WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WGCZ S.R.O. v. WhoIsProtectService.net Protectservice, Ltd. / Jose Rodriguez

Case No. D2014-0550

1. The Parties

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 Protectservice, Ltd. of London, United Kingdom of Great Britain and Northern Ireland (the “UK”) / Jose Rodriguez of Cordoba, Argentina.

2. The Domain Name and Registrar

The disputed domain name <new-xvideos.com> is registered with EvoPlus Ltd. (the “Registrar”).

3. Procedural History

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 18, 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. On the same date the Center informed the Complainant that its 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 Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2014.

The Center appointed Alistair Payne as the sole panelist in this matter on June 6, 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 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 February 5, 2013.

5. Parties’ Contentions

A. Complainant

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 online 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 “www.cnn.com” and “www.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, the “www.xvideos.com” website is currently the forty-second most visited site globally and the 48th most visited site in the USA.

The Complainant notes that the distinctiveness of the XVIDEOS trademark and the Complainant’s rights in the mark were recognized previously by the panel in Copypaste Ltd. v. Fonco Trading Services, Case No. DCO2012-0019 (WIPO Aug. 20, 2012) (recognizing the degree of repute and goodwill attaching to the XVIDEOS mark when owned by the Complainant’s predecessor in interest). 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 “new” 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 to compete with the Complainant’s website and for a commercial purpose. The Complainant notes that the “www.new-xvideos.com” website contains competing videos to those found on its website and also links to third party websites that compete with Complainant and which says the Complainant are remunerated.

The Complainant submits that the Respondent registered the disputed domain name in February 2013 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.

The Complainant further submits that the Respondent uses a logo on its “www.new-xvideos.com” website that bears a striking similarity to the logo used by the Complainant on “www.xvideos.com”. It says that both use a similar font and the same three colours (white, red, and black), and both contain a red “X” before the word “videos” and that a simple side-by-side comparison shows that Respondent was aware of Complainant’s <xvideos.com> and deliberately modelled its website on the Complainant’s website which is further evidence of the Respondent’s illegitimate use of the disputed domain name and bad faith. None of this, submits the Complainant, is consistent with the Respondent having rights or legitimate interests in the disputed domain name.

The Complainant submits that the Respondent registered the disputed domain name in 2013 long after 2006 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 “www.xvideos.com” website when Internet users mistakenly arrived at it after searching for the term “xvideos” on an Internet search engine. The Complainant says that the Respondent offers exactly the same services at its website and that the Respondent’s motivation was to profit when Internet users followed the links on its website and that this constitutes evidence of registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy.

B. Respondent

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 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 commencing in 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.espn.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 “www.xvideos.com” website is currently the forty-second most visited site globally and the 48th most visited site in the United States. On this basis it says that its mark has also developed a very substantial goodwill and reputation.

The Panel notes that the panel in Copypaste Ltd. v. Fonco Trading Services, Case No. DCO2012-0019 (WIPO Aug. 20, 2012) recognised that the XVIDEOS mark, when owned by the entity that the Complainant submits was its predecessor in interest, had developed sufficient renown and goodwill through use as to qualify as a relevant unregistered right for the purposes of the Policy.

The Panel accepts that based on these statistics the Complainant has since its commencement of use in 2007 and in spite of the descriptive nature of its mark, developed a very 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 “new” followed by a hyphen and 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 registrations for it. The “new-” 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.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests 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 to compete with the Complainant’s website and for commercial purposes.

There is nothing before the Panel to rebut the Complainant’s assertions and for the reasons outlined under Section C below concerning registration and use in bad faith, the Panel finds that the Complainant has made out its case that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name on February 4, 2013 after the date of the Complainant’s United States trade mark registration. By this time the Complainant had been using its mark in the <xvideos.com> domain name and at the website to which it resolves since 2007. The Panel notes that 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 “new” and a hyphen. This is not, as noted above, sufficient to distinguish the disputed domain name.

The Panel 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 so as to divert Internet traffic away from the “www.xvideos.com” website. The Panel notes that the Respondent offers very similar content and services and links at its website, as the Complainant offers at its own website. The Panel also notes the obvious similarities between the sites in that both use a similar font and the same three colours (white, red and black), and both contain a red “X” before the word “videos”.

Overall, considering the extraordinary traffic and consequential renown that the Complainant’s mark and website has developed since 2007, the Respondent’s choice some six 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 has a number of similarities to the Complainant’s website and which the Panel infers operates for commercial gain with competing links of similar kind, the Panel considers that the criteria of paragraph 4(b)(iv) of the Policy have been made out and that this is evidence of registration and use in bad faith.

As a result the Panel finds that the Respondent both registered and used the disputed domain name in bad faith and the Complaint succeeds under the third element of the Policy.

7. Decision

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 <new-xvideos.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: June 20, 2014