WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NKL Associates S.R.O. v. Web Manager, EUMedia
Case No. D2020-0417
1. The Parties
The Complainant is NKL Associates S.R.O., United States of America (“United States”), represented by Fischer Law, P.L., United States.
The Respondent is Web Manager, EUMedia, Belgium.
2. The Domain Name and Registrar
The disputed domain name <xnxx3.com> is registered with Rebel Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2020. On February 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26 and 27, 2020, the Complainant submitted two amended Complaints respectively. On March 2, 2020, 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 4, 2020, 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 6, 2020.
The Center verified that the Complaint together with the amended Complaints 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 March 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on April 3, 2020. 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 present owner and operator of a website at “www.xnxx.com” which provides adult entertainment services under the trading styles XNXX.COM and XNXX. The domain name for the Complainant’s website was registered in February 2002 and the website has been continuously used in connection with the provision of adult entertainment services since 2002. The Complainant has produced an article which suggests that its website is now the sixth most popular pornography website in the United States, as well as other data which indicates that it is the 181st most visited website globally.
A number of trade marks, now owned by the Complainant, have been registered to protect its trading style, including:
- United States Service Mark, registration number 4,363,782 for XNXX.COM in class 41. This mark was registered on July 9, 2013;
- European Union Trade Mark, registration number 011946134 for XNXX (figurative), registered on November 26, 2013.
The disputed domain name was registered on July 22, 2006. As at February 2009 it resolved to a directory page containing links both adult-related and other services. As at October 2019 it resolved to a directory page containing links to purely adult-related services together with a notice indicating that the disputed domain name might be for sale.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to its XNXX.COM trade mark. In addition to its registered rights, the Complainant has extensive common law rights in its trade mark that had been acquired prior to the Respondent’s registration of the disputed domain name. The XNXX.COM mark has been in use since as early as June 2002, as evidenced by screen prints obtained from Archive.org’s Wayback Machine.
Moreover, evidence from Google Trends shows that, from 2004, there was a steady rise in Internet user interest in the terms “xnxx.com” and “xnxx”, with interest in “xnxx.com” increasing at a greater rate than “xnxx”. This shows that Internet users were looking for the Complainant’s website specifically rather than as a “xnxx” term for adult videos. Accordingly, the Complainant’s rights predate the Respondent’s registration of the disputed domain name. In addition, the Complainant’s rights in the XNXX.COM mark have been recognized by earlier panels under the Policy, namely in WGCZ S.R.O. v. WhoIsProtectService.net / Ivan Makarov, WIPO Case No. D2014-0468; WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / AVO Ltd AVO Ltd, WIPO Case No. D2014-0545 and NKL Associates S.R.O. v. Ivan Misheveckiy, WIPO Case No. D2015-0495.
The disputed domain name is legally identical to the Complainant’s XNXX trade mark, merely adding a “3” after it, to make it look like it is affiliated with the Complainant. This does not lessen the likelihood of confusion.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name has been used to provide links to services which are directly competitive to those offered by the Complainant, for which the Respondent is being compensated. Moreover, the Respondent is capitalizing on the fame of the Complainant’s trade marks in order to provide goods and services which compete directly with it. This does not amount to a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the disputed domain name; see Eveready Battery Company, Inc. v. Deborah R. Heacock, WIPO Case No. D2013-0463. There is no evidence which indicates that the Respondent is commonly known by the disputed domain name. Furthermore, because the disputed domain name is identical or confusingly similar to the Complainant’s trade mark, the Respondent is incapable of using it for a legitimate purpose. No facts exist that would lead a reasonable person to conclude that the Respondent has any rights or legitimate interests in the disputed domain name.
Lastly, the Complainant says that the Respondent registered and is using the disputed domain name in bad faith. The Complainant’s common law rights in its XNXX mark were well established in 2002 and the Complainant’s mark was well known by 2004. The Respondent would have been aware of the Complainant’s common law rights in its XNXX mark and the services offered under such mark when it registered the disputed domain name in 2006. The Respondent could not conceivably independently have come up with “xnxx3.com” as a domain name and coincidentally launched a site which contains links to the Complainant’s competitors. Accordingly, the Respondent’s registration in 2006 was undoubtedly in bad faith.
