Hammy Media, Ltd and xHamster IP Holdings Ltd v. ANDREI IVANOV
Claim Number: FA1611001701886
Complainant is Hammy Media, Ltd and xHamster IP Holdings Ltd (“Complainant”), represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, USA. Respondent is ANDREI IVANOV (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xhamster9.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2016; the Forum received payment on November 7, 2016.
On November 9, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <xhamster9.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@xhamster9.com. Also on November 10, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant has registered the XHAMSTER mark with the Benelux Office for Intellectual Property (“BOIP”) (Reg. No. 0986331, filed Nov. 19, 2015, registered Dec. 3, 2015), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Annex 3. Complainant also has common law rights in the mark based off the secondary meaning it has created in the XHAMSTER mark dating back to the first use of the <xhamster.com> domain name in 2007. See Compl., at Attached Annexes 5, 6. Respondent’s <xhamster9.com> domain name is confusingly similar to the XHAMSTER mark because it merely adds the number “9” and the “.com” generic top-level domain (“gTLD”) to the full mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwised authorized Respondent to use its XHAMSTER mark or any of the adult-oriented material Complainant hosts on its domain name. Respondent is not commonly known by <xhamster9.com> and has been using the domain name to host Complainant’s mark and videos in an effort to directly compete with them. See Compl., at Attached Annexes 9–11. Such competing use cannot be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent has registered and is using the <xhamster9.com> domain name in bad faith. Respondent is purposely attempting to divert Internet users seeking Complainant, in a bad faith attempt to disrupt Complainant’s business and achieve commercial gain. Complainant’s mark (as associated with its <xhamster.com> website) is so popular that Respondent surely had knowledge of the mark when it registered the disputed domain name. See Compl., at Attached Annexes 12–20 (statistics regarding the use of Complaiant’s site). Respondent also expressly acknowledges that “We collect the best from [XHAMSTER] and more xxx tubes. We do not host or own content on this site.” See Compl., at Attached Annex 9.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainants are companies in Cyprus and Antigua engaged in the operation
of the Xhamster website and related goods and services.
2. Complainant has registered the XHAMSTER mark with the Benelux Office for Intellectual Property (“BOIP”) (Reg. No. 0986331, filed Nov. 19, 2015, registered Dec. 3, 2015) and accordingly has registered trademark rights in XHAMSTER.
3. Complainant also has common law trademark rights in the XHAMSTER mark based on the secondary meaning it has created in the XHAMSTER mark dating back to the first use of its <xhamster.com> domain name in 2007.
4. Respondent registered the <xhamster9.com> domain name on November 19, 2014.
5. Respondent has used the disputed domain name to resolve to a website that displays Complainant’s XHAMSTER mark and adult-oriented material that Complainant hosts on its own website at www.xhamster.com.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Hammy Media, Ltd., and xHamster IP Holdings Ltd. Complainants argue that a sufficient nexus exists between them so that they should be treated as a single entity in this proceeding. Complainants claim that in October 2015, Hammy Media, Ltd. assigned all its rights in the XHAMSTER mark to xHamster IP Holdings Ltd.; and that xHamster IP Holdings Ltd. simultaneously licensed the XHAMSTER mark back to Hammy Media, Ltd. for its use on <xhamster.com>. See Compl., at Attached Annex 1.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. Accordingly, it will treat them all as a single entity in this proceeding and will hereafter refer to them collectively as “Complainant.”
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends it has registered its XHAMSTER mark with the BOIP (Reg. No. 0986331, filed Nov. 19, 2015, registered Dec. 3, 2015), and that it has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Annex 3. A BOIP registration can sufficiently establish rights in a mark. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (Holding Complaint’s registration of the REKOVELLE mark with the BOIP established its rights in the mark. “At this stage of the proceeding, Complainant merely has to show it has SOME rights, not that its rights are superior to Respondent’s rights. Complainant has sufficient rights in the REKOVELLE mark pursuant to Policy ¶4(a)(i).”). Panels have also found that registration with a governmental authority confers rights in a mark, even when the registration is not from the governmental authority of the country in which a respondent is operating. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Thus, the Panel finds that Complainant’s registration grants it rights in the XHAMSTER mark under Policy ¶ 4(a)(i).
