WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NKL Associates S.R.O. v. Network Admin, XPRON Media
Case No. D2015-0503
1. The Parties
The Complainant is NKL Associates S.R.O. of Las Vegas, Nevada, United States of America ("United States"), represented by Randazza Legal Group, United States.
The Respondent is Network Admin, XPRON Media of Two Wells, South Australia, Australia.
2. The Domain Names and Registrar
The disputed domain names <xnxxvideos.me>, <xxnxvids.com> and <xxxnxmovies.com> (the "Domain Names") are registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2015. On March 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 24, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 March 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 17, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on April 27, 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.
4. Factual Background
The Complainant owns and operates "www.xnxx.com", a site used since 2004 to provide adult entertainment services. The Complainant has a United States trade mark registration for XNXX.COM effective as of September 18, 2012 and a Community Trade Mark for XNXX granted on November 26, 2013. The United States registration records first use in commerce as June 1, 2004.
The domain name <xxxnxmovies.com> was registered on February 2, 2015;
<xxnxvids.com> on March 26, 2015; and
<xnxxvideos.me> on November 8, 2012.
The Domain Names currently do not resolve to anything, but they have been used to provide services or links to services directly competitive with the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant's submissions can be summarized as follows:
The Complainant owns and operates "www.xnxx.com", registered in 2002 and used by the Complainant since at least 2004 to provide adult entertainment services. It is one of the most popular such sites in the world. The Complainant has a Unites States trade mark registration for XNXX.COM effective as of September 18, 2012 and a Community Trade Mark for XNXX granted on November 26, 2013. The United States registration records first use in commerce as June 1, 2004.
The Complainant's rights in the XNXX mark predate the Respondent's registration of the Domain Names beginning February 2, 2012.
The Domain Names are nearly identical and/or confusingly similar to the Complainant's XNXX mark. The <xxxnxmovies.com> domain name adds the generic term "movies" and adds an "x" as prefix to the mark. The <xxnxvids.com> domain name adds only the word "vids" as a suffix and transposes the second and third letters of the mark. The <xnxxvideos.me> domain name adds only the generic term "videos" to the mark and the Top-Level Domain ("TLD") ".me". Merely adding these common terms to the Complainant's registered trade mark does nothing to lessen the likelihood of confusion created by the Domain Names. Merely transposing letters has the obvious potential to cause even proficient typists to arrive at the Respondent's website inadvertently.
The Domain Names currently do not resolve to anything, but they have been used to provide services or links to services directly competitive with Complainant. Capitalizing on the fame of a trade mark in order to sell goods or services that directly compete with the trade mark owner is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. The Respondent has no rights or legitimate interests in the Domain Names. It is not commonly known by the Domain Names.
"XNXX" is a coined term with no inherent meaning. The Respondent registered the Domain Names for the purpose of redirecting users from the Complainant's web site and profiting from their confusion. The Respondent was undoubtedly aware of the Complainant's XNXX. mark and the services offered thereunder when it commenced bad faith use and registration of the Domain Names. The Respondent registered the Domain Names and then immediately launched web sites that mimicked the Complainant's web sites which had been in operation for eight years. The Respondent is an experienced domainer in the field of adult entertainment services.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove 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.
A. Identical or Confusingly Similar
The Complainant's mark XNXX, as evidenced in the Complaint, has been used in commerce since 2004 and was subsequently registered in the United States and the European Community. The first registration of the Domain Names took place in 2012. As such the Complainant's common law rights in the XNXX mark predate the Respondent's registration of the Domain Names.
For the purposes of this issue under the Policy, generic TLDs such as ".com" and ".me" are typically disregarded for the assessment of similarity or whether a domain name is identical to a mark in which the Complainant has rights. Accordingly:
(i) The <xnxxvideos.me> domain name consists of the Complainant's mark XNXX, and the addition of the generic term "videos". The addition of the generic term "videos" related to the business that the Complainant is in does not serve to distinguish this domain name from the Complainant's XNXX trade mark
(ii) The <xxnxvids.com> domain name consists of a confusingly similar sign to the Complainant's mark XNXX and the generic term "vids". The addition of the generic term, "vids", short for videos and related to the business that the Complainant is in, and the transposition of an "x" and "n" in the sign in the Domain Name does not serve to distinguish this domain name from the Complainant's XNXX trade mark.
(iii) The <xxxnxmovies.com> domain name consists of a confusingly similar sign "xxxnx" to the Complainant's mark XNXX mark merely including an additional "x" , transposing an "n" and an "x" in the sign and adding the generic term "movies". The addition of the generic term "movies", related to the business that the Complainant is in, and the additional "x" and transposed "n" and "x" does not serve to distinguish this domain name from the Complainant's XNXX trade mark.
As such the Domain Names are confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a response and does not appear to have any trade marks associated with the name XNXX or variants thereof. There is no evidence that it is commonly known by this name and it does not have any consent from the Complainant to use this name. In view of the findings below on bad faith use and registration, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including where there are circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on‑line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. Reviewing the evidence of use of the Domain Names for web sites competing with the Complainant or to provide links to such web sites the Panelist finds that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant's marks and its services and the services offered by third party competitors of the Complainant on links from the site attached to the Domain Names for commercial gain. As such the Panelist finds that the Complainant has made out its case under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Domain Names have been registered and used in bad faith.
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 names <xnxxvideos.me>, <xxnxvids.com> and <xxxnxmovies.com> be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: May 13, 2015
