WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TMD Swiss AG v. Privacy service/ Litterate Ario
Case No. D2021-0982
1. The Parties
The Complainant is TMD Swiss AG, Switzerland, represented by Merk-Echt B.V., Netherlands.
The Respondent is Privacy Service/ Litterate Ario, Italy.
2. The Domain Name and Registrar
The disputed domain name <sexlovecam.live> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2021, 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 April 12, 2021 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 amendment to the Complaint on April 13, 2021.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 15, 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.
Having reviewed the case file, the Panel noted that while the Complainant had provided evidence of the use of the disputed domain name, it had not put forward information as to how the Complainant’s mark XLOVECAM is used. This led the Panel to issue a Procedural Order on August 2, 2021 in which the Complainant was invited to provide suitable evidence of its use of the XLOVECAM mark by August 8, 2021 and the Respondent was invited to comment thereon by August 11, 2021, if it wished to do so. The Procedural Order also extended the Decision due date until August 18, 2021. The Respondent provided comments on August 4, 2021. The Complainant provided its response on August 6, 2021.
4. Factual Background
The Complainant appears to be an entity based in Switzerland which provides adult website services, including a website at “www.xlovecam.com”. According to information on the Complainant’s said website, it was launched in 2006, and is one of Europe’s most popular adult entertainment platforms which mediates between visitors looking for live adult content and some 400,000 online webcam models, both amateur and professional, of whom up to 1,200 are online at any time. Said site claims more than one million visits per day from users all over the world, together with 25,000 available videos. Said site also displays numerous adult industry awards in respect of both the Complainant’s web platform and its “Xlovecash” affiliate program (including, for example, “Best European Cam Site” at the 2020 Lal EXPO Awards and “Best Live Cam Affiliate Tools” at the 2020 LiveCam Awards). The Complainant’s various listed industry awards date back to 2015.
The Complainant is the owner of European Union Registered Trademark No. 005506241 in respect of the word mark XLOVECAM, registered on October 17, 2007 in class 38 (broadcasting, dissemination and transmission of visual images, audio information, graphics, data and other information, using radio, telecommunications apparatus, electronic media, or the Internet).
The decisions in AC Webconnecting B.V. v. Virtual Media Entertainment, WIPO Case No. D2010-0994 in respect of the domain name <xlovecamblog.com>, AC Webconnecting B.V. v. SC VIRTUAL MEDIA SRL, WIPO Case No. DRO2010-0001 in respect of the domain name <xlovecam.ro>, TMD Swiss AG v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Urucu Costinel Laurentiu, WIPO Case No. D2016-1289 in respect of the domain name <xlovegirls.com>, and TMD Swiss AG v. Whoisguard Protected, Whoisguard, Inc. / Viacheslav Kononov, WIPO Case No. D2016-1548 in respect of the domain name <xlovecam-en-ligne.com> indicate that the Complainant and its predecessors in title have used the term “xlove” and the XLOVECAM trademark for adult websites since at least 2010.
The disputed domain name was registered on July 30, 2020. Little is known regarding the Respondent which did not take the opportunity to provide a formal Response to the Complaint, although, as noted below, it provided a brief comment in response to the Procedural Order. The website associated with the disputed domain name appears to host webcam-based pornographic content. The title of the homepage is “SEXloveCAM | Live Sex Webcams”. However, the wording in the site’s logo, which appears prominently in the top left of the website, is displayed in a different format. This consists of a webcam symbol in black, followed by the letters “se” in white, then the capital letter “X” in black, then the words “lovecam” in white, together making up the word “seXlovecam”.
5. Parties’ Contentions
The Complainant’s submissions are extremely brief and may be set out more or less verbatim:
Identical or confusingly similar
The Complainant is the holder of the XLOVECAM trademark. A description of the services is specified in the registration. The disputed domain name only differs by the two characters “se” and the complainant's trademark is fully incorporated therein. The suffix “.live” should be concluded [sic] from consideration. Consequently, the disputed domain name is confusingly similar to the complainant's trademark.
Rights or legitimate interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not obtained any authorization to use the Complainant’s XLOVECAM trademark. The use of the disputed domain name cannot be considered as a legitimate noncommercial or fair use, considering the Respondent has no legitimate rights, other than commercial gain.
Registered and used in bad faith
By using the disputed domain name, the Respondent has intentionally created a likelihood of confusion, resulting in attracting the Complainant's customers to their website as a direct competitor of the Complainant.