Complainant further contends that it has common law rights in the XHAMSTER mark based on its use of the mark on its <xhamster.com> website since 2007. Prior panels have found that a complainant has common law rights in a mark when it has demonstrated enough factors to show it has achieved necessary secondary meaning in the mark. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created…Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as Mar. 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH”.). Complainant has provided screen shots of its adult-oriented website allegedly taken on September 5, 2007. See Compl., at Attached Annex 6. The Panel also notes the WHOIS information provided by Complainant that indicates Complainant registered the <xhamster.com> domain name on April 2, 2007. See Compl., at Attached Annex 5. Complainants has provided other evidence, including statistics and media coverage, about its continued use of the XHAMSTER mark and the success of its domain name (<xhamster.com>) that is identical to the mark. See Compl., at Attached Annexes 7, 8, 13–15. As such the Panel finds that Complainant’s operation of a domain name identical to the XHAMSTER mark since 2007, and the various media coverage of Complainant is sufficient to establish its common law rights in the mark under Policy ¶ 4(a)(i) and the Panel so finds.
The second issue that arises is whether the disputed <xhamster9.com> domain name is identical or confusingly similar to Complainant’s XHAMSTER mark. Complainant argues that the domain name is confusingly similar to its XHAMSTER mark. Complainant submits that Respondent has merely added a single “9” and a gTLD to its wholly incorporated XHAMSTER mark, and that such additions do nothing to alleviate the confusing similarity that is otherwise present. Prior panels have agreed with Complainant that a respondent’s domain name is confusingly similar to a complainant’s mark when it merely add a single number and a gTLD. See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1” and the “.com” gTLD). Therefore, the Panel finds that Respondent’s <xhamster9.com> domain name is confusingly similar to Complainant’s XHAMSTER mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s XHAMSTER mark and to use it in its domain name and has added the number 9 which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on November 19, 2014;
(c) Respondent has used the domain name to resolve to a website that displays Complainant’s XHAMSTER mark and adult-oriented material Complainant hosts on its own website;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <xhamster9.com> domain name. Complainant submits that it has not licensed or otherwise authorized Respondent to use its XHAMSTER mark or any of the content on <xhamster.com> in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name in question lists “ANDREI IVANOV” as the registrant. See Compl., at Attached Annex 2. Previous panels have inferred that a respondent is not commonly known by a domain name based on the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by the <xhamster9.com> domain name;
(f) Complainant further submits that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using <xhamster9.com> to compete directly with Complainant’s adult-oriented website on <xhamster.com>, and that Respondent expressly acknowledges it is taking adult-oriented material from Complainant’s website in order to pass itself off as XHAMSTER. The Panel notes multiple (redacted) screen captures of Respondent’s alleged use of the disputed domain name. See Compl., at Attached Annexes 9–11. Prior panels have held that directly competing with the complainant at a domain name confusingly similar to its mark or a respondent attempting to pass itself off as the complainant does not confer any rights or legitimate interests in the disputed domain name. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Accordingly, the Panel finds that Respondent’s use of the <xhamster9.com> domain name does not confer any rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. Complainant asserts that Respondent has registered <xhamster9.com> primarily for the purpose of disrupting the business of a competitor and that Respondent has intentionally attempted to attract Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s mark as to the source, affiliation, or endorsement. Panels have held that a respondent using a domain name confusingly similar to a complainant’s mark to compete directly with the complainant can be bad faith under Policy ¶¶ 4(b)(iii) or (iv). See Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to benefit commercially from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Complainant submits that it operates a website featuring adult-oriented material at <xhamster.com> where it extensively features the XHAMSTER mark. See Compl., at Attached Annex 7. Complainant further asserts that Respondent is directly competing with it, and has provided (redacted) screen shots of Respondent allegedly offering adult-oriented material at the disputed domain name. See Compl., at Attached Annexes 9–11. Thus, the Panel finds that Respondent’s registration of <xhamster9.com> was primarily for the purpose of disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii), and/or Respondent’s use of the <xhamster9.com> domain name is a bad faith attempt to gain commercially under ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had actual knowledge of its rights in the XHAMSTER mark when it registered the <xhamster9.com> domain name. Complainant first argues that the XHAMSTER mark and the <xhamster.com> domain name had achieved notoriety and fame before Respondent registered the <xhamster9.com> domain name and that Respondent must have had notice of the trademark. Complainant has provided numerous annexes as evidence that demonstrate the prevalence of its XHAMSTER mark. See Compl., at Attached Annexes 5–7,12–20. Panels have held that while the UDRP does not recognize constructive notice alone as sufficient grounds to find a Respondent in bad faith, the panel may infer the respondent had actual knowledge based on the fame of a mark and the respondent’s operation in the same field of business. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant also submits that Respondent expressly acknowledges Complainant on its resolving website by stating, “We collect the best from [XHAMSTER] and more xxx tubes. We do not host or own content on this site.” Compl., at Attached Annex 9. Panels have also found that a respondent hosting the videos of a complainant can establish actual knowledge and thus bad faith under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Accordingly, as the Panel finds that Respondent had actual notice of Complainant’s XHAMSTER mark, it finds that Respondent registered the <xhamster9.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xhamster9.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 7, 2016
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