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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WGCZ S.R.O. v. WhoIsProtectService.net, Protectservice, Ltd. / Adam Hokke

Case No. D2015-0408

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 WhoIsProtectService.net, Protectservice, Ltd. of London, United Kingdom of Great Britain and Northern Ireland / Adam Hokke of Dronten, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <xvideonow.com> 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 7, 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 March 11, 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 11, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

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 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 9, 2015.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on April 15, 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 has submitted evidence that it is the owner of the following trademark registrations for XVIDEOS:

US trademark registration with registration No. 4,341,707, registration date May 28, 2013,first use on August 20, 2006 and first use in commerce on April 1, 2007.

European CTM trademark registration with registration No. 011945821 and registration date November 26, 2013.

The disputed domain name <xvideonow.com> was registered on April 16, 2012.

5. Parties' Contentions

A. Complainant

The Complainant owns and operates the website "www.xvideos.com" and the domain name <xvideos.com> was registered by the Complainant's predecessor-in-interest on August 20, 2006. The Complainant has been using the XVIDEOS mark in international commerce in connection with adult entertainment services on the Internet since 2007. The Complainant has both acquired registered trademark rights and developed extensive common law trademark rights in the XVIDEOS mark. The common law rights are extensive and evidenced by the granting of the registered rights under Section 2(f) of the US Trademark Act.

The XVIDEOS trademark has achieved secondary meaning both in the press and in the relevant marketplace. The Complainant's website is currently one of the most popular adult entertainment websites in the world. The strength of the XVIDEOS mark is further evidenced by the sheer volume of traffic it receives. The site has been continuously operated by the Complainant or its predecessors-in-interest since 2007 and it receives approximately 4.4 billion page views per month, which is three times the number of views received by numerous other world-famous Internet sites, including "cnn.com" and "espn.com". The site also has over 350 million unique visitors every month, which is more than the population of the entire United States. According to Alexa Internet, the company that tracks global website traffic, "www.xvideos.com" is currently the forty-third most visited site globally and the 45th most visited site in the United States.

The Complainant's rights to the XVIDEOS mark predate the registration date of the disputed domain name.

The disputed domain name is legally identical to the Complainant's trademark, merely deleting one letter from the mark and adding the word "now" after it. Adding a common term to a registered trademark does nothing to lessen the likelihood of confusion created by the disputed domain name. Furthermore, for purposes of establishing likelihood of confusion, the difference between a plural or singular form is negligible.

The disputed domain name has been used to provide services directly competitive with those offered by the Complainant. The website to which the disputed domain name resolves provides the same kind of adult videos that can be found on the Complainant's website "www.xvideos.com". 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 not making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent is using the disputed domain name for a commercial purpose, as its website contains advertisements and links to third party websites that compete with Complainant. The Respondent is undoubtedly compensated for those links and advertisements.

The Respondent registered the disputed domain name to profit from the goodwill of the Complainant's trademark XVIDEOS. The registration occurred long after the Complainant began use of the mark and accrued common law rights. After registering the disputed domain name, all available evidence indicates that the Respondent's website immediately offered adult entertainment services identical to those provided by the Complainant and continues to do so to this day.

No evidence indicates that the Respondent is commonly known by the disputed domain name. The Respondent was undoubtedly aware of the Complainant's XVIDEOS mark 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 then immediately launched a website that mimicked the Complainant's website, which had been in operation for six years. 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 the disputed domain name. Thus, the Respondent registered the disputed domain name for the purpose of redirecting users from the Complainant's website and profiting from their confusion.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

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

(ii) that the Respondent has no rights or legitimate interests in 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, according to the submitted evidence, the owner of the registered trademark XVIDEOS. In addition, it has been argued by the Complainant that it has asserted common law trademark rights in the mark XVIDEOS and the Complainant has also submitted evidence to support the claim. Previous UDRP panels have recognized that the XVIDEOS mark has developed sufficient renown and goodwill through use as to qualify as a relevant unregistered right for the purposes of the Policy. See Copypaste Ltd. v. Fonco Trading Services, WIPO Case No. DCO2012-0019, WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / Jose Rodriguez, WIPO Case No. D2014-0550 and WGCZ S.R.O. v. WhoIsProtectService.net Protect service, Ltd. / AVO Ltd, WIPO Case No. D2014-0549. Based upon the above, the Panel accepts that the Complainant has, since its commencement of use in 2007, developed a reputation for its mark and website at the domain name <xvideos.com>.

The disputed domain name <xvideonow.com> incorporates the Complainant's trademark XVIDEOS in its entirety except for the common plural signifier "s". Furthermore, the disputed domain name contains the addition of the common word "now". The addition of the word "now" in the disputed domain name makes little, if any, difference in the similarity and identity analysis.

Having the above in mind, the Panel concludes that the disputed domain name <xvideonow.com> is confusingly similar to the Complainant's trademark XVIDEOS and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or

(iii) that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has not licensed or otherwise consented to the Respondent's use of the trademark XVIDEOS in connection with the disputed domain name <xvideonow.com>, which is confusingly similar to the Complainant's trademark.

The evidence in the case indicates that the disputed domain name has been used by the Respondent to provide services directly competitive with those offered by the Complainant. Furthermore, the Respondent's website contains advertisements and links to third party websites that compete with the Complainant's business. There is no evidence indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute.

Although given the opportunity, the Respondent has not rebutted the Complainant's prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name. In addition, there is no evidence indicating that the Respondent intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Complainant has submitted evidence indicating that the Respondent registered the disputed domain name <xvideonow.com> after the Complainant had established common law rights to the trademark XVIDEOS. Furthermore, the submitted evidence indicates that the Respondent, shortly after having registered the disputed domain name, created a website very similar to the Complainant's website.

Thus, the evidence in the case before the Panel indicates that the disputed domain name <xvideonow.com> has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

There is no evidence in the case file that refutes the Complainant's submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <xvideonow.com> has been registered and used in bad faith.

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 <xvideonow.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: April 24, 2015

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