WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
xHamster IP Holdings Ltd v. Domain Administrator, See PrivacyGuardian.org / Christakis Konnaris
Case No. D2021-1490
1. The Parties
The Complainant is xHamster IP Holdings Ltd, Antigua and Barbuda, internally represented.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Christakis Konnaris, Gibraltar, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <zooxhamster.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 25, 2021.
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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2021.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on June 21, 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
The following facts are undisputed.
The Complainant operates a website featuring adult entertainment accessible through “www.xhamster.com”. The Complainant is the owner of the domain name <xhamster.com>, which was registered in 2007. The website of the Complainant was in 2021 the fourth most popular pornography Internet website and the 20th most trafficked website in the world.
The Complainant is the owner of several trademark registrations, including but not limited to the European Union Trade Mark XHAMSTER (word mark), with registration number 018255445, with a filing date of June 17, 2020 and a registration date of October 31, 2020, for goods and services in class 9, 35, 38, 41, 42, and 45 (the “Trademark”). The Complainant contends that it first used the Trademark in 2007.
The Domain Name was registered on September 28, 2015, and resolves to an adult entertainment website, in particular featuring bestiality (the “Website”).
The Complainant has contacted the Respondent with a request to transfer the Domain Name to the Complainant. The Respondent did not respond to this request.
5. Parties’ Contentions
Insofar as relevant for deciding this matter, the Complainant contends the following.
The Domain Name is identical and confusingly similar to the Trademark as it consist of the word “zoo” and the Complainant’s trademark XHAMSTER. The addition of a generic Top-Level Domain (“gTLD”) is not considered to be a sufficient change to distinguish a domain name.
The Respondent has no rights or legitimate interest in the Domain Name. The Respondent is not known under by the Domain Name, nor is the Domain Name registered as a trademark. The Respondent has no bona fide offering of goods or services under the Domain Name as the Domain Name and Website operate in the same adult entertainment industry. The Respondent has never tried to contact the Complainant to become their affiliate or obtain their consent to use the Domain Name and Website.
The Domain Name was registered and has been used in bad faith. The Respondent was fully aware of the Complainant’s Trademark, noting that the Respondent refers to the Complainant’s Trademark on the Website. By the time the Domain Name was registered in 2015, the Complainant had been using the Trademark for several years and had already attracted over 10 million members. Also, the Respondent is using the Domain Name to derive commercial gain from those visiting the Website expecting to find the website of the Complainant or a website legally affiliated with it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
The Complainant has shown that it has rights in the Trademark in various jurisdictions, including the European Union.
As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “zoo”, the letter “x” and “hamster”. The combination of the letter “x” and the element “hamster” is identical to the Trademark. The element “zoo” is descriptive for the content of the Website. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the additional term does not prevent a finding of confusing similarity.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark.
Therefore, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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 Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that the term “zooxhamster” is the Respondent’s tradename or that the Respondent is commonly known under this name. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark. In fact, the Complainant has contacted the Respondent with a request to transfer the Domain Name, but without any further response from the Respondent.
Furthermore, the use of the Domain Name cannot be considered as a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Panel finds that the Respondent has intentionally registered the Domain Name for the purpose of making illegitimate or unfair use of the goodwill and reputation associated with the Trademark. This also becomes clear from the fact that the Respondent mentions the Trademark on the Website with references as “XHAMSTER Free Animal Porn Tube Videos” and “Zoo XXX by XHAMSTERCOM”. Especially with the last reference, the Respondent claims that the Website is from the Complainant and by this misleads Internet users that are actually looking for the website of the Complainant.
Accordingly, the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name. According to paragraph 2.5.3 of WIPO Overview 3.0, a respondent’s use of a complainant’s mark to redirect users to a competing site would not support a claim to rights or legitimate interests.
This is supported by the fact that the Respondent, although it has been contacted by the Center through various channels, has failed to submit a Response and therefore the allegations of the Complainant have been unrebutted.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
The Panel refers to its considerations under section 6.B and adds the following.
In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well-known throughout the world, including at the time the Domain Name was registered. Accordingly, in the Panel’s view, the Respondent must have been aware of the existence of the Complainant’s activities and rights at the time the Respondent registered the Domain Name.
Also, the Panel considers that the Complainant has sufficiently demonstrated that, based on paragraph 4(b)(iii) of the Policy, the business of the Complainant is being disrupted. Because of the above mentioned references on the Website, Internet users that are looking for the Complainant’s official website, assume that the Website is one they are looking for, although this is not the Complainant’s official website. The Panel states that this is evidence of registration and use in bad faith. Furthermore, the pornographic use of the Domain Name affirms the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of its Website within the meaning of paragraph 4(b)(iv) of the Policy.
Finally, although the lack of a formal or substantive response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.
Therefore, the Panel is satisfied that the third element of the Policy is met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <zooxhamster.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: June 26, 2021