The Complainant is WGCZ S.R.O. of Las Vegas, Nevada, United States of America (the "USA"), represented by Randazza Legal Group, USA.
The Respondent is WhoIsProtectService.net Protect service, Ltd. of London, United Kingdom of Great Britain and Northern Ireland / AVO Ltd of Mahe, Seychelles, self-represented.
The disputed domain name <hd-xvideos.com> is registered with EvoPlus Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2014. On April 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7 and 17, 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 April 24, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 30, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2014. The Response was filed with the Center on May 23, 2014.
The Center appointed Alistair Payne as the sole panelist in this matter on May 30, 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.
The Complainant owns a United States trade mark registration for the XVIDEOS mark under registration number 4,341,707 dating from September 11, 2012 and a Community trade mark registration for XVIDEOS under number 011945821 dating from November 26, 2013. The Complainant uses this mark in connection with its provision of adult entertainment services on the Internet at the domain name <xvideos.com>.
The Respondent registered the disputed domain name on April 4, 2012.
The Complainant submits that it owns registered trade mark rights for its XVIDEOS mark as noted above and that its use of the mark in connection with the provision of on-line adult entertainment services at the domain name <xvideos.com> has become so well known since 2007 that it receives approximately 4.4 billion page views per month, three times the number of views received by numerous other world-famous Internet sites, including "CNN.com" and "ESPN.com" and has 350 million unique visitors every month. In addition the Complainant submits that according to Alexa Internet, the company that tracks global website traffic, "www.xvideos.com" is currently the forty-second most visited site globally and the 48th most visited site in the USA. On this basis the Complainant submits that it has developed a protectable goodwill and reputation attaching to its XVIDEOS mark.
The Complainant asserts that the disputed domain name is confusingly similar to its XVIDEOS mark on the basis that the mere addition of the prefix "hd" (meaning "high definition") together with a hyphen does not distinguish the disputed domain name from the Complainant's mark.
The Complainant submits that the Respondent has no rights in the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name, but is rather using the disputed domain name for a commercial purpose, as its "www.hd-xvideos.com" website contains links to third party websites that compete with the Complainant.
The Complainant submits that the Respondent registered the disputed domain name in 2012, long after the Complainant's first use and by which time the Complainant's XVIDEOS mark and website at "www.xvideos.com" had gained a very substantial reputation and following. It says that the Respondent immediately offered adult entertainment services from its website at the disputed domain name in order to divert Internet traffic away from the Complainant's "www.xvideos.com" website when Internet users mistakenly arrived at it after searching for the term "xvideos" on an Internet search engine. The Complainant submits that the Respondent's motivation was to profit when Internet users followed the links on its website and that this constitutes registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy.
The Respondent says that the disputed domain name is not confusingly similar to the Complainant's trade mark because the Respondent's website clearly states that it is offering generic alternatives to the Complainant's web site. It says that its website has a different colour, design, structure and logo to that of the Complainant and that it will be clearly understood by Internet users that these are different websites belonging to different owners. In addition, the Respondent denies that the Complainant's mark or website has developed a substantial goodwill or reputation and argues that a mark that defers to a website offering adult entertainment services should not in any event be attributed as well known on the grounds of public morals.
The Respondent submits that it registered the disputed domain name two years ago and has used it since that time to defer to a website at which it provides adult entertainment services in good faith. Accordingly it says that the Complainant has not demonstrated that it has no rights or legitimate interests in the disputed domain name.
The Respondent further submits that providing links from its website or competitor advertising is not illegal and that the Complainant has not demonstrated that the Respondent is engaging in bait or switch selling and denies that it is profiting financially or trading upon the goodwill attaching to the Complainant's mark.
The Respondent says that at the time of registration of the disputed domain name the Complainant's mark was not registered and denies that it was well known and says that as there was no information available about the Complainant's mark that it could not have registered the disputed domain name in bad faith. It further says that the design and structure of its website at the disputed domain name does not mimic the Complainant's website and denies that it intended to divert Internet users, in particular it submits that if in searching for "xvideos" a search engine's results does not bring up "hd-xvideos" then the Complainant's allegations in this regard are groundless. Finally, it says that it is entitled to provide adult entertainment services from the disputed domain name, particularly in circumstances such as here where competition is not possible because the disputed domain name is not shown in relevant search results.
Under this limb of the Policy the requirement is for the Complainant to demonstrate that it owns rights in a trade mark and that the disputed domain name is identical or confusingly similar to that mark. Whether the Complainant's mark was registered or not prior to the disputed domain name is not determinative under this limb of the Policy (see section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0")).
The Complainant has demonstrated that it owns a United States trade mark registration for its XVIDEOS mark under registration number 4,341,707 dating from September 11 , 2012 and a Community trade mark registration for XVIDEOS under number 011945821, dating from November 26 , 2013.
