WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WGCZ S.R.O. v. WHOISGUARD / Andrei Ivanov
Case No. DNU2014-0002
1. The Parties
The Complainant is WGCZ S.R.O. in care of and represented by Randazza Legal Group, United States of America ("US").
The Respondent is WHOISGUARD of Los Angeles, California, US / Andrei Ivanov of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <xvideos.nu> (the "Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 10, 2014, 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 July 11, 2014 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 July 14, 2014.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 7, 2014.
The Center appointed Ian Lowe as the sole panelist in this matter on August 13, 2014. 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.
On August 21, 2014, the Respondent sent an email to the Center stating that because he had been on vacation he had not checked his emails for some time. He claimed that the email from the Center dated August 7, 2014 notifying the Respondent's default, was the first email he had seen from the Center.
In the circumstances, the Panel issued an Administrative Panel Procedural Order on August 26, 2014 providing that the Respondent would have until September 1, 2014 to submit its Response. The Complainant could file rebuttal arguments by September 8, 2014 if it so wished.
In the event, no Response was received from the Respondent within the extended time allowed.
4. Factual Background
The Complainant owns and operates the website at "www.xvideos.com" for the provision of adult entertainment services. The Complainant and its predecessors in interest have operated the website continuously since April 2007. The website receives approximately 4.4 billion page views per month and has over 350 million unique visitors every month.
The Complainant is the registered proprietor of US trademark XVIDEOS number 4,341,707, filed on September 11, 2012 and of Community trademark XVIDEOS number 011945821 registered on November 26, 2013.
The Domain Name was registered on November 17, 2011. The Domain Name resolves to a website containing numerous click through links to third-party websites that compete with the Complainant, also offering adult entertainment services including the provision of video files. The Respondent has since 2005 registered numerous other domain names for websites that offer adult entertainment services.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its XVIDEOS trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply formally to the Complainant's contentions. However, in his email to the Center dated August 21, 2014, the Respondent claimed that when he registered the Domain Name, "xvideos" was not a trademark. He suggested that "xvideos" was like "pornvideos" or "porntube" and that the Respondent's website had nothing in common with the Complainant's website at "www.xvideos.com".
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in addition to the Domain Name the Complainant must prove that:
(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 has uncontested rights in the trademark XVIDEOS by virtue of its US and Community trademark registrations. The Panel accepts the Complainant's statement that the United States Patent and Trademark Office accepted the mark for registration by virtue of the Complainant's continuous promotion and exclusive use of the XVIDEOS mark.
Previous panels have also noted "the extraordinary traffic and consequential renown that the Complainant's mark and website has developed since 2007" (WGCZ S.R.O. v. WhoIs ProtectService.net Protect service, Ltd. / AVO Ltd, WIPO Case No. D2014-0549) and that "the Complainant has since its commencement of use in 2007 and in spite of the descriptive nature of its mark, developed a very substantial following and reputation for its mark and website at the domain name <xvideos.com>" (WGCZ S.R.O. v. WhoIs ProtectService.net Protectservice, Ltd. / Jose Rodriguez WIPO Case No. D2014-0550).
In the absence of any coherent response from the Respondent, or evidence to the contrary, the Panel accepts that by virtue of the extraordinary level of use of the Complainant's website at "www.xvideos.com", including the significant number of unique monthly visitors, the Complainant has acquired a substantial goodwill and reputation in the trademark XVIDEOS and that this reputation and goodwill (then owned by the Complainant's predecessor in interest) was already substantial by the date of registration of the Domain Name in 2011. Although the Respondent appears to suggest in his email that "xvideos" is generic, it has chosen not to make a formal response, despite the indulgence granted to it by the Procedural Order, and has done nothing to contradict the evidence from the Complainant as to the substantial reputation and goodwill the Complainant claims had been accrued before the Domain Name was registered.
The Domain Name is identical to the Complainant's trademark save only for the country code Top-Level Domain suffix ".nu". Accordingly, the Panel finds the Domain Name is identical to the XVIDEOS trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prime facie case that the Respondent can have no rights or legitimate interests in the Domain Name. The Domain Name has been used for a website providing services directly competitive with those offered by the Complainant. In the Panel's view, there can be no question of the Respondent having registered the Domain Name because the Respondent was known by the name "xvideos". Given the nature of the Respondent's website, and given the very substantial notoriety of the Complainant's website at "www.xvideos.com", the overwhelming inference is that the Respondent registered and is using the Domain Name in order to take advantage of the very substantial success and reputation of the Complainant's trademark and website. This cannot give rise to any rights or legitimate interests in respect of the Domain Name.
The Respondent has chosen not to reply to the Complaint, despite being given extra time to do so, and has not therefore rebutted the strong prima facie case made out by the Complainant that the Respondent can have no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registration and Use in Bad Faith
The Complainant has produced evidence that the Respondent is an experienced domainer in the area of "porn tube" websites. As indicated above, the Complainant's predecessor had established a very substantial reputation in respect of the "xvideos" name well before the date of registration of the Domain Name in 2011. In the circumstances, the Panel considers it overwhelmingly likely that the Respondent must have been aware of the Complainant's website and its very substantial business at the time it registered the Domain Name. The Respondent has used the Domain Name for a website providing similar services to those of the Complainant under the "xvideos" name including the provision of links to third-party websites directly competing with the Complainant. In the Panel's view, this amounts to paradigm bad faith registration and use for the purposes of the Policy. In light of the circumstances described above, the fact that the Complainant had not yet registered its trademark at the time the Domain Name was registered does not prevent the Panel from deciding against the Respondent (see Diler Demir Çelik Endüstri Ve Ticaret Anonim Şirketi, Diler Yatirim Bankasi Anonim Şirketi v. Dr. Mehmet Kahveci, WIPO Case No. D2014-0060).
Accordingly, the Panel finds that the Respondent registered and is using the Domain Name 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 <xvideos.nu> be transferred to the Complainant.
Date: September 5, 2014