Hammy Media, Ltd. and xHamster IP Holdings Ltd v. WhoisProtectService.net / PROTECTSERVICE, LTD.
Claim Number: FA1704001725933
Complainant is Hammy Media, Ltd. and xHamster IP Holdings Ltd (“Complainant”), represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, USA. Respondent is WhoisProtectService.net / PROTECTSERVICE, LTD. (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xhamstermania.com>, registered with EVOPLUS LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2017; the Forum received payment on April 7, 2017.
On April 10, 2017, EVOPLUS LTD confirmed by e-mail to the Forum that the <xhamstermania.com> domain name is registered with EVOPLUS LTD and that Respondent is the current registrant of the name. EVOPLUS LTD has verified that Respondent is bound by the EVOPLUS LTD 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 April 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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@xhamstermania.com. Also on April 11, 2017, 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 May 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 xHamster IP Holdings Ltd (“xHamster”) has received the following trademark registrations and has filed the following trademark registration applications upon which this Complaint is based for the mark XHAMSTER:
(1) Benelux Office of Intellectual Property Registration No. 0986331 for the work mark XHAMSTER.
(2) Application for Trademark Registration of XHAMSTER with the Registrar’s Office of Antigua and Barbuda, with application number 169/2015.
Both the Benelux Registration and the Antigua Application cover the following class numbers and list of goods and services:
Cl 09 Digital media, namely, downloadable video recordings, motion pictures, film clips and images featuring adult entertainment.
Cl 35 Promotional services provided via a website, namely, promotion of online third- party offers of adult entertainment, especially videos, images and sound recordings, on the Internet; promotion of online third-party offers by providing a Web site featuring hyperlinks to the Web sites of others in the field of adult entertainment.
Cl 38 Telecommunication services, namely, streaming of adult- oriented audio, visual and audiovisual material via a global computer network; transmission of voice, data and images; streaming and live streaming of audio and video content on the Internet; video broadcasting services over the Internet in the field of adult entertainment; providing on-line forums for transmission of messages among computer users concerning adult-themed materials; providing access to a website that gives computer users the ability to upload, post, show, display and tag adult- themed information, photographs, audio, and video clips; providing access to a social networking website featuring videos, photographs, images, text and other multimedia content for entertainment purposes; providing access to a website featuring information on love, romance and interpersonal relationships.
Cl 41 Entertainment services, via a website featuring adult entertainment; entertainment services, via a website featuring videos, photographs, film clips, and other multimedia materials in the field of adult entertainment; publication of on-line journals, namely, a blog and user message board featuring adult-oriented entertainment, information and stories; providing adult-oriented entertainment in the nature of live show performances.
Cl 42 Web-based hosting of digital adult entertainment content for others, especially images, videos, and sound-recordings, via the Internet.
Cl 45 Internet-based social networking services.
Hammy Media Ltd. (“Hammy”) is a licensee of xHamster and the current operator of the website at xHamster.com. The xHamster.com website is a website where users from around the world can upload their own pornographic videos and photographs and share them with others. Hammy and its predecessors in interest have been operating the adult content-website at the xHamster.com domain name and using the XHAMSTER trademark in commerce for the above referenced goods and services since May 24, 2007. Hammy or its predecessors in interest registered the xHamster.com domain name on or about April 2, 2007.
Previous UDRP panels have found that Complainants have rights in the XHAMSTER mark. See, e.g., Hammy Media, Ltd. and xHamster IP Holdings Ltd. v. Andrei Ivanov, FA1611001701886 (Forum Dec. 7, 2016) (“[T]he Panel finds that Complainant’s registration grants it rights in the XHAMSTER mark under Policy ¶4(a)(i).... [T]he 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.”); Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Domain Admin / Whois Privacy Corp., FA1611001704574 (Forum Dec. 31, 2016) (“[T]he Panel holds that Complainant’s BOIP registration grants it rights in the XHAMSTER mark under Policy ¶4(a)(i)... [T]he 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 XHAMSTER mark under Policy ¶4(a)(i).”); Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Privacy Services Privacy Services / Privacy Services, FA1612001706178 (Forum Jan. 16, 2017) (“The Panel determines 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 award it common law rights in the mark under Policy ¶4(a)(i).”).
FACTUAL AND LEGAL GROUNDS
To be entitled to the transfer of the domain name that is the subject of this Complaint (the “Infringing Domain”), Complainants must prove the following: (i) the Infringing Domain is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) Respondent has no rights or legitimate interests in respect of the Infringing Domain; and (iii) the Infringing Domain was registered and is being used in bad faith.