So far as bad faith use is concerned, the Respondent desired to disrupt the Complainant’s business and to divert Internet users. In 2006, after the Complainant’s website had garnered international acclaim, the Respondent began using the disputed domain name to provide links to competing services to those offered at “www.xnxx.com”. There is no question that this is bad faith use as the disputed domain name has always existed to poach Internet users from the Complainant’s website. The Respondent has therefore created a likelihood of confusion amongst the consuming public as to the source, sponsorship, affiliation or endorsement of its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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
The Complainant has provided details of the registered trade marks it owns for XNXX.COM and XNXX, including the marks in respect of which details are set out above, and thereby established its rights in them. The fact that these marks were registered after the disputed domain name is irrelevant in relation to the first element of the Policy; it is necessary only for the rights to be in existence at the time the Complaint was filed (see section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s trade marks, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The addition of the number “3” after “xnxx” does not prevent the disputed domain name from being found to be confusingly similar to the Complainant’s trade mark. In this respect, see section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s XNXX.COM trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
The evidence submitted by the Complainant provides a strong prima facie case that the use to which the Respondent has put the disputed domain names is both commercial in character and not bona fide, in that the Respondent is seeking to misleadingly divert Internet users seeking the Complainant’s services to a website from which it derives some form of pay-per-click (“PPC”) revenue or commission. As explained at section 2.9 of the WIPO Overview 3.0, panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links, as is the case here, compete with or capitalise upon the reputation and goodwill of a complainant’s trade mark.
There is no evidence that the Respondent has been commonly known by the disputed domain name, or that it has made a legitimate noncommercial or fair use of the disputed domain name.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Before turning to an evaluation of the third element of the Policy, the Panel notes from the previous decisions under the Policy cited by the Complainant that the website presently operated by the Complainant at “www.xnxx.com” has previously been owned by a number of different parties. However, this domain name has been continuously used in order to resolve to a commercial website offering adult services and the changes in ownership of this domain name are not material to the issues which fall for determination.
The disputed domain name was registered on July 22, 2006, approximately seven years before the first of the trade marks now owned by the Complainant was registered. Accordingly, for the purpose of considering bad faith registration, the Complainant needs to demonstrate, on a balance of probabilities, that the repute of the website at “www.xnxx.com” and the marks XNXX/XNXX.COM was sufficiently established that the Respondent was aware of those rights and registered the disputed domain name in order to take unfair advantage or otherwise abuse the Complainant’s rights.
In this respect, the Complainant relies, first, on screen prints of its website as at June 2002 and June 2004 which show that, on these dates, the website was offering a wide variety of adult-related content, branded either XNXX or XNXX.COM. As it is not possible to derive any information from this evidence as to the popularity of the website as at the date of registration of the disputed domain name in July 2006, this evidence is of marginal value.
Second, the Complainant has produced data from Google Trends relating to the popularity of the search terms “xnxx” and “xnxx.com” for the period January 2004 to January 2007. However, this data does not comprise information about the actual number of searches made, but simply the extent to which the search term has varied in popularity for the relevant period. So, it provides no information about the repute of Complainant’s website. The Google Trends data also provides some details about the most popular related search engine queries, which are for search terms such as “xnxx movies” and “xnxx free porn”. Again, this data is not quantified in absolute terms, and it is not therefore possible to extrapolate from it any information about the popularity of the Complainant’s website for the period in question.
Third, the Complainant relies on the low probability of the Respondent having registered the disputed domain name whilst unaware of the Complainant’s website, having regard to the fact that term “xnxx” is distinctive and that the disputed domain name simply adds a “3” to it. On balance, the Panel agrees; it is inherently implausible that the Respondent conceived of the disputed domain name independently of the website operated at “www.xnxx.com” by the Complainant’s predecessor-in-interest or by the Complainant (and, currently the Complainant’s website). This view is reinforced by the fact that the Respondent has simply used the disputed domain name to resolve to a directory page containing links to the Complainant’s competitors. Moreover, it has not sought to challenge the Complainant’s assertions. On balance, the Panel is therefore satisfied that the Respondent registered the disputed domain name in order to take unfair advantage of the Complainant’s rights.
Whilst the use of a domain name to point to parking pages hosting PPC sponsored links is not inherently objectionable, it has been well established in previous decisions under the Policy that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it points are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.
The circumstances of the Respondent’s use of the disputed domain name are similar to those outlined in Yahoo! Inc. v. Hildegard Gruener, supra. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <xnxx3.com> be transferred to the Complainant.
Date: April 17, 2020