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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

xHamster IP Holdings Ltd v. Danesco Trading Ltd / Ivan Misheveckiy

Case No. DME2020-0011

1. The Parties

The Complainant is xHamster IP Holdings Ltd, Antigua and Barbuda, internally represented.

The Respondent is Danesco Trading Ltd, Cyprus / Ivan Misheveckiy, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <xxxhamster.me> is registered with Danesco Trading Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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 December 11, 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 December 15, 2020.

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 December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on February 4, 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 Complainant is an Antigua and Barbuda company which operates in the field of online adult entertainment. According to the Complainant, it registered the domain name <xhamster.com> on April 2, 2007, and has operated its business using that domain name since that time. According to Wikipedia, the Complainant’s website at “www.xhamster.com” is the fourth most popular pornography website on the Internet and the 20th most trafficked website in the world.

The Complainant is the owner of several trademark registrations for the word trademark XHAMSTER, including Antigua and Barbuda Trademark Registration No. 9039 (registered on November 3, 2015), and European Union Trademark Registration No. 018255445 (registered on October 31, 2020).

The disputed domain name was registered on March 18, 2016. A screenshot taken on December 30, 2020, shows that at that time the disputed domain name resolved to a website containing a large number of pornographic images. As of the date of this decision, the disputed domain name resolved to a website containing a large number of pornographic images, headed with the statement “xxxHamster.me is closing soon so please go to [redacted] and enjoy”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because it consists of the Complainant’s word trademark XHAMSTER preceded by two of the letter “x” and succeeded by the country-code Top-Level Domain (“ccTLD”) “.me”, which is not considered to be a sufficient change to distinguish a domain name for the purposes of the Policy.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant’s website at “www.xhamster.com” has operated for more than 13 years, and during this time the XHAMSTER trademark has become a worldwide-known brand; (ii) the Respondent’s goal is to mislead Internet users and clients seeking to access the Complainant’s website; (iii) the Respondent has no bona fide offering of goods or services under the disputed domain name as it operates in the same field of business as does the Complainant; and (iv) the Respondent has never tried to contact the Complainant to become the Complainant’s affiliate or obtain its consent to use the disputed domain name or the Complainant’s trademark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent did not provide any contact information on the WhoIs record for the disputed domain name, which shows the Respondent understands that it does not have any legitimate interest in the disputed domain name; (ii) the disputed domain name cannot be the corporate name of the Respondent, nor can it be a trademark registered by the Respondent, as the Complainant monitors such registrations and contests them; (iii) the Respondent commercially gains from the disputed domain name by displaying competing content and advertisements on the website resolving from it, and by providing redirects to other adult-themed websites, which is unlawful and constitutes unfair competition, trademark dilution, and false designation of origin; (iv) the Respondent has never sought the Complainant’s consent to use the Complainant’s trademark in the disputed domain name; and (v) the Respondent is attracting Internet users to a website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the ccTLD “.me” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark XHAMSTER preceded by the letters “xx”. The Complainant’s word trademark XHAMSTER is clearly recognisable in the disputed domain name. The addition of the letters “xx” before the Complainant’s trademark does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its XHAMSTER trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a website that operates in the same field of business as does the Complainant, namely the supply of pornographic images. The contents of the Respondent’s website are such that many Internet users could form the false belief that it is operated by, or affiliated with, the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. As described above, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and this prima facie case has not been rebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered after the Complainant’s first registered its XHAMSTER word trademark, and more than a decade after the Complainant began using its trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given the evidence with respect to the Complainant’s use of its trademark, the fact that the disputed domain name consists of the Complainant’s distinctive trademark with merely the addition of two letters at the beginning, and the fact that the Respondent uses the disputed domain name to resolve to a website that operates in the same field as does the Complainant. For these reasons, the Panel is satisfied that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s XHAMSTER word trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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, <xxxhamster.me>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: February 18, 2021

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