WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WGCZ S.R.O. v. Andrey Kuzmenko / WhoIsProtectService.net Protectservice, Ltd.
Case No. D2014-1420
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 Andrey Kuzmenko of Zaporozhye, Ukraine / WhoIsProtectService.net Protectservice, Ltd. of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <xvideostoday.net> (the "Domain Name") is registered with EvoPlus Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2014. On August 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2014, 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 August 25, 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 August 29, 2014.
The Center verified that the Complaint 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 proceedings commenced on August 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 19, 2014.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 26, 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.
4. Factual Background
The Complainant provides adult entertainment services on the Internet. It has used the domain name <xvideos.com> since 2007 to provide these services. The Complainant is the owner of the US wordmark XVIDEOS (US reg. no. 4.341,707) which has been filed on September 11, 2012 and was registered on May 28, 2013 and of Community Trademark XVIDEOS (reg. no. 011945821) which was registered on November 26, 2013.
The Respondent registered the Domain Name on February 7, 2013. In addition, the Respondent registered the domain name <xvideosdaily.com>, which is the subject of WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / Andrey Kuzmenko, WIPO Case No. D2014-1377.
5. Parties' Contentions
The Complainant submits that it has acquired unregistered or common law rights to the XVIDEOS mark which it states to have used since October 6, 2006. According to the Complainant, its predecessor has used the XVIDEOS logo on the website under the domain name <xvideos.com> since March 17, 2007 and the website has featured links to adult videos since April 6, 2007. The Complainant further submits that the XVIDEOS mark has achieved secondary meaning, as evidenced by press coverage in 2012 and independent statistics analysis. In 2012, according to the Complainant, the <xvideos.com> website received approximately 4.4 billion page views per month and had over 350 million unique visitors each month.
The Complainant states that the Domain Name is identical or confusingly similar to the trademarks as the only difference is the addition of the word "today" after the XVIDEOS mark.
According to the Complainant the Respondent has no rights or legitimate interests in the Domain Name as it has been used to provide services directly competing with those offered by the Complainant, since the website at the Domain Name provides the same kind of adult videos that can be found on the website under the Domain Name <xvideos.com>. This does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, the Complainant submits, as the Respondent is profiting financially from the Domain Name which it allegedly chose to profit from the goodwill of the trademarks. Finally, according to the Complainant, the Respondent cannot use the Domain Name for a legitimate purpose, because it is identical or confusingly similar to the Complainant's registered and unregistered XVIDEOS trademarks.
The Complainant states that the Domain Name was registered and is being used in bad faith. According to the Complainant, the XVIDEOS trademark was already well known in 2013, so that any claim by the Respondent that it was not aware of the Complainant's trademarks when it registered the Domain Name is not credible. Furthermore, according to the Complainant, the Respondent was undoubtedly aware of the trademarks and the services offered by the Complainant through the website under <xvideos.com>, as the Respondent after registration of the Domain Name launched a website that mimicked the Complainant's website, offering the same services. By using the Domain Name, the Complainant submits, the Respondent hoped to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website located at the Domain Name. This is obvious, according to the Complainant, since the Respondent is using a website that is practically identical to the Complainant's in content and services provided.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the XVIDEOS wordmark, registered both in the US and the European Union.
In addition, the Complainant has provided sufficient evidence that it has acquired unregistered trademark rights in the XVIDEOS wordmark and the XVIDEOS logo (with the "X" represented in red). In particular it has shown that the XVIDEOS marks have acquired secondary meaning, given that:
- the website under <xvideos.com>, where the XVIDEOS marks were used, already in 2012 had 4.4 billion page views per month from 350 million unique visitors every month;
- press coverage from April 2012 describes XVIDEOS as the largest porn site on the web;
- Alexa Internet, Inc., an Internet traffic analysis company owned by Amazon.com, ranked the website under <xvideos.com> in September 2012 as the 62nd in the world with estimated visits in a three month period of 1.6 percent of all Internet users worldwide (see Copy paste Ltd. v. Fonco Trading Services, WIPO Case No. DCO2012-0019, <xvideos.com>); according to Alexa Internet Inc., the website in August 2014 ranked 43rd.
The Domain Name contains the XVIDEOS wordmark in its entirety, while the word "today" which is added is an English dictionary word. In the Panel's view, the use of this descriptive word cannot prevent the Domain Name from being confusingly similar to the XVIDEOS registered and unregistered trademarks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9, and inter alia Swarovski Aktiengesellschaft v. N/A, delu xei WIPO Case No. D2013-0708; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 and BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338).
Therefore, the Panel concludes that the Domain Name is confusingly similar to the Complainant's trademarks.
B. Rights or Legitimate Interests
The Domain Name was registered almost six years after the Complainant first started to use the XVIDEOS marks on the website under the domain name <xvideos.com>.
The Respondent is using the Domain Name (and thereby the XVIDEOS marks) for a website which offers the same services as the Complainant's website under the domain name <xvideos.com>. It is well established that using the Domain Name for web pages with commercial information trading on the goodwill of the Complainant's trademark (as may be evidenced by direct or indirect links to competitors, websites or goods) does not constitute a bona fide offering of goods or services, nor does it constitute a legitimate noncommercial or fair use (see inter alia NBC Universal Media, LLC v. Flying Stingrays Ltd, Jim Macallum WIPO Case No. D2012-1568; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340).
For these reasons the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
On the basis of the evidence set out in section 6.A above, the Panel concludes that the XVIDEOS marks already had a strong reputation worldwide in February 2013, when the Respondent registered the Domain Name. Therefore, it is very likely that the Respondent had seen or was aware of the XVIDEOS marks when it registered the Domain Name, and therefore acted in bad faith (see WIPO Overview 2.0, paragraph 3.4 and inter alia The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002-0770; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
This is supported by the fact that the Respondent, almost immediately upon registration of the Domain Name, started using the website under the Domain Name to provide services which are identical or similar to those provided by the Complainant under the XVIDEOS marks on the website connected to <xvideos.com>.
On this basis the Panel concludes that the Domain Name was registered in bad faith.
Based on the circumstances of this case, it is clear that the Respondent has chosen the Domain Name in order to take advantage of the reputation of the Complainant's XVIDEOS trademarks by attracting customers to its website under the Domain Name who assume that this website is either provided by or has been approved of by the Complainant. By providing services under the Domain Name which are identical or similar to those provided by the Complainant and by using the XVIDEOS mark with the characteristic red "X", the Respondent intended to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation or endorsement of the Respondent's website (see e.g. Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829 <sanofi.buzz>).
Finally, the Respondent has also registered the domain name <xvideodaily.com> which in the circumstances of this case contributes to a finding of bad faith.
On the basis of the above, the Panel concludes that the Domain Name has been and is being used 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 Domain Name <xvideostoday.net> be transferred to the Complainant.
Wolter Wefers Bettink
Date: October 13, 2014