WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
xHamster IP Holdings Ltd v. Ton hope (佟西望)
Case No. D2020-3169
1. The Parties
Complainant is xHamster IP Holdings Ltd, Antigua and Barbuda, represented internally.
Respondent is Ton hope (佟西望), China.
2. The Domain Name and Registrar
The disputed domain name <xhamster.live> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On December 1, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on December 1, 2020. Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” o “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 in English and Chinese, and the proceedings commenced on December 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 19, 2021. 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 operates an Internet website offering adult content, which became the fourth most popular website of its kind in 2020. Complainant is the owner of the trademarks:
- Benelux trademark XHAMSTER, registration number 0986331, registered on December 3, 2015;
- Antigua and Barbuda trademark XHAMSTER, registration no. 9039, registered on November 3, 2015;
- European Union trademark number 018255445, registered on October 31, 2020.
Complainant first used the trademark incidental to registration of the domain name <xhamster.com> on April 2, 2007, which provides access to its service for users worldwide.
Respondent registered the Domain Name on January 19, 2017. The Domain Name resolves to a website with links which redirect users to sites featuring adult content. It also displays a link indicating that “The domain xhamster.live may be for sale”.
5. Parties’ Contentions
Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the XHAMSTER mark and owns domain names incorporating the XHAMSTER mark. Complainant contends that Respondent registered and is passively holding the Domain Name, which is identical to Complainant’s well-known mark, to confuse Internet users looking for bona fide and well-known XHAMSTER products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submits in its communication to the Center on December 1, 2020 and in the Complaint that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement is in Chinese.
Complainant contends that the Domain Name includes Latin characters. In addition, Complainant has presented evidence that the Domain Name resolves to a website that contains advertisements in English and redirects to other English websites and services. Complainant also contends that it would involve unfairly high costs and delay for Complainant to translate and conduct the proceedings in Chinese.
In exercising its discretion to use a language other than that of the outstanding subject registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Name was registered in characters using the Roman alphabet, and the Domain Name resolves to a website that features English terms and promotes content in English words.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate all case relevant documents into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the XHAMSTER mark, which have been registered since at least as early as 2015, well before Respondent registered the Domain Name on 2017 as noted above. Complainant has also submitted evidence, which supports that XHAMSTER is a widely known trademark and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the mark XHAMSTER. With Complainant’s rights in the XHAMSTER mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.live”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Name is identical and confusingly similar to Complainant’s XHAMSTER mark. This mark, which is fanciful and inherently distinctive, is completely incorporated in the Domain Name.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the XHAMSTER marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the XHAMSTER trademarks or to seek registration of any domain name incorporating the trademarks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a website that features third party sponsored links to adult content. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the XHAMSTER mark long predates the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide. Indeed, the record shows that Complainant’s XHAMSTER mark and related products are distributed worldwide and are widely known and recognized. Complainant also has trademarks that are registered in numerous countries, including China, where Respondent resides and operates.
Therefore, Respondent was likely aware of the XHAMSTER marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known XHAMSTER trademarks in its entirety, suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the XHAMSTER marks, in an effort to opportunistically capitalize on the registration and use of the Domain Name.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks.
As discussed above, the Domain Name resolves to a website with links which redirect users to sites featuring adult content. It also displays a link indicating that “The domain xhamster.live may be for sale”. Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of his website. Furthermore, such use by Respondent interferes with Complainant’s functions and activities, and may result in disrupting Complainant’s businesses.
In addition to the circumstances referred to above, Respondent’s failure to file a response is further indicative of Respondent’s bad faith.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under 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 <xhamster.live> be transferred to the Complainant.
Kimberley Chen Nobles
Date: March 5, 2021