed domain name to profit from the goodwill of the Complainant’s mark. After the registration of the disputed domain name, the Respondent immediately offered adult entertainment services identical to those provided by the Complainant, and continues to do so to this day. The Respondent uses a logo on the website to the disputed domain name that bears a striking similarity to the logo used by the Complainant on the website “www.xnxx.com”; the font, color, and background of the two logos are nearly identical.
The Respondent has no rights or legitimate interests in respect to the disputed domain name. It is inconceivable that the Respondent has any legitimate argument as to why it registered the disputed 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.
Registered and Used in Bad Faith
The Complainant has both registered and is using the disputed domain name in bad faith. The Complainant’s mark was well known in 2004, and it had both accrued federal trademark rights with the USPTO and become internationally recognized by 2012.
After the registration of the disputed domain name, the Respondent immediately launched a website that mimicked the Complainant’s website, which had been in operation for over eight years.
The Respondent desired to disrupt the Complainant’s business and to divert Internet traffic away from the Complainant’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website of the disputed domain name. The Respondent is also using the disputed domain name to provide the exact services offered on the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of 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 the holder of two registered marks involving XNXX.COM and XNXX. The disputed domain name consists of the word “xnxx” and incorporates the word “free” with the addition of the gTLD “.net”. According to the well established consensus among UDRP panels, the gTLD is generally not distinguishing.
The Panel finds that “xnxx” is the distinctive part of the disputed domain name, and the addition of the generic word “free” is not sufficient to avoid Internet users’ confusion in relation to any of the Complainant’s marks. The addition of the word “free” is more likely to increase confusion to customers and does not impact the overall impression of the disputed domain name.
Consequently, the Panel finds the disputed domain name to be confusingly similar to both the marks in which the Complainant has rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name. Based on this assertion, the Panel concludes that no permission has been given by the Complainant to the Respondent to register the disputed domain name.
Having considered the submissions of the Complainant, and the absence of a Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use any of the Complainant’s marks in the disputed domain name. Nor does the Panel find any indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complainant’s allegations. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Panel notes that the Complainant applied for registration of its XNXX.COM mark in the United States of America before the registration of the disputed domain name; the Panel also finds that XNXX is the distinctive part of the US mark. Further, the Panel notes that the Complainant’s marks are not protected by registration in the Respondent’s country, which is the Seychelles.
The Complainant has alleged that the Respondent after the registration of the disputed domain name immediately launched a website similar to the Complainant’s website <xnxx.com> and offered the same services as the Complainant, and also that the Respondent has desired to disrupt the Complainant’s business and to divert Internet traffic away from the Complainant’s website. These allegations are uncontested.
The Panel concludes that the Policy does not require the Complainant’s rights to be protected in the Respondent’s country; however the Complainant is still required to prove that the disputed domain name has been registered and is being used in bad faith by the Respondent.
Having regarded these facts and allegations, the Panel finds the following. The disputed domain name is considered as confusingly similar with the Complainant’s marks. It is most probable that the Respondent has selected the disputed domain name with knowledge of the Complainant’s marks rights and business. The disputed domain name resolves to a website which from the start uses an almost identical logo and a similar design as the Complainant’s website at “www.xnxx.com”. The Respondent must also be considered as a direct competitor to the Complainant. It is clear that the Respondent’s intention has been to attract Internet users to the website at the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source or endorsement of the Respondent’s website.
Overall, the Panel finds that the disputed domain name has been registered and used in bad faith. The third and final element of the Policy is fulfilled.
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 <xnxxfree.net> be transferred to the Complainant.
Date: June 1, 2015