WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WGCZ S.R.O. v. Kadu Norfox
Case No. D2015-0406
1. The Parties
The Complainant is WGCZ S.R.O. in care of and represented by Randazza Legal Group, United States of America.
The Respondent is Kadu Norfox of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <xvídeos.net>1 is registered with eNom (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 the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on April 9, 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 Complainant owns and operates the domain name <xvideos.com> and is registered owner of the following trademarks for the word XVIDEOS in class 41 for “Entertainment services, namely, providing a website featuring photographic, audio, video and prose presentations featuring adult-oriented subject matter”:
- United States trademark with number 4,341,707 which was filed on September 11, 2012 and registered on May 28, 2013; and
- Community Trademark with number 011945821, registered on November 11, 2013. (collectively referred to as the “Trademarks”).
Respondent registered the disputed domain name on June 13, 2013.
5. Parties’ Contentions
The Complainant claims to own the Trademarks and to operate the domain name <xvideos.com>, which it has used at least since 2006 in connection with the provision of adult entertainment services on the World Wide Web. As a result of intensive use, the Complainant claims common law trademark in the term “XVIDEOS”, which has achieved secondary meaning both in the press and in the relevant marketplace. The Complainant’s web site at “www.xvideos.com” is currently one of the most popular adult entertainment web sites in the world, and has received unsolicited media coverage establishing as much. This website, as it currently exists, has been continuously operated by the Complainant or its predecessors-in-interest since 2007, and receives approximately 4.4 billion page views per month and over 350 million unique visitors every month. The Complainant’s registered rights pre-date the Respondent’s first registration of the disputed domain name by over one year, and the Complainant’s common law rights pre-date the Respondent’s registration by over seven years. The Complainant alleges that the disputed domain name is legally identical to the Trademarks and the Complainant’s common law trademark, containing almost the entirety of the Trademarks (with the omission of the letter “i”), and adding a seemingly random assortment of letters and hyphens, as well as “.net”. Minor misspellings of a mark do not mitigate a likelihood of confusion.
The Complainant further claims that registration and use of a domain name in bad faith cannot establish rights or legitimate interests. The Respondent will be unable to provide concrete evidence that it has legitimate rights or a legitimate interest in the domain. The disputed domain name has been used to provide services directly competitive with those offered by the Complainant, as the website under the disputed domain name provides the same kind of adult videos that can be found on the Complainant’s website under the Trademarks and contains links to third party websites that compete with the Complainant. 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 profiting financially from the disputed domain name, and chose the disputed domain name to profit from the goodwill of the Trademarks. The Respondent cannot claim any legitimate right to the disputed domain name based on familiarity with either the general public or the relevant market. No evidence indicates that the Respondent is commonly known by the disputed domain name.
The Respondent registered the disputed domain name in bad faith because the Complainant’s mark XVIDEOS was well known in 2006, and it had become both registered in the United States and internationally recognized by 2013. Any claim by the Respondent that it was not aware of the Complainant’s mark when it registered the disputed domain name is not credible. The Respondent was undoubtedly aware of the Trademarks 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 and then used it to operate a website that mimicked the Complainant’s website, which had been in operation for over seven years. The Respondent has blatantly stolen the layout and even the logo of the Complainant’s website, indisputably showing an awareness of the Complainant’s rights.
The Respondent also used the disputed domain name in bad faith as it hoped to create a likelihood of confusion amongst the consuming public as to the source, sponsorship, affiliation, or endorsement of the website under the disputed domain name. The Complainant argues that the Respondent’s intent is obvious, given that the Respondent is using a website that is practically identical to the Complainant’s website in content and services provided, and has even stolen the layout and logo of the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the 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 Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established that the generic Top-Level Domains (“gTLDs”) may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD “.net”.
The Panel finds that the disputed domain name is confusingly similar, if not identical, to the Trademarks. The Respondent has taken the Trademarks in their entirety and merely replaced the “ï” in a “í”, which does not distinguish the disputed domain name from the Trademark. Such replacement of one letter, which consists of nothing more than adding an accent to the letter “I” can be considered typosquatting because the disputed domain name is likely to create confusion due to its visual similarity with the Trademarks (e.g. Autogrill Retail UK Limited v. Hongjun Technology Ltd. / John Li, WIPO Case No. D2011-1204).
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant has shown that it has not authorized the Respondent to use the Trademarks, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name in light of the fact that the website at the disputed domain name offers links to adult entertainment in direct competition with the services offered by the Complainant under the Trademarks.
The Panel is therefore satisfied that the Complainant has made a prima facie case, which the Respondent has not rebutted. As a result, the Panel finds, also taking in consideration the factual circumstances discussed below, that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
On the basis of the information provided in the Complaint, the Panel agrees with other panels who decided cases under the UDRP that involved the Complainant and its Trademarks, including WGCZ S.R.O. v. Worldwide Media, Inc., WIPO Case No. D2014-0428 and WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / Andrey Kuzmenko, WIPO Case No. D2014-1377, that the XVIDEOS marks already had a strong reputation worldwide in June 2013, when the Respondent registered the disputed domain name. In the Panel’s view, it is obvious that the Respondent at that time it registered the disputed domain name must have had the XVIDEO marks in mind as Complainant’s website had been active for many years, and Respondent has not denied the Complainant’s allegation that it has mimicked the Complainant’s website, using the Complainant’s layout and logo. The Complainant further established that the Respondent used, and still uses the website under the disputed domain name to offer links to adult entertainment in direct competition with the Complainant’s similar services under the Trademarks.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <xvídeos.net> be transferred to the Complainant.
Date: April 21, 2015
1 ASCII format: <xn--xvdeos-4va.net>.