Hammy Media, Ltd. and xHamster IP Holdings Ltd v. ANTON KONOVALOV
Claim Number: FA1704001728899
Complainant is Hammy Media, Ltd. and xHamster IP Holdings Ltd (“Complainant”), represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, USA. Respondent is ANTON KONOVALOV (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xhamsterhq.com>, registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2017; the Forum received payment on April 25, 2017.
On April 27, 2017, eNom, LLC confirmed by e-mail to the Forum that the <xhamsterhq.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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”). eNom, LLC further confirmed that the registration agreement is in English.
On April 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@xhamsterhq.com. Also on April 27, 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.
A timely Response was received and determined to be complete on May 17, 2017.
On May 23, 2017, Complainant submitted a document titled “Complainants’ additional written statement”. This submission was received after the deadline for submissions and is not considered to be in compliance with Supplemental Rule 7.
On May 24, 2017, Respondent submitted a document titled “Respondents’ additional written statement”, filed in a timely manner according to the Forum’s Supplemental Rule 7.
On May 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
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). 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. Respondent’s <xhamsterhq.com> is confusingly similar to Complainant’s mark because it simply appends the generic term “HQ” and the gTLD “.com” to the fully incorporated mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its XHAMSTER mark in any fashion, and Respondent is not commonly known by the disputed domain name. Further, Respondent has used the domain name to resolve to a website that directly competes with Complainant’s business, displays Complainant’s marks and contains links to Complainant’s website. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the <xhamsterhq.com> domain name in bad faith. Respondent attempts to disrupt the business of Complainant - under Policy ¶ 4(b)(iii) - by diverting Complainant’s customers to Respondent’s webpage by appropriating Complainant’s mark in the disputed domain name. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the XHAMSTER mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the mark of Complainant.
B. Respondent
Respondent registered the disputed domain name on September 13, 2010.
Respondent has rights and legitimate interests in the disputed domain name as a participant in the “xHamster affiliate program”. Respondent is authorized to use Complainant’s XHAMSTER mark through an agreement with Complainant whereby Respondent may display links to Complainant’s website for a fee.
C. Additional Submissions
In its additional submission, Complainants state, that Respondent admits, that he registered the domain name at dispute with the explicit knowledge of Complainants’ xhamster.com website and the registered XHAMSTER trademark. According to Complainant this explicit intention to trade off the names of Complainants’ further constitutes insurmountable evidence that Respondent had no legitimate interest or rights in the domain name at dispute. This also presents further evidence that Respondent registered and used the domain name at dispute in bad faith.
Complainants further contend, that they have never allowed anyone, including Respondent, to register any domain name containing the registered XHAMSTER trademark, regardless of whether the domain name operator was joining Complainants’ affiliate program. Respondent registered the domain name at dispute without Complainants’ permission.
Complainants admit, that the domain name at dispute was added to Complainants’ affiliate program. However, the affiliate program contains thousands of domain names and affiliates and websites are edited to the program through an automated system. Complainants do not intend or desire to accept any domain names or affiliates into the affiliate program that infringe Complainants’ rights. The terms and conditions of Complainants’ affiliate program do not authorize Respondent to use an infringing domain name with the affiliate program.
Finally Complainants contends, that they did not and do not have any agreement with Respondent to have a link on the infringing website to xhamster.com website for the fee.
In its additional submission, Respondent states, that he checked for trademark violation before registering domain name at dispute. In 2010 the XHAMSTER trademark was not existent. However, Respondent admits that he registered the domain name at dispute with the knowledge of Complainants’ xhamster.com website in 2010. Respondent chose a domain name with the word “xhamster”, because he was participating in xhamster affiliate program and sending traffic including and mostly to xhamster video pages. According to Respondent the terms and conditions of affiliate program do not prohibit affiliates to use such domain names.
The Panel finds that:
(1) The domain name <xhamstehq.com> is confusingly similar to Complainants’ common law trademarks.
(2) The Respondent has not established rights or legitimate interests in the domain name <xhamsterhq.com>.
(3) The Respondent has registered and is using the domain name <xhamsterhq.com> 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 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.
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>.
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.”
Preliminary Issue: Deficient Additional Submission
Although Complainant has provided an Additional Submission that was deficient because this submission was received after the deadline for submissions and the Forum did not consider this submission to be in compliance with Supplemental Rule #7, the Panel may decide to consider Respondent’s submission. See Strum v. Nordic Net Exch. AB, FA 102843 (Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). Likewise the Panel has chosen to consider Complainant’s Additional Submission.
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). 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. The Panel also notes the WHOIS information provided by Complainant that indicates Complainant registered the< xhamster.com> domain name on April 2, 2007. Complainant 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. 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 <xhamsterhq.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 the generic term “hq” and the gTLD “.com” 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). See also Microsoft orporation 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). Therefore, the Panel finds that Respondent’s <xhamsterhq.com> domain name is confusingly similar to Complainant’s XHAMSTER mark under Policy ¶ 4(a)(i).
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise allowed Respondent to use its XHAMSTER mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the <xhamsterhq.com> WHOIS information lists “ANTON KNONOVALOV” as the registrant. Therefore, the Panel holds that Respondent is not commonly known by <xhamsterhq.com>.
Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is using the resolving website in a competitive manner, to conjure a false association with Complainant or to pass itself off as Complainant. Such use may not be construed as a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Here, Respondent’s website contains links to Complainant’s website and displays Complainant’s XHAMSTER mark prominently to deceive Internet users into thinking that Respondent is affiliated with Complainant. See Compl., at Attached Annex 10 (displaying the message “Xhamster HQ! Most poplar tube videos from xHamster.”). As such, the Panel is of the view that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain under Policy ¶¶ 4(c)(i) and (iii).
Respondent argues that it registered the disputed domain name as part of Complainant’s XHAMSTER affiliate program in accordance with the terms and conditions of the program. Rights and legitimate interests in a disputed domain name may be established by a respondent when the respondent submits evidence that it was a part of a complainant’s affiliate program. See Educ. Directories Unlimited v. Reflex Publ’g, Inc., FA 142378 (Forum Mar. 26, 2003) (finding that the respondent was making a bona fide use of the domain name as the complainant had a business relationship with the respondent, where the respondent was part of its affiliate program and the complainant sought jointly to exploit the domain name by paying for click-through traffic to the complainant’s site generated by the respondent). Here, Respondent offers no evidence of this purported affiliate agreement or evidence that it was commonly known by <xhamsterhq.com>. Respondent also does not support its claim that Complainant agreed to allow Respondent to post links to Complainant’s webpage on the disputed domain name’s resolving webpage. Therefore, the Panel holds that Respondent was not authorized to use the confusingly similar domain name.
Complainant asserts that Respondent’s confusingly similar domain name disrupts its business by attempting to redirect Complainant’s potential customers to Respondent’s site . