WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WGCZ S.R.O. v. Timothy Hunt, Payvs Limited
Case No. DTV2014-0006
1. The Parties
The Complainant is WGCZ S.R.O. of Prague, Czech Republic, represented by Randazza Legal Group, United States of America (“USA” or “US”).
The Respondent is Timothy Hunt, Payvs Limited of Providence, Mahe, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <xvideos.tv> (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 December 3, 2014. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied (following a reminder) on December 10, 2014, providing WhoIs results for the registrant of the Domain Name, according to which the organization name is Pavys Limited, the first name is Timothy and the last name is Hunt. The Registrar also confirmed that the registration agreement is in English and requires the registrant to consent to the jurisdiction of the courts in King County, Washington, and that the Domain Name had been placed under locked status to prevent transfers or changes during this proceeding.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2014. The addresses to which the Center sent the Complaint included the email address held on the Registrar’s WhoIs database in respect of the Domain Name, from which the Complainant’s representative had earlier received a reply, as described below.
In accordance with paragraph 5(a) of the Rules, the due date for Response was December 31, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on January 23, 2015. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with the formal requirements, was duly served on the Respondent, and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
Since there were discrepancies between the Complaint and two of the annexes to the Complaint (the certificate of registration of the Complainant’s trademark at the United States Patent and Trademark Office (“USPTO”) and correspondence with the Respondent) the Panel checked the registrations for the trademark “XVIDEOS” in the USPTO and Office for Harmonization in the Internal Market (“OHIM”) databases, in accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5. These confirmed that the Complainant is the current owner of these registrations and identified its predecessor, which had conducted the annexed correspondence. The registrations also provided the Complainant’s address (the Complaint having included only its representative’s address in the Complaint).
4. Factual Background
The Complainant is the proprietor of the US trademark XVIDEOS registered on the principal trademark register of the USPTO on May 28, 2013, pursuant to a filing of September 11, 2012, claiming first use on August 20, 2006 and use in commerce on April 1, 2007. The filing was made by the Complainant’s predecessor, Copypaste Limited of Hong Kong and assigned to the Complainant on July 25, 2013 by an assignment recorded at the USPTO. The Complainant is also the proprietor of the Community trademark XVIDEOS registered at OHIM pursuant to a filing on July 1, 2013.
The Complainant uses this trademark for a business of providing adult entertainment services through its website at “www.xvideos.com”. The website receives over 4 billion page views from 350 million visitors per month and was described in April 2012 by Extreme Tech and Daily Mail Online as the biggest pornography site in the world.
According to the Registrar’s WhoIs record, the creation date of the Domain Name was September 14, 2005. Records kept by Domain Tools show that it was transferred to the Respondent between October 19, 2012 and January 6, 2013. The Domain Name locates a website also providing adult entertainment services.
The Complainant’s predecessor wrote to the Respondent on June 16, 2013, via the email address held in respect of the Domain Name held on the Registrar’s WhoIs database, stating that it was flattered by the Respondent’s affection for the Xvideos brand, but had to be diligent to ensure that its trademarks were not used by non-accredited persons; and asking the Respondent to contact it to resolve the matter at the Respondent’s earliest convenience given the gravity of the matter.
The Respondent replied that it had been doing business online since 2002 in products for German-speakers; that the Domain Name had been registered in 2005 and used to provide pictures, movies, and livecams to customers since then; that the registrant had changed since 2005 due to mergers and outsourcing but had always belonged to the Respondent or related companies; and that the Respondent might sell the Domain Name if the offer was adequate to its value of USD 150,000.
5. Parties’ Contentions
The Complainant contends that it has registered rights in the mark XVIDEOS in the USA and the European Union (“EU”), and unregistered rights in this mark as a result of extensive and longstanding use by itself and its predecessor. In addition to the matters mentioned above, the Complainant states that its website, as it currently exists, has been operated continuously by itself or its predecessors since 2007. The Complainant points out that the Domain Name is effectively identical to this mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that the Respondent’s use of the Domain Name is not a bona fide offering of goods or services, but rather a use in bad faith, taking advantage of confusion with the well-known website established by the Complainant’s predecessor. The Complainant also states that the Respondent is not commonly known by the Domain Name.
