The Complainant is WGCZ s.r.o. in care of and represented by Randazza Legal Group, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Lars Pimentel of Nova Friburgo, Brazil.
The disputed domain name <xvideosbrasileiros.club> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2016. On May 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 June 2, 2016 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 June 8, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016. The Respondent did not submit any formal response.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on July 7, 2016. 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 WGCZ s.r.o. owns a registration No. 4.341.707 for the trademark XVIDEOS granted by the United States Patent and Trademark Office on May 28, 2013, as result of an application filed on September 11, 2012, and a European Union Trademark registration No. 019945821 for the trademark XVIDEOS granted on November 26, 2013 for entertainment related services.
The disputed domain name <xvideosbrasileiros.club> was registered on September 11, 2015. The disputed domain name has and is being used to host a website offering services competing with the Complainant’s services.
The Complainant contends, basically, the following:
That it has both acquired registered trademark rights and has developed extensive common law trademark rights in the trademark XVIDEOS for the provision of adult entertainment services.
The disputed domain name <xvideosbrasileiros.club> is identical or confusingly similar to the Complainant’s mark XVIDEOS.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, which was registered and is being used by the Respondent in bad faith.
The Respondent is using the disputed domain name to offer the same services as the Complainant, which makes it clear that confusion will occur - and likely has occurred - and that was the intention of the Respondent when registering and using the disputed domain name.
Finally, the Complainant requests that the Panel order that the disputed domain name <xvideosbrasileiros.club> be transferred to the Complainant.
The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent has submitted informal emails to the Center requesting information about the proceedings and asking if he could “move the site to another domain that has not XVIDEOS in the name”.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:
The Panel considers that the Complainant has proved to have both registered and unregistered rights in the trademark XVIDEOS. In line with what has been decided by other UDRP panels in several similar cases involving the same trademark (WGCZ s.r.o. v. Italo Fabris, WIPO Case No. D2016-1083; WGCZ S.R.O. v. WhoIsProtectService.net, Protectservice, Ltd. / Adam Hokke, WIPO Case No. D2015-0408; WGCZ S.R.O. v. Andrey Kuzmenko / WhoIsProtectService.net Protectservice, Ltd., WIPO Case No. D2014-1420; WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / Andrey Kuzmenko, WIPO Case No. D2014-1377; WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / Jose Rodriguez, WIPO Case No. D2014-0550 and WGCZ S.R.O. v. WhoIsProtectService.net Protect service, Ltd. / AVO Ltd, WIPO Case No. D2014-0549) the Panel considers that under the Policy the trademark XVIDEOS and the disputed domain name <xvideosbrasileiros.club>, which includes the Complainant’s trademark XVIDEOS in its entirety, are confusingly similar. Likewise, in this case, the addition to the disputed domain name of a descriptive term such as “brasileiros” (“Brazilians” in Portuguese) and the generic Top-Level Domain (“gTLD”) “.club” should not be considered sufficient to avoid such confusing similarity.
Therefore, the Panel considers that the Complainant has succeed on this first element of paragraph 4 (a) of the Policy.
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(a) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then prove its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
As argued by the Complainant, none of the circumstances provided in article 4(c) of the Policy, nor any other to demonstrate legitimate interest in the disputed domain name have been proved by the Respondent.
Therefore, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore the Complainant has made the second prong.
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
In particular, paragraph 4(b)(iv) of the Policy holds that if the circumstances indicate that the disputed domain name was registered for the purpose of attempting to attract, for commercial gain, Internet users to the registrars website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the web site location, then this is evidence of bad faith registration and use on behalf of the Respondent.
The disputed domain name <xvideosbrasileiros.club> was registered on September 15, 2015, i.e., almost nine years after the Complainant commenced using the trademark XVIDEOS, and three years after the Complainant acquired registered rights in the trademark XVIDEOS on May 28, 2013, as result of a trademark application filed on September 11, 2012.
It is almost unthinkable that the Respondent could have registered the disputed domain name with no knowledge of the Complainant’s trademark XVIDEOS, given his clear purpose of creating confusion with the Complainant’s trademark and official website and diverting Internet traffic to his website for profit.
This intent is quite obvious, given that the Respondent is using a web site almost identical to the Complainant’s in content and has even gone as far as to imitate the Complainant’s XVIDEOS logo (Annex O of the Complaint).
The fact that the website at the disputed domain name no longer appears to include an imitation of the Complainant’s XVIDEOS logo does not change the Panel’s findings.
Therefore, most likely than not, Internet consumers will easily associate the disputed domain name to the Complainant’s services and business.
Hence, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and the Complainant also 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, <xvideosbrasileiros.club>, be transferred to the Complainant.
Miguel B. O’Farrell
Sole Panelist
Date: July 25, 2016