A. The Infringing Domain is Substantially Similar to Complainants’ XHAMSTER Mark
As set forth above, Complainants have registered and common law trademark rights in the XHAMSTER mark with which the Infringing Domain is confusingly similar. Complainants and their predecessors-in-interest first began using the XHAMSTER trademark in commerce on or about May 24, 2007. xHamster owns Benelux Trademark Registration No. 0986331 and has applied for a trademark in Antigua and Barbuda with application number 169/2015 for the goods and services set forth above, including, without limitation, the operation of a website for displaying adult-oriented videos and pictures. The registration is prima facie evidence that the mark is distinctive and capable of source identification. Additionally, the xHamster.com domain name was first registered on April 2, 2007.
The Infringing Domain registered by Respondent subsumes Complainants’ registered XHAMSTER trademark in its entirety. The xhamstermania.com Infringing Domain is simply Complainants’ XHAMSTER trademark followed by a generic term. “Mania” does nothing to distinguish the Infringing Domain from Complainants’ XHAMSTER trademark. The obvious similarity between the mark and the Infringing Domain is conclusive satisfaction of the requirement under the UDRP that the Infringing Domain be substantially similar to Complainants’ XHAMSTER mark. See, e.g., Tenza Trading Ltd. v. WhoIs Privacy Corp., FA1508001634997 (Forum Nov. 16, 2015) (“Respondent’s disputed domain names are confusingly similar to Complainant’s mark. They incorporate the mark in its entirety, adding only (in each case) a short suffix that does not detract from, and indeed may further suggest affiliation with, plaintiff and its products or services.”); Microsoft Corporation v Thong Tran Thanh, FA 1653187 (Forum Jan 21, 2016) (determining that confusing similarity exists where the disputed domain name contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); Am. Express Co. v. MustNeed.com, FA257901 (Forum June 7, 2004) (finding the respondent’s domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)).
There is no legitimate dispute that internet consumers are arriving at the Infringing Domain when they are attempting to find Complainants’ xHamster.com website. Almost 17% of all search traffic to the Infringing Domain comes from users searching for just “xhamster,” the top search term that leads to the Infringing Domain.
Previous panels have already found in favor of Complainants and have transferred the domain names xhamsterdeutsch.net and xhamsterdeutsch.biz to Complainants, domain names that are substantially the same as the Infringing Domains here. See Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Domain Admin / Whois Privacy Corp., FA1611001704574 (Forum Dec. 31, 2016) (Therefore, the Panel holds that both the <xhamsterdeutsch.net> and <xhamsterdeutsch.biz> domain names are confusingly similar to Complainant’s XHAMSTER mark under Policy ¶4(a)(i).”). Another panel has ordered the transfer of the domain name xhamster9.com. See Hammy Media, Ltd. and xHamster IP Holdings Ltd. v. Andrei Ivanov, FA1611001701886 (Forum Dec. 7, 2016).
However, there is significant additional evidence that not only is the Infringing Domain substantially similar to Complainants’ trademark, but that the substantial similarity was intended and is compounded by Respondent’s use of the Complainants’ trademark on the website at the Infringing Domain.
The Infringing Domain is being used in a manner identical to Complainants’ uses of their registered XHAMSTER trademark. Specifically, and without limitation, Respondent is using the Infringing Domain for a website that, ostensibly, allows users to watch adult-oriented videos. The Infringing Website prominently displays Complainants’ registered XHAMSTER trademark at the top of the page.
Complainants note that although the Infringing Website appears to allow users to watch videos, most attempts to actually click on a video to watch results in the user being directed to other websites that either attempt to install malware on the user’s computer or which are simply websites that look somewhat similar to the Infringing Website (and which also don’t allow users to watch videos), all of which goes to show that Respondent is intentionally misleading and attempting to damage those users that it draws to the Infringing Website, causing further damage to Complainants’ brand.
In a small percentage of cases, a user can actually be directed to a page where they can view the video they selected, and in many if not all cases those videos on the Infringing Website are either directly copied from Complainants’ xHamster.com website or are inline framing videos from the xHamster.com website. All of the foregoing confirms Respondent’s knowledge about Complainants’ website and XHAMSTER trademark and that Respondent intended specifically for the Infringing Domain to be substantially similar to Complainants’ registered mark.