In response to the Procedural Order, the Complainant contends as follows:
The website "www.xlovecam.com" is one of Europe’s most popular platforms for adult entertainment, active since 2006. The website has more than one million visits every day from all over the world and shows 25,000 simultaneous videos. The website received several awards and nominations, including for Best European Camsite and Best Live Cam Revenue Program.
By way of supporting evidence, the Complainant provided links to the said website providing details of the awards received both for the online platform and its affiliate program, together with information as to the platform itself.
The Respondent did not reply to the Complainant’s contentions. However, in an informal response to the Procedural Order, the Respondent stated that it considered that the disputed domain name was not related to <xlovecam.com> (i.e., the Complainant’s domain name). The Respondent acknowledged that it could be considered similar but added that “it is not their brand”. The Respondent noted that it had put a “cam whitelabel” over the disputed domain name, adding that it had no sales because the “whitelabel” does not generate traffic.
6. Discussion and Findings
To succeed in its Complaint, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied for the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 first element assessment under the Policy consists of two aspects. First, the Complainant must show that it has UDRP-relevant rights in a trademark. Secondly, any such trademark is compared to the disputed domain name, typically on a straightforward, side-by-side basis, to determine identity or confusing similarity. The generic Top Level Domain (“gTLD”) (in this case “.live”) is typically disregarded during the comparison exercise as being required for technical purposes only.
In the present case, the Panel is satisfied that the Complainant has UDRP-relevant rights in its XLOVECAM registered trademark. Turning to the comparison exercise, it may be seen that the second level of the disputed domain name incorporates the XLOVECAM trademark in its entirety, in an alphanumerically identical fashion to the Complainant’s mark although prefixed with the additional letters “se”. Where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for the purposes of the first element assessment (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The prefixed letters “se” would not prevent a finding of confusing similarity under the Policy (see section 1.8 of the WIPO Overview 3.0). In these circumstances, the Complainant’s mark can readily be recognized in the disputed domain name.
The Panel is mindful of the fact that the second level of the disputed domain name may alternatively be read as consisting not of the letters “se” followed by the Complainant’s mark but rather of three dictionary word elements, namely “sex”, “love”, and “cam” (the latter being a commonly used abbreviation of “camera” as in “webcam”). Viewed in this way, it could be argued that the Complainant’s mark is not especially recognizable because of the fact that it is split across the word elements and thus only appears on an incidental basis. It should be noted however that the word elements, if that is what they were intended to be, are not differentiated in the disputed domain name, for example by hyphens, but rather are all combined together. Furthermore, the Respondent did not argue for such an alternative reading in the comparison exercise within its submissions.
Nevertheless, in light of the potential tension between the two alternative readings of the disputed domain name, the Panel considers that this case presents one of the limited examples in which a panel may benefit from further affirmation as to the question of confusing similarity by considering the broader case context (see section 1.7 of the WIPO Overview 3.0). This context includes whether the website associated with the disputed domain name appears to be trading off the Complainant’s reputation.
In the section on rights or legitimate interests below, the Panel discusses the configuration and appearance of the Respondent’s “seXlovecam” logo on the website associated with the disputed domain name. This logo does not encourage the reading of the disputed domain name as three separate dictionary words and, on the contrary, seems calculated to emphasize its similarity to the Complainant’s mark. The Panel therefore considers that it is appropriate to view the website associated with the disputed domain name as intentionally referencing such mark in its logo in order to trade off the Complainant’s reputation. This fortifies the Panel in its original conclusion that the Complainant’s mark is recognizable in the disputed domain name according to the typical side-by-side comparison process. The Panel moreover notes that while typically the gTLD is disregarded for such comparison purposes, the use of the “.live” gTLD here also serves to reinforce a conclusion that the Complainant’s mark is being targeted by the disputed domain name (given that the Complainant provides live webcam content) and hence, of confusing similarity.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made out, the burden of production shifts to the respondent to bring forward appropriate allegations and/or evidence demonstrating its rights or legitimate interests in the domain name concerned.
Although its submissions are somewhat perfunctory, the Complainant has made out the requisite prima facie case in the Panel’s opinion. The Complainant asserts that it has not provided the Respondent with any authorization to use the Complainant’s XLOVECAM trademark and notes that the disputed domain name is being used for commercial gain rather than in respect of a legitimate, noncommercial or fair use.