In addition, the Complainant submits that it has become so well known since 2007 that it receives approximately 4.4 billion page views per month, three times the number of views received by numerous other world-famous Internet sites, including "www.cnn.com" and "www.esp.com", and has 350 million unique visitors every month. The Complainant also submits that according to Alexa Internet, the company that tracks global website traffic, the Complainant's domain name <xvideos.com> is currently the forty-second most visited site globally and the 48th most visited site in the USA. On this basis it says that its mark has also developed a very substantial goodwill and reputation. Although the Respondent denies that this is the case it has not submitted any substantive evidence to support its allegation. As a result, the Panel accepts that based on these statistics the Complainant has since 2007 and in spite of the descriptive nature of its mark, developed a substantial following and reputation for its mark and website at the domain name <xvideos.com>.
The disputed domain name differs from the Complainant's XVIDEOS mark only by the addition of the prefix "hd" followed by a hyphen. The Panel notes that the disputed domain name entirely incorporates the Complainant's XVIDEOS mark.
The Panel finds that the dominant element of the disputed domain name is the XVIDEOS element. Although this element is very descriptive, in that it is likely to evoke for Internet users the concept of pornographic videos or adult entertainment services, the Complainant has successfully obtained trade mark registration for it. The "hd-" element of the disputed domain name is merely a prefix attached to this element which does not, in the Panel's view, distinguish the disputed domain name from the Complainant's mark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's XVIDEOS registered trade mark and the complaint succeeds under this limb of the Policy.
The Respondent says that it registered the disputed domain name prior to either of the trade mark registrations of the Complainant and that the Complainant's mark and website were not well known and that it could therefore not have registered the disputed domain name in bad faith. Further it submits that it has used the disputed domain name to defer to its website from which it provides adult entertainment services and has used it for this bona fide business for the last two years.
For the reasons set out in the section below under bad faith, the Panel does not accept that the Respondent did not know of the Complainant's mark and its domain name <xvideos.com> when it registered the disputed domain name in 2012. As explained below under section C on bad faith, the Panel also does not accept the Respondent's argument that it has made a bona fide use of the disputed domain name for the last two years. In the Panel's view and as discussed below, the Respondent has registered and used the Complainant's mark in the disputed domain name for its own commercial purposes and in bad faith.
Accordingly, the Panel finds that the Respondent has not rebutted the Complainant's prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint succeeds under this element of the Policy.
The Respondent registered the disputed domain name on April 4, 2012 some five months prior to the Complainant's registration of its United States mark for XVIDEOS. However by the date of the Respondent's registration the Complainant had been using its mark in the <xvideos.com> domain name and at the website to which it resolves since 2007. In between times, the Complainant's website has developed an extremely large following to the extent that it now receives hundreds of millions of page views per year and is said to be the 42nd most visited site globally.
In these circumstances, the Panel infers that by the date of registration of the disputed domain name the Respondent was on the balance of probabilities aware of the Complainant's website offering adult entertainment services and also of the Complainant's use of the XVIDEOS mark. Had the Respondent wished to differentiate itself and to avoid the risk of trading off the goodwill and reputation attaching to the Complainant's mark and website, then it could have registered a much more distinctive domain name. Having chosen to wholly incorporate the XVIDEOS mark into its choice of disputed domain name, the Respondent then added the prefix "hd". The Panel, as noted above, does not consider that this is sufficient to distinguish the disputed domain name and on balance considers that the Respondent more likely than not chose to incorporate the Complainant's mark purposefully into the disputed domain name in order to attract Internet users to its website.
The Respondent has submitted evidence that a Google search for XVIDEOS does not bring up the disputed domain name. It also says that there is very little obvious similarity between the get up of the Respondent's website and that of the Complainant's website apart from the use of the XVIDEOS mark and the typical layout used on websites of this type.
The Panel is not persuaded by the Respondent's arguments. Firstly, there is no certainty that search engines such as Google were not optimized prior to the commencement date of these proceedings (or the date of the searches placed in evidence, being May 22, 2014) in order to bring up the disputed domain name. Secondly, the degree of similarity or otherwise of the respective websites is no more than a factor that may inform an inference that the Respondent has or has not registered and used the disputed domain name in bad faith. The Panel notes that initial Internet user confusion leading to diversion occurs at the point that the users see the disputed domain name. By the time the Internet users arrive at the website to which the disputed domain resolves they have already been confused and diverted to the Respondent's website.
Overall, considering the extraordinary traffic and consequential renown that the Complainant's mark and website has developed since 2007, the Respondent's choice some five years later to wholly incorporate the Complainant's mark into the disputed domain name and the fact that the disputed domain name resolves to a directly competing website which appears to operate for commercial gain with competing links and advertising, the Panel considers that the criteria of paragraph 4(b)(iv) of the Policy have been made out and that this is eveidence of registration and use in bad faith. The Panel's view that overall the Respondent has both registered and used the disputed domain name in bad faith is only reinforced by this Panel's findings in concerning the Respondent's history of bad faith conduct in cases WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / AVO Ltd AVO Ltd., WIPO Case No. D2014-0545.
As a result the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and the Complaint succeeds under the third element of the Policy.
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 <hd-xvideos.com> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: June 15, 2014