Pursuant to the current WhoIs data, the Infringing Domain was registered on or about October 17, 2013. This was over six-and-a-half years after Complainants registered the xHamster.com domain name on April 2, 2007 and began using the XHAMSTER mark in commerce on May 24, 2007.
The Infringing Domain and the Infringing Website directly compete with Complainants’ services. A consumer looking for Complainants’ services at the Infringing Domain is likely to be confused by the Infringing Website and believe that Respondent is the operator of xHamster.com or that Complainant is the operator of the Infringing Website. This is because Respondent is using Complainants’ trademark and offering the same services offered by Complainants.
A comparison of the Infringing Domain and the registered XHAMSTER trademark illustrates that the Infringing Domain subsumes Complainants’ registered XHAMSTER trademark in its entirety. Further, both the trademark and the Infringing Domain are used in association with the display and distribution of adult-oriented videos and other content. Since the Infringing Domain and the registered XHAMSTER trademark are substantially similar and the Infringing Domain entirely subsumes the registered XHAMSTER mark, and since all are used in association with adult-oriented videos and other content, the Infringing Domain is likely to cause confusion with consumers.
B. Respondent Has No Legitimate Interest or Rights in the Infringing Domain
The registration of the Infringing Domain, on October 17, 2013, is well after Complainants began use of their XHAMSTER trademark in commerce in May of 2007.
It is commonly understood that .com domain names and simpler domain names without extraneous numbers or letters or generic words are more valuable and the first to be purchased. Since Complainants’ services and the website associated with the xHamster.com domain name are highly sought after, it is clear that Respondent knew that it had no legitimate rights or interest in registering the Infringing Domain which completely subsumes Complainants’ XHAMSTER mark. When attempting to register the Infringing Domain, it is certain that Respondent encountered Complainants’ website and knew that Complainants were the registrant of the xHamster.com domain name. It is clear that Respondent chose the Infringing Domain because the xHamster.com domain was already registered by Complainants, the xHamster.com website was popular and the Infringing Domain was substantially similar to and confusing with the XHAMSTER trademark, yet available.
Moreover, it is clear that Respondent knew about Complainants’ website and trademark when Respondent registered the Infringing Domains because of the worldwide popularity of the xHamster.com website. xHamster.com is currently the 81st most popular website in the world as ranked by Alexa.com and the 36th most popular website in the world as ranked by SimilarWeb.com. According to rank2traffic.com, xhamster.com has been ranked within the top 150 most popular websites in the world since early 2009 and almost continually in the top 100 most popular websites in the world since late 2009. According to Similarweb.com, xHamster.com had approximately 640 million mobile and desktop visits in February of 2017.
One cannot doubt that prior to launching Respondent’s website under the name “xhamster” that Respondent did an internet search for the term. When Respondent did so, it was presented with Complainants’ xHamster.com website and domain name, which put Respondent on notice that the XHAMSTER mark was protected. However, Respondent went forward with registering the Infringing Domain and starting services using Complainants’ trademark in direct competition with Complainants. Respondent, has gone so far as to even use videos from Complainants’ website on its Infringing Website. Respondent, from a clear look at the Infringing Website, did this with the intention of trading on the goodwill of Complainants.
Respondent does not have any rights to or legitimate interest in the Infringing Domain. Respondent obviously knew that it had no rights to the XHAMSTER mark before it began to use the website at the Infringing Domain. And given that Respondent is admittedly simply reframing or copying the videos from the xHamster.com website, or redirecting users to yet other random websites, Respondent’s Infringing Website is not a bona fide offering of goods or services. Consequently, Respondent is not, and cannot be deemed, to be using the XHAMSTER trademark with any bona fide offering of goods or services. Indeed, “[i]t is especially difficult to find a bona fide offering of goods when the [infringer] uses a domain name confusingly similar to a competitor’s mark.” L.F.P. Inc. v. Hustlertv.com, FA0201000-104134 (Forum Mar. 11, 2002), citing America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that it “would be unconscionable to find a bona fide offering of services in [an infringer’s] operation of web-site using a domain name which is confusingly similar to [trademark owner’s] mark and for the same business”); Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Furthermore, Respondent is not commonly known by the Infringing Domain. Quite to the contrary, Respondent makes no effort to identify itself as the operator of the Infringing Domain by using a privacy service for the WhoIs information.
