The Complainant is NKL Associates S.R.O. of Las Vegas, Nevada, United States of America (the "US"), represented by Randazza Legal Group, US.
The Respondent is Ivan Misheveckiy of Rostov-on-Don, Russian Federation.
The disputed domain name <allxnxx.com> (the "Disputed Domain Name") is registered with EvoPlus Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2015. On March 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 24 and 26, 2015, 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 March 26, 2015 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 April 1, 2015.
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 April 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2015.
The Center appointed John Swinson as the sole panelist in this matter on May 5, 2015. 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 is NKL Associates S.R.O. The Complainant operates a website at "www.xnxx.com", which it uses to provide adult entertainment services.
The Complainant owns the following trade mark registrations:
- US Trade Mark Registration No. 4,363,782 for XNXX.COM (filed September 18, 2012, registered July 9, 2013); and
- Community Trade Mark Registration No. 011945821 for XNXX (registered November 26, 2013).
The Respondent is Ivan Misheveckiy of the Russian Federation. As the Respondent did not file a Response, little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on June 11, 2013. As at the date of the Complaint, the website at the Disputed Domain Name was used to provide adult entertainment services in the form of pornographic videos.
The Complainant's contentions are as follows.
The Complainant has both registered and common law trade mark rights inXNXX.COM and XNXX. The Complainant and its predecessors in title have been using theXNXX.COM mark in international commerce in connection with adult services since at least 2004. The Complainant's predecessor in title acquired the <xnxx.com> domain name in 2003. The Complainant's website at "www.xnxx.com" is currently the 131st most visited website globally.The Complainant attached evidence of traffic to its website in its Complaint.
Previous panels have recognised the Complainant's rights in the XNXX.COM and XNXX trade marks.
The Disputed Domain Name is confusingly similar to the Complainant's XNXX.COM and XNXX trade marks. The additional descriptive term "all" does not mitigate this confusion.
The Respondent does not have rights or legitimate interests in the Disputed Domain Name.
The Respondent has no association with the Complainant. The Respondent is not commonly known by the Disputed Domain Name.
The website at the Disputed Domain Name is modelled off the Complainant's website and provides services that directly compete with the Complainant's services. It also hosts links to third party websites that provide competitive services. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Respondent is attempting to profit from the goodwill associated with the Complainant's trade marks.
The Respondent has registered and is using the Disputed Domain Name in bad faith.
The Complainant had common law trade mark rights when the Respondent registered the Disputed Domain Name. The Respondent would have been aware of these rights. The Complainant submits that the Panel is able to find constructive knowledge, if it is not satisfied that the Respondent had actual knowledge.
The Respondent has used the Disputed Domain Name to disrupt the Complainant's business for commercial profit. The Respondent hoped to create a likelihood of confusion amongst Internet users as to the source, sponsorship, affiliation, or endorsement of the website at the Disputed Domain Name. This is evidenced by the Respondent's mimicry of the Complainant's website.
The Respondent did not reply to the Complainant's contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909). However, the Panel may draw appropriate inferences from the Respondent's default.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel has verified that the Complainant has registered trade mark rights in XNXX.COM and XNXX.
The Disputed Domain Name incorporates the Complainant's XNXX.COM and XNXX marks in their entirety, with the inclusion of the term "all" as a prefix.
The Panel in WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / AVO Ltd AVO Ltd, WIPO Case No. D2014-0545 (a case involving the Complainant's predecessor in title) makes the following statement in relation to the distinctiveness of the XNXX.COM and XNXX marks:
"While the Panel does not find that the XNXX or XNXX.COM marks are extremely distinctive, it is prepared to find that the addition of the 'N' element as the second letter of these marks affords them a reasonable degree of distinctiveness which is only heightened by the degree of renown that they have developed as a result of the very substantial web traffic to the Complainant's domain name at 'www.xnxx.com'. Internet users searching for the Complainant's website might very well assume incorrectly that the Disputed Domain Name is associated with the Complainant."
The Panel agrees with this assessment of distinctiveness and likelihood of confusion. The additional descriptive term "all" is not sufficient to distinguish the Disputed Domain Name from the Complainant's trade marks (see e.g. The Drambuie Liqueur Company Limited v. DVLPMT MARKETING, INC, WIPO Case No. D2015-0039 and World Outdoor Fitness SA v. Benjamin Shavit, World Outdoor Fitness Ltd., WIPO Case No. D2015-0330). It simply suggests that the content of the website is comprehensive or only contains such content.
In this case, the generic Top Level Domain ("gTLD") ".com" is irrelevant to the assessment of confusing similarity under the Policy and may be ignored.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's XNXX.COM and XNXX marks. The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has no connection with the Complainant.
- The Complainant has not given the Respondent permission to use its XNXX.COM and XNXX marks.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
- The Disputed Domain Name resolves to a website that directly competes with the Complainant's website, including through the provision of third party links to the Complainant's competitors.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
At the time the Respondent registered the Disputed Domain Name, the Complainant (along with its predecessor in title) had long-standing common law rights in relation to the XNXX.COM and XNXX marks for the provision of adult entertainment services. The Complainant (or its predecessor in title) had provided these services for appropriately a decade through its website at "www.xnxx.com". The Complainant provided evidence of the substantial traffic to its website since 2004. It is highly unlikely that the Respondent was unaware of the Complainant and its trade marks at the time the Respondent registered the Disputed Domain Name.
In light of the above, considering the only difference between the Disputed Domain Name and the Complainant's trade marks is the prefix "all", the Panel infers that the Respondent registered the Disputed Domain Name in full knowledge of the Complainant's XNXX.COM and XNXX marks and therefore in bad faith.
The Disputed Domain Name resolves to a website that provides adult entertainment services and directly competes with the Complainant's website at "www.xnxx.com", including through the provision of third party links to the Complainant's competitors.
The Panel finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website at the Disputed Domain Name by creating a likelihood of confusion with the Complainant's trade marks as to the source of the website (see paragraph 4(b)(iv) of the Policy).
It appears that the Respondent is trading off the Complainant's reputation. This constitutes bad faith use (see e.g. O2 Holdings Limited v. Profile Group, DNS Manager, WIPO Case No. D2013-1340 and Cynthia Ann Crawford v. Julian S. Garcia, WIPO Case No. D2012-2454).
The Respondent had the opportunity to rebut the Complainant's submissions, but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith registration and use of the Disputed Domain Name (see e.g. Nike, Inc. v. No Owner / Ashkan Mohammadi, WIPO Case No. D2013-1297 and cases cited therein).
Accordingly, the Panel finds that the Respondent has both registered and used the Disputed Domain Name in bad faith and that the Complainant 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, <allxnxx.com>, be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 8, 2015