The Complainant alleges that the Domain Name has been registered and is being used by the Respondent in bad faith to divert members of the public to the Respondent’s website through confusion with the Complainant’s website. The Complainant contends that the Domain Name was registered by the Respondent in 2012, long after the Complainant’s XVIDEOS mark became well known in 2006, and that the Respondent must have been aware of the use of the mark by the Complainant’s predecessor. The Complainant notes that the Respondent had previously registered a number of domain names suitable for websites offering pornographic videos and was therefore familiar with this market.
According to the Complainant, the Respondent cannot rely on the registration and use of the Domain Name by other parties prior to its own registration of the Domain Name in 2012. The Complainant disputes the Respondent’s assertion in correspondence that the Domain Name was previously owned by related companies. The Complainant also argues that the change of registrar in 2010 amounted to a new registration and that whether the Domain Name was registered in bad faith should be assessed at that date; and that, in any event, any transfers to related businesses were registrations in bad faith since the Domain Name was being used in bad faith.
The Complainant also submits that the Respondent’s offer to sell the Domain Name at an elevated price is evidence of bad faith.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel draws such inferences from the Respondent’s default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark XVIDEOS. It is clear from the databases of the USPTO and OHIM, which the Panel has checked, that the Complainant is the current owner of this mark as registered in the USA and the EU. It is also clear from the undisputed evidence that the Complainant is the owner of the Domain Name <xvideos.com> and that the website at “www.xvideos.com” is extremely well known by the relevant public. Although “xvideos” is obviously descriptive, the Panel is satisfied on the evidence that it has acquired a secondary meaning identifying the proprietor of the website at “www.xvideos.com”.
The Domain Name is effectively identical to this mark. It is well established that the top level domain suffix should typically be discounted when making the comparison for the purpose of paragraph 4(a)(i) of the Policy.
The first requirement is satisfied.
B. Rights or Legitimate Interests
In the Panel’s view, the critical question in this case is whether the Respondent or a related company had an established business using the Domain Name for adult entertainment services before the similar business now operated by the Complainant became well known under its similar domain name. If this were the position, it would be difficult to deny that the Respondent had a right or legitimate interest in respect of the Domain Name, and difficult to maintain that the Respondent has been acting in bad faith in registering and using the Domain Name.
The Respondent has not disputed in this proceeding the Complainant’s contention that the Respondent is not, in fact, related to earlier registrants and users of the Domain Name. This contention is plausible and could easily have been disputed by the Respondent if it were incorrect. In accordance with paragraph 14(b) of the Rules, the Panel draws the inference that this contention is in fact correct and that the Respondent is unrelated to earlier users of the Domain Name.
In these circumstances, the Panel finds that the Respondent’s website providing adult entertainment services using the Domain Name was not a bona fide prior offering of goods or services, but rather constituted a use in bad faith of the Domain Name, diverting Internet users seeking the Complainant’s well known website through confusion with the Complainant’s mark.
The Respondent does not appear to be commonly known by the Domain Name or a corresponding name and has not disputed the Complainant’s contention to the contrary.
Nor is the Respondent making a legitimate non-commercial or fair use of the Domain Name. On the contrary, the Respondent’s use is commercial and unfair, diverting Internet users seeking the Complainant’s website through confusion with the Complainant’s mark.
On the material in the file, there does not appear to be any other basis on which the Respondent could claim a right or legitimate interest in respect of the Domain Name.
The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the undisputed evidence of the Complainant that by using the Domain Name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith.
This presumption is not displaced by any material in the file, particularly given the Panel’s finding that the Respondent is not connected with earlier users of the Domain Name and thus acquired the Domain Name from an unrelated party and registered it in its own name at a date when the Complainant’s website was very well known.
In all the circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith.
All three requirements of the UDRP are satisfied and it is appropriate to direct the transfer of the Domain Name to the Complainant.
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, <xvideos.tv> be transferred to the Complainant.
Date: February 1, 2015