No formal Response has been filed by the Respondent in rebuttal of such prima facie case. In its equally perfunctory response to the Procedural Order, the Respondent does not set out any substantive case in rebuttal. It does not, for example, point to any aspects of paragraph 4(c) of the Policy in respect of a claim to rights or legitimate interests in the disputed domain name. Instead, the Respondent merely notes that it considers the disputed domain name not to be related to the Complainant’s <xlovecam.com> domain name. It is of some significance to the Panel that the Respondent chose to reference the Complainant’s domain name here rather than its trademark. Such domain name was not in fact specifically discussed in the Complaint, nor was it mentioned in the Procedural Order. The Respondent chose to respond early to the Procedural Order, on August 4, 2021. At that time, it did not have the detailed information and links regarding the Complainant’s website and domain name which the latter supplied on August 6, 2021. By referencing the Complainant’s <xlovecam.com> domain name in these circumstances, therefore, the Respondent indicates that it was already aware of the Complainant, its brand, and its online activities. Such awareness is perhaps not altogether surprising, given the material ultimately provided by the latter, which demonstrates its reputation, the length and manner of use of the Complainant’s mark in connection with its domain name and website, together with number of corresponding awards which the Complainant has won since 2015.
The Respondent’s reference to the Complainant’s website tends to suggest that it did not create the disputed domain name independently of the Complainant’s brand and trademark merely because it consists of three dictionary word elements. Had this been the Respondent’s intent, the Panel would have expected it to say so unequivocally, and to argue that the disputed domain name was used in connection with the dictionary meaning of those words along the lines of section 2.10.1 of the WIPO Overview 3.0. Even had the Respondent made such an argument, the Panel would probably not have accepted this as credible due to the fact that the logo placed by the Respondent on the website associated with the disputed domain name strongly suggests that the Respondent is using this to reference the Complainant’s XLOVECAM trademark.
As noted in the factual background section above, the Respondent chose to deploy a non-standard capitalization in the form of “seXlovecam” in the logo for its website. The black color of the letter “X”, matching as it does the color of the webcam device at the beginning of the logo, makes this single letter stand out. The letters “se” lose prominence, being rendered in lower case and in the color white, inviting the viewer to read the capital “X” as the beginning of a word. The Panel does not believe that such capitalization would be chosen by someone relying on the dictionary phrase “sex love cam”. Instead, this logo encourages the viewer to focus on the presence of the Complainant’s trademark in the disputed domain name and, coupled with the “.live” gTLD, seems calculated to produce an association with it. Such a use would not give rise to rights and legitimate interests in the disputed domain name, whether under paragraph 4(c) of the Policy or otherwise.
In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the present case, the Panel has found in the preceding section that the Respondent most likely had knowledge of the Complainant when it registered the disputed domain name. The Respondent has in any event not sought to deny such knowledge, nor would any such denial necessarily have been credible if it had attempted to do so. The Parties appear to be in the same business, namely the promotion of webcam-related pornographic content. The Respondent has offered no alternative explanation for having placed what it describes as a “cam whitelabel” on the website associated with the disputed domain name. Furthermore, the Respondent appeared to know of the Complainant’s own domain name and the manner of use of its trademark before the Complainant had provided any details of this in response to the Procedural Order.
Even putting aside the way the logo is framed to create an apparent sense of affiliation with the Complainant, as is described above, it seems extremely unlikely to the Panel that in registering a domain name for the purposes of an adult webcam operation in July 2020, the Respondent would be unaware of a business such as the Complainant’s, given its apparent prominence in the adult entertainment business, as particularly exemplified in the numerous industry awards which it has received since at least 2015. Previous cases under the Policy, as listed in the factual background section above, provide further illustration of the fact that the Complainant and its predecessors in title have been active in this business since at least 2010.
If there was any doubt as to whether the Respondent was seeking to target the Complainant, (e.g., because of the presence in the disputed domain name of descriptive words related to the adult webcam industry), this is sufficiently dispelled by the manner in which the Respondent has designed its logo, which focuses on the presence of the Complainant’s trademark, not to mention the use of the “.live” gTLD which affirms a reference to the Complainant. The Respondent’s content appears to be of a commercial nature and, whether described as being in a “whitelabel” or not, would not support a claim of noncommercial use under the Policy. In any event, the Respondent has failed to supply any explanation which would suggest that it has a noncommercial or fair purpose, nor is any such purpose evident from the record before the Panel.
In these circumstances, the Panel finds that there is evidence that 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 such website. This constitutes registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy. The requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <sexlovecam.live> be transferred to the Complainant.
Andrew D. S. Lothian
Date: August 18, 2021