The Complainant is xHamster IP Holdings Ltd, Antigua and Barbuda, internally represented.
The Respondent is Domain Administrator, Hong Kong, China.
The disputed domain name, <xhamster.org> (the “Domain Name”), is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 2020 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 November 27, 2020
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 December 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2020.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 30, 2020. 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 invitation to the Complainant to file an amended Complaint stemmed from the fact that the registrant details of the Domain Name were redacted and not fully available in the public WhoIs at the time of the submission of the Complaint. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent.
According to Annex 1 to the Complaint, the Complainant was incorporated in Antigua and Barbuda on September 23, 2015. It is engaged in the provision of adult entertainment services and trades under the “xHamster” name, which is covered by various trade mark registrations, the earliest of which is Antigua and Barbuda Trade Mark Registration No. 9039 XHAMSTER (word) registered as of November 3, 2015 for a variety of goods and services in classes 9, 35, 38, 41, 42 and 45.
The Complainant operates a pornographic website connected to the domain name, <xhamster.com>. Annex 6 to the Complaint is a Domain Tools WhoIs search result showing that that domain name was created on April 2, 2007 over eight years before the incorporation of the Complainant, but the document does not identify any of the registrants (original or current) of the domain name.
The Complainant has provided evidence to demonstrate that since 2015 the Complainant has established a substantial reputation and goodwill in respect of its XHAMSTER trade mark.
The Domain Name was registered on October 8, 2007, eight years prior to the Complainant’s acquisition of relevant registered trade mark rights, and is connected to a pay-per-click parking page featuring links to adult entertainment websites. At the foot of the page is text reading: “Buy this Domain – This domain may be for sale”, but if one clicks on that text a message from the Registrar comes up stating that the Domain Name is not for sale.
The Complainant contends that the Domain Name is identical and confusingly similar to the Complainant’s XHAMSTER trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.
The substance of the Complaint in respect of the third element of the Policy is framed as follows:
“Thus, we believe that the Respondent is illegally using our proprietary information and infringing our trademark for commercial gain, namely by attraction of Internet users to the Respondent’s website, by creating a confusion with the our mark as to the affiliation, or endorsement of the Respondent’s website with our website. The Respondent is using the domain name in question as business opportunity deriving from those visiting its web site expecting to find our website or a website legally affiliated with it. The Respondent commercially gains by displaying competing content and advertisements as the domain name provides re-direct to other adult-themed websites. Use of a domain name to offer competing goods or services shows bad faith registration and use per Policy paragraphs 4(b)(iii) and (iv).”
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Domain Name comprises the Complainant’s registered trade mark, XHAMSTER, and the “.org” generic Top-Level Domain (“gTLD”) identifier.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which shall demonstrate rights or legitimate interests for the purposes of this element of the Policy, if found by the Panel to be proved after an evaluation of all the evidence presented.
Suffice it to say that the Respondent has not presented any evidence on this or any other aspect of the dispute.
Whether or not the Respondent can be said to have any rights or legitimate interests in respect of the Domain Name stands or falls upon whether or not the Respondent’s use of the Domain Name, a commercial use, falls within the ambit of a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy or fair and legitimate within the meaning of paragraph 4(c)(iii) of the Policy. There is nothing to suggest that the Respondent is commonly known by the Domain Name (paragraph 4(c)(ii) of the Policy). Nor, on the face of it, is there anything to suggest that the Respondent is making a noncommercial or fair use of the Domain Name (paragraph 4(c)(iii) of the Policy).
For the reasons set out in Section D below, the Panel concludes on the balance of probabilities that the use being made of the Domain Name is neither bona fide (paragraph 4(c)(i) of the Policy) nor legitimate (paragraph 4(c)(iii) of the Policy).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Policy.
To succeed under this element of the Policy, the Complainant must demonstrate not only that the Domain Name is being used in bad faith, but also that when the Respondent registered the Domain Name back in October 2007 it did so in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, any of which, if found by the Panel to be present, “shall be evidence of the registration and use of a domain name in bad faith.” Given that the Domain Name was registered about six months after registration of the domain name, <xhamster.com>, currently in use by the Complainant and used in relation to adult entertainment services, the Complainant’s area of activity, paragraph 4(b)(iv) of the Policy seems to the Panel to be the pertinent circumstance for consideration here.
Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the Domain Name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website …”.
The Respondent’s current use of the Domain Name appears to the Panel to constitute a clear infringement of the Complainant’s trade mark rights as stemming from the Complainant’s trade mark registrations and therefore bad faith use of the Domain Name. But since it is also necessary for the Complainant to establish that the Domain Name was registered in bad faith back in October 2007, what was the situation back then?
The only hard evidence before the Panel is that the domain name used by the Complainant for its website was registered six months earlier. The Panel has no information at all on who registered <xhamster.com> in April 2007; nor is there any evidence before the Panel that that domain name was ever used prior to registration of the Domain Name. It is possible, therefore that the Respondent registered the Domain Name wholly unaware of <xhamster.com>. If that were the case, the Complaint must fail.
The Complainant contends: “Our trademark XHAMSTER has been first used upon registration of a domain name www.xhamster.com on April 2, 2007” and “According to the evidence provided above our website www.xhamster.com operates for more than 13 years, with the domain name creation date being April 2, 2007”. If that was so, where is the supporting evidence in the form of screenshots or other contemporary documentation? Nothing in the Complaint establishes the extent of any use of the <xhamster.com> domain name prior to 2015. The fact that, as the Complainant establishes with contemporary documentary evidence, the Complainant’s website is the “4th most popular pornography Internet website and the 20th most trafficked website in the world” is of no moment.
On the face of it, the Respondent registered the Domain Name prior to the acquisition by anybody of any trade mark rights in respect of the name, “xhamster”. Registration of a domain name does not of itself create trade mark rights in respect of that domain name.
Section 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition addresses the question: “Can bad faith be found where a domain name was registered before the complainant acquired trademark rights? Where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
However, Section 3.8.2 notes an exception to that general rule: “As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.”
Despite the gaping holes in the evidence put before the Panel, the Panel has come to the conclusion on the balance of probabilities that the Respondent registered the Domain Name with knowledge of the domain name, <xhamster.com>, with knowledge of the unregistered trade mark rights or nascent trade mark rights associated with the <xhamster.com> domain name and with the intention of using the Domain Name to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website …” (Paragraph 4(b)(iv) of the Policy).
The factors that the Panel has taken into account in coming to that finding are the following:
(i) The Complainant is likely to be the current registrant of <xhamster.com> even though that is not apparent from the Domain Tools search result.
(ii) “xhamster” is an unusual and meaningless combination of letters, which renders it unlikely that the Respondent’s registration of the Domain Name only a few months after registration of <xhamster.com> was coincidental.
(iii) The Complainant’s evidence supports the proposition that pornography websites build up valuable goodwill very rapidly. If, as the Complainant asserts, the domain name, <xhamster.com>, was used for a pornography website on or shortly after registration (the Panel has verified the pages recorded by the Internet Archive at “www.xhamster.com” which started displaying a porn website since at least September 5, 2007, already displaying a coloured logo almost identical to the one currently available, and a copyright notice “Copyright © 2007 xHamster”), it is likely that by the time the Domain Name was registered, the registrant and user of <xhamster.com> would have acquired unregistered trade mark rights of sufficient value to attract the attentions of cybersquatters.
(iv) While the Complainant was incorporated in 2015, it is likely that the <xhamster.com> domain name has been in continuous use by successive owners of that domain name and that the Complainant is entitled to take the benefit of the reputation and goodwill associated with that domain name right back to mid-2007.
(v) If the Respondent had an answer to the Complainant’s contentions, it had the opportunity to put it forward in this proceeding, but elected not to do so. The Complainant’s contentions are therefore unchallenged.
In addition, the Panel notes that little is known about the Respondent in this proceeding. The Domain Name is currently being used in connection to a pay-per-click parking page featuring links to adult entertainment websites. However, the Panel has also verified that the pages recorded by the Internet Archive at “www.xhamster.org” started displaying a porn website as early as March 12, 2008, which further supports the Respondent’s probable knowledge of the Complainant around the time of the registration of the Domain Name.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name <xhamster.org> be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: January 13, 2021