WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wgcz S.R.O. v. Balazs Suhajda

Case No. DCO2020-0002

1. The Parties

The Complainant is Wgcz S.R.O., United States of America (“United States”), represented by Fischer Law, P.L., United States.

The Respondent is Balazs Suhajda, Hungary.

2. The Domain Name and Registrar

The disputed domain name <xvideoslive.co> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2020. On January 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 9, 2020, 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 January 15, 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 January 20, 2020, and amendment to the Complaint on January 21, 2020.

The Center verified that the Complaint together with the amended Complaint and the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2020. On February 7, 2020, the Center received an email communication from a third party. The Respondent did not submit any response. Accordingly, the Center notified the Parties the commencement of panel appointment process on February 17, 2020.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 2, 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.

4. Factual Background

The Complainant provides adult entertainment services on the Internet. The Complainant uses the domain name <xvideos.com> to provide such services.

In addition, the Complainant is the owner of the following trademark registrations:

- United States trademark XVIDEOS Registration No. 4,341,707, registered on May 28, 2013; and

- European Union trademark XVIDEOS Registration No. 011945821, registered on November 26, 2013.

The Respondent registered the Disputed Domain Name <xvideoslive.co> on November 29, 2016.

The Disputed Domain Name is currently inactive. However, the Complainant presented evidence that the Disputed Domain Name redirected to a website which offered adult entertainment services identical to those provided by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

Identical or confusingly similar

The Complainant states that the Disputed Domain Name is identical to the Complainant’s trademark with the mere addition of the term “live” at the end, which does not mitigate the likelihood of confusion created by the Disputed Domain Name.

Rights or legitimate interests

The Complainant contends that the Disputed Domain Name has been used to provide services directly competitive with those offered by the Complainant.

The Complainant further states that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Moreover, the Respondent cannot claim any legitimate right to the Disputed Domain Name. In addition, there is no evidence that the Respondent is commonly known by the Disputed Domain Name.

Registration and use in bad faith

The Complainant states that the Respondent knew the Complainant’s trademark when registering the Disputed Domain Name.

The Complainant further alleges that the Respondent registered the Disputed Domain Name and then immediately launched a website that mimicked the Complainant’s website.

In this sense, the Respondent desired to disrupt the Complainant’s business and to divert Internet traffic.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Center received a communication from a third party stating that: (i) he did not want to renew the Disputed Domain Name <xvideoslive.co>, (ii) he does not use the Disputed Domain Name and (iii) that he would like to transfer the Disputed Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

Based on the evidence submitted, this Panel finds that the Disputed Domain Name <xvideoslive.co> is confusingly similar to the Complainant’s trademark XVIDEOS. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element. Furthermore, the addition of the term “live” does not change this finding.

Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.”

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the XVIDEOS trademark.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods or services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

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.

The fact that the Respondent reproduces the Complainant’s XVIDEOS trademark in the Disputed Domain Name with the term “live”, clearly demonstrates that the Respondent was aware of the Complainant’s XVIDEOS trademark when registering the Disputed Domain Name.

Furthermore, the fact that the Respondent, almost immediately upon registration of the Disputed Domain Name, started using the website under the Disputed Domain Name to provide services which are identical or similar to those provided by the Complainant under the XVIDEOS trademarks on the website connected to <xvideos.com>, evidences the Respondent’s bad faith.

The circumstances in the case before this Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and it has intentionally created a likelihood of confusion with the Complainant’s XVIDEOS trademark in order to attract Internet users for its own commercial gain.

Accordingly, the Panel finds that the Respondent intended to create a likelihood of confusion among the consuming public as to the source, sponsorship, affiliation or endorsement of the Respondent's website, according to paragraph 4(b)(iv) of the Policy.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name 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 Name <xvideoslive.co> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: March 16, 2020