As evidenced above and as is self-evident from a simple look at the Infringing Website, Respondent’s use of the Infringing Domain is strictly for commercial gain with the intent to divert consumers, and thus, Respondent cannot claim, nor can Respondent demonstrate, any legitimate noncommercial use or fair use of the Infringing Domain. Respondent’s sole intent is to commercially gain from the infringing use of Complainants’ trademark, which is evident from the Infringing Website.
In two previous UDRP proceedings with circumstances almost identical to those here, Panels have found that the respondents in those cases did not have rights or legitimate interests in the disputed domain names. See, Hammy Media, Ltd. and xHamster IP Holdings Ltd. v. Andrei Ivanov, FA1611001701886 (Forum Dec. 7, 2016) (setting forth six considerations for finding that respondent did not have rights or legitimate interests, all of which are directly applicable here); Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Domain Admin / Whois Privacy Corp., FA1611001704574 (Forum Dec. 31, 2016) (same).
In stark contrast to Respondent, Complainants have a legitimate interest and right in the Infringing Domain. Through Complainants’ (and their affiliates’ and predecessors’) long and consistent use, the XHAMSTER trademark has become well-known and recognized by consumers throughout the world. Since 2007, Complainants and their predecessors have marketed and advertised their services around the world under the XHAMSTER mark. Complainants’ efforts have resulted in xHamster.com becoming one of the most popular websites in the world, let alone one of the most popular adult content websites in the world. The xHamster.com website is colloquially known as a “tube site.”
The xHamster.com website is regularly discussed in mainstream news outlets. For example, on July 12, 2016, Glamour published an article an article about how, after the release of the videogame Pokémon Go, Pokémon pornography has become the top searched term on xHamster.com. On June 14, 2016, the International Business Times published an article about how xHamster decided to ban all videos that feature rape or non-consensual sex. In May of 2016, xHamster.com garnered significant attention for releasing the first major pornography reality television show, The Sex Factor. The Sex Factor, which has become incredibly popular online with over 10 million visitors a month despite only being released in May of 2016, is marketed as “An xHamster original series.” Around February and March of 2017, xHamster was in the news yet again when it announced it was looking for a Donald Trump lookalike to star in a pornographic film.
Complainants and their affiliates have even begun brewing and selling an XHAMSTER branded beer.
In light of the vast and well-known use of the registered XHAMSTER trademark by Complainants, it is clear that not only was Respondent aware of the marketing value of Complainants’ registered XHAMSTER mark and the consumer recognition of the mark, but Respondent was intentionally capitalizing on the strength of the mark by offering the same exact services to consumers. Complainants have not permitted or authorized Respondent to engage in these activities. This is classic trademark infringement and trading off the goodwill of another’s trademark. Therefore, Respondent has no legitimate interest or right in the Infringing Domain.
C. Respondent’s Registration and Use of the Infringing Domain Was in Bad Faith
Complainants have already referenced in passing above the many ways in which it is certain that Respondent registered the Infringing Domain in bad faith and has since been using the Infringing Domain in bad faith. Complainants now focus on these issues. Respondent has used the Infringing Domain to point to a video streaming website that is in direct competition with Complainants’ xHamster.com website. Respondent goes so far as to imbed videos taken from the xHamster.com website in the Infringing Website.
By using the Infringing Domain and by using Complainants’ trademark on the Infringing Website, Respondent has intentionally attracted, for commercial gain, Internet users to the Infringing Website by creating confusion with Complainants’ registered XHAMSTER mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and domain names.
Evidence of Respondent’s intent is illustrated by the fact that Respondent is using a domain name that entirely subsumes the registered XHAMSTER mark to divert Internet users to a website that features a service substantially similar to Complainants’ services (in fact, Respondent offers a service that it copies from Complainants’ service). It is also clear that Respondent has income from its website as it serves advertisements throughout the Infringing Website and trades traffic with other websites. Therefore, Respondent is commercially benefitting from the likelihood of confusion it has created through its use of the registered XHAMSTER mark and its actions evidence bad faith use. See, e.g., MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith where the infringer registered a domain name confusingly similar to the trademark owner’s mark and the domain name was used to host a commercial website that offered similar services offered by the trademark owner under its mark); Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding bad faith where infringer registered a domain name to infringe on trademark owner’s goodwill and attract Internet users to infringer’s website); State Fair of Texas v. Granbury.com, FA 95288 (Forum Sept. 12, 2000) (same); Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where infringer directed Internet users seeking trademark owner’s website to its own website for commercial gain).
