WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WGCZ S.R.O. v. Registration Provate, Domains By Proxy, LLC / Rafael Santos
Case No. D2017-1870
1. The Parties
The Complainant is WGCZ S.R.O. of Miami, Florida, United States of America (“United States”), represented by Fischer Law, P.L., United States.
The Respondent is Registration Provate, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Rafael Santos of Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <xvideored.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2017. On September 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2017, 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 October 3, 2017 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 October 12, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on November 10, 2017. 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
Since 2006, the Complainant and its predecessors have operated an adult website known as “XVIDEOS”, located at “www.xvideos.com”. The site achieves approximately 4.4 billion page views per month and is currently ranked as the 45th most-visited website in the world according to Alexa.com.
The disputed domain name was registered on December 3, 2016.
The Complainant owns United States trade mark no. 4341707 for XVIDEOS, filed September 11, 2012, and registered May 28, 2013, in class 41. This trade mark claims a first use date of August 20, 2006.
The Complainant also owns European Union trade mark no. 11945821 for XVIDEOS, filed July 1, 2013, and registered November 26, 2013, in class 41.
The disputed domain name has been used for a website branded “XVIDEO RED”, displaying adult videos and advertisements.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant has extensive common law rights in the XVIDEOS mark, which arose before the Respondent registered the disputed domain name.
The disputed domain name is confusingly similar to the Complainant’s mark, merely deleting one letter “s” and adding the word “red”.
The Respondent lacks rights or legitimate interests in the disputed domain name. It has been used to provide services directly competitive with those offered by the Complainant.
The Respondent is not making legitimate noncommercial or fair use of the disputed domain name, which is being used commercially.
There is no evidence that the Respondent is commonly known by the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith.
Immediately after registering the disputed domain name, the Respondent launched a website which mimicked the Complainant’s website and offering identical services.
The Respondent intended to disrupt the Complainant’s business and to divert traffic from the Complainant’s website by creating a likelihood of confusion on the part of consumers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark XVIDEOS by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive worldwide use of that name.
The disputed domain name differs from the Complainant’s trade mark only by changing “videos” to the singular “video” and adding the descriptive term “red”.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
In the Panel’s view, the Complainant’s trade mark is readily recognisable within the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trade mark and the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the panel stated that:
“… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Clearly the Respondent registered the disputed domain name with the Complainant in mind. Not only does the Respondent offer identical services to the Complainant, namely adult videos, the Respondent’s website is strikingly similar to the Complainant’s own site. For example, the Respondent’s logo is in the same location as that of the Complainant, using an identical font and colour scheme: red and white lettering on a black background.
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element 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 <xvideored.com> be transferred to the Complainant.
Date: November 23, 2017