WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WGCZ s.r.o. v. Italo Fabris
Case No. D2016-1083
1. The Parties
Complainant is WGCZ s.r.o. in care of and represented by Marc Randazza, United States of America ("United States").
Respondent is Italo Fabris of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <xvideosxxx.club> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 31, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 24, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on July 1, 2016. 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
Complainant is a company organized under the laws of the Czech Republic that is active in the adult entertainment services business.
Complainant has provided evidence that it is the owner of the following registered trademarks relating to the term "xvideos":
- Word Mark XVIDEOS, United States Patent and Trademark Office (USPTO), Registration No.: 4,341,707, Registration Date: May 28, 2013, Status: Active;
- Word Mark XVIDEOS, European Union Intellectual Property Office (EUIPO), Registration No.: 011945821, Registration Date: November 26, 2013, Status: Active.
Complainant also owns and operates the domain name <xvideos.com> promoting pornographic content under the brand XVIDEOS.
The disputed domain name <xvideosxxx.club> was created on August 11, 2015. By the time of the rendering of this decision, it resolves to a website at "www.videosxx.club" that also provides pornographic content referring, inter alia, to the brand XVIDEOS.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties' Contentions
Complainant asserts to have made significant use since 2007 of the XVIDEOS trademark and that there was a steady rise in the use of the website under "www.xvideos.com" ever since that time, currently receiving approximately 4.4 billion page views per month.
Complainant suggests that the disputed domain name is identical or confusingly similar to Complainant's XVIDEOS trademark, as the disputed domain name includes the latter in its entirety, adding only the generic Top-Level Domain ("gTLD") ".club" and the letters "xxx".
Complainant also claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent offers the same adult entertainment video services as does Complainant, and even displays a logo that is in obvious counterfeit of Complainant's logo; (2) Respondent registered the disputed domain name long after Complainant accrued registered rights in the XVIDEOS mark and long after the XVIDEOS mark acquired international fame and; (3) Respondent obviously is profiting financially from the goodwill of Complainant's XVIDEOS mark which is virtually identical to the disputed domain name.
Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith by Respondent since (1) Respondent offers precisely the same services as Complainant, using a website with an extremely similar layout, color scheme and logo; and (2) Complainant's XVIDEOS trademark and the website at "www.xvideos.com" had garnered international acclaim before Respondent began using the disputed domain name for services nearly identical with those offered by Complainant which is why there is no question that Respondent registered and used the disputed domain name to profit from Internet user's confusion.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <xvideosxxx.club> is confusingly similar to the XVIDEOS trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the XVIDEOS trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a disputed domain name is at least confusingly similar to a registered trademark (see. e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the three letters "xxx" (which are even closely related to Complainant's core business as they are generally understood to mean pornographic or adult related content), is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant's XVIDEOS trademark in the disputed domain name. This finding proofs true also against the background that the disputed domain name includes the gTLD ".club"; there is a consensus view among UDRP panels that the applicable gTLD in a disputed domain name would usually be disregarded under the identity or confusing similarity test (see WIPO Overview 2.0, paragraph 1.2).
Therefore, the first element under the Policy set forth in paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant's undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial of fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant's XVIDEOS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name. Moreover, Respondent so far has neither made use of the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair use. On the contrary, Respondent apparently directed the disputed domain name to a website at "www.videosxx.club" displaying a modified version of Complainant's XVIDEOS logo and trademark and thereby offering pornographic content and services directly competing with those of Complainant.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, however, Respondent did not come forward with any reasonable explanations or contentions in reply to Complainant's allegations as they were included in the Complaint duly notified to Respondent by the Center on June 3, 2016.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain was registered and is being used by Respondent in bad faith.
Complainant contends, and Respondent has not challenged this contention, that the disputed domain name resolves to a website at "www.videosxx.club" that offers pornographic content and related services competing directly with those of Complainant, thereby even using a modified version of Complainant's XVIDEOS logo and trademark which is indicative of Respondent's knowledge of Complainant's XVIDEOS trademark by the time of registration and making use of the disputed domain name. The Panel, therefore, has no difficulty in finding that the disputed domain name was registered and is being used by Respondent intentionally attempting to attract, for commercial gain, Internet users to said website, by creating a likelihood of confusion with Complainant's XVIDEOS trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that also the third element under the Policy as set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all three requirements of paragraph 4(a) 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 <xvideosxxx.club> be transferred to Complainant.
Stephanie G. Hartung
Date: July 12, 2016