Furthermore, based on the long prior use and worldwide awareness of Complainants’ XHAMSTER mark and the facts that Respondent registered the Infringing Domain and used the XHAMSTER mark to attract Internet users to its Infringing Website, it is clear that Respondent had actual knowledge of Complainants’ rights in the XHAMSTER mark when Respondent registered the Infringing Domain. As detailed above, Complainants registered the xHamster.com domain name over eight-and-a-half years before Respondent registered the Infringing Domain and the xHamster.com website has been one of the most popular websites in the world since before Respondent registered the Infringing Domain. Respondent knew that the xHamster.com domain name was registered and knew the strength of the XHAMSTER mark before it registered the Infringing Domain. Respondent also knew that Complainants offered identical or at least similar services to consumers on the xHamster.com website under the XHAMSTER mark. All of the foregoing confirms the bad faith of Respondent when it registered and used the Infringing Domain. See, e.g., Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the infringer was “well-aware of the [trademark owner’s] mark at the time of registration”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”); Kmart v. Kahn, FA 127708 (Forum Nov. 22, 2002) (same); Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent “actual knowledge of Complainant's mark when registering the disputed domain name”).
To the extent that there is any doubt that Respondent knew about Complainants’ mark (which is virtually impossible given Respondent is directly ripping off Complainants on the Infringing Website), the inference that Respondent knew or should have known can be inferred given that Complainants’ website was operational since long before Respondent’s registration of the Infringing Domain, it prominently displayed Complainants’ trademarks, was a high traffic site and commonly known in the marketplace. See Tenza Trading Ltd. v. WhoIs Privacy Corp., FA1508001634997 (Forum Nov. 16, 2015) (“Here, it can be inferred that Respondent knew or should have known of Complainant’s use of the mark, as Complainant’s website was operational since long before Respondent’s registration of the disputed domain names, prominently displayed Complainant’s mark, and was a high traffic site and commonly known in the marketplace.”); Samsonite Corp. v. Colony Holding, FA 94313 (Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
It is inconceivable that Respondent was unaware of Complainants’ XHAMSTER mark prior to its registration of the Infringing Domain. Yet, Respondent proceeded to register the Infringing Domain and draw customers away from Complainants for commercial gain by using Complainants’ mark in a confusing manner. There is no other reason or purpose for Respondent’s use and registration of the Infringing Domain and Respondent’s use of the XHAMSTER mark. Accordingly, Respondent’s registration and use of the Infringing Domain and Respondent’s use of the XHAMSTER mark was and is in bad faith and in willful disregard of Complainants’ rights. Moreover, Respondent’s actions can be interpreted to be motivated by the desire to directly trade off the goodwill of Complainants’ trademark.
On the basis of the foregoing, there is undeniable evidence of bad faith, including, without limitation, under two of the four circumstances set forth in UDRP Policy ¶4(b). Specifically, Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor (UDRP Policy ¶4(b)(iii)) and Respondent has intentionally attempted to attract, by use of the Infringing Domain and for commercial gain, Internet users to the Infringing Website by creating a likelihood of confusion with Complainants’ mark as to the source, affiliation, or endorsement of the Infringing Website (UDRP Policy ¶4(b)(iv)).
Two prior UDRP decisions concerning Complainants referenced multiple times above are again instructive as they are directly on point. See Hammy Media, Ltd. and xHamster IP Holdings Ltd. v. Andrei Ivanov, FA1611001701886 (Forum Dec. 7, 2016) (setting forth two separate reasons for why xhamster9.com was registered and used in bad faith); Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Domain Admin / Whois Privacy Corp., FA1611001704574 (Forum Dec. 31, 2016) (“[I]n view of Respondent’s registration of the disputed <xhamsterdeutsch.net> and <xhamsterdeutsch.biz> domain names using the XHAMSTER mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.”).
In light of the above, Complainants contend that they have demonstrated (a) that the Infringing Domain is substantially similar to, and entirely subsumes, Complainants’ registered XHAMSTER mark, (b) that Respondent has no legitimate interest in the Infringing Domain, and (c) that Respondent has registered and used the Infringing Domain in bad faith. Accordingly, Complainants respectfully request that the Infringing Domain be transferred to Complainant xHamster IP Holdings Ltd.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Preliminary Issue: Multiple Complainants
There are two Complainants in this Proceeding. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.”
xHamster IP Holdings Ltd owns the mark in question. xHamster IP Holdings Ltd licenses the mark to Hammy Media, Ltd. 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.
Under the facts of this case, it is appropriate to have both parties as complainants in this proceeding due to their licensing agreement. There is a sufficient nexus to treat the two complainants as a single entity.
Complainant operates an adult entertainment website, offering videos, images and sound recordings. Complainant registered the XHAMSTER mark with the Benelux Office for Intellectual Property (“BOIP”) (Reg. No. 0986331, filed Nov. 19, 2015, registered Dec. 3, 2015). Registration with the BOIP (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. 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.). Where a mark has achieved the status of “registered” with a governmental entity, rights date back to the filing date of the mark. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Complainant has established rights in the XHAMSTER mark under Policy ¶4(a)(i) that date back to November 19, 2015.
Complainant also claims common law rights in the mark. Complainant first used the mark in commerce in 2007. A complainant has common law rights in a mark when it demonstrates enough factors to show it has achieved the 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.” Finding “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 provided evidence of first use with the WHOIS information for its <xhamster.com> domain name and a screenshot of its webpage from September 5, 2007. This certainly predates the disputed domain name (which was created on October 10, 2013). Complainant has provided evidence concerning its statistics and media coverage, about its continued use in of the XHAMSTER mark and the success of its domain name (<xhamster.com>). Complainant’s common law rights in XHAMSTER were recognized by the panel in Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Privacy Services Privacy Services / Privacy Services, FA 1706178 (Forum Jan. 16, 2017) and by this same Panel in Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Reneil Montoya / Sploom LLC, FA1704001725444 (May 8, 2017). Complainant has common law rights in the mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <xhamstermania.com> domain name is confusingly similar because it fully incorporates the XHAMSTER mark and merely adds a generic term and the gTLD “.com.” Adding a generic or descriptive term to a mark does not sufficiently distinguish a disputed domain name from a mark under Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Respondent’s <xhamstermania.com> domain name is confusingly similar under a Policy ¶4(a)(i) analysis because it includes Complainant’s entire mark and merely adds the generic term “mania” along with the gTLD “.com.”
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent has no rights or legitimate interests in <xhamstermania.com> because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the XHAMSTER mark. Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, especially where a privacy service was used. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Respondent’s true identity still remains unknown because of this registrar’s internal policies. The WHOIS information identifies Respondent as “WhoisProtectService.net / PROTECTSERVICE, LTD.” There is no obvious relationship between that name and the disputed domain name. Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the disputed domain name to redirect users to a website offering services directly competing with Complainant. Using a confusingly similar domain name to offer competing services is evidence of a lack of a bona fide offering of goods or services, or legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The disputed domain name resolves to a website offering adult entertainment videos. Some of the videos offered on Respondent’s domain name are copies of Complainant’s videos. Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent did not acquire any rights to the domain name upon registering it because Respondent used a WHOIS privacy service. This means Respondent did not (and still does not) publicly associate itself with the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims’ Respondent registered and is using the <xhamstermania.com> domain name in bad faith because it offers services in direct competition with Complainant. Using a confusingly similar domain name to offer competing services demonstrates bad faith registration and use. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Respondent disrupts Complainant’s business by redirecting users seeking Complainant by using a confusingly similar domain to offer competing adult entertainment services. It seems evident Respondent attempted to disrupt Complainant’s business and commercially benefit off Complainant’s mark in bad faith pursuant to Policy ¶¶4(b)(iii) and (iv).
Complainant claims Respondent commercially benefits by offering advertisements on the resolving website for the <xhamstermania.com> domain name. Using a disputed domain name to obtain a commercial benefit is evidence of bad faith registration and use. See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum April 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶4(b)(iv).”). As demonstrated by the screenshots Complainant provided, Respondent advertises for multiple websites adult entertainment industry products and services. Respondent does this to receive click through fees for commercial gain. Respondent acted in bad faith when registering and using the disputed domain name.
Complainant claims Respondent had actual knowledge of Complainant’s mark. It appears to this Panel that Respondent had actual knowledge of Complainant's rights in the mark before registering the disputed domain name. Actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent must have had actual knowledge of the XHAMSTER mark because of Complainant’s popularity, and because Respondent makes prominent use of Complainant’s mark and services on the resolving webpage, and even by using some of Complainant’s video content. Respondent must have had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).
Finally, Respondent registered the domain names using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use of the disputed domain names. Respondent has done nothing to rebut that presumption. Therefore, this Panel will find bad faith registration and use on those grounds alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <xhamstermania.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, May 11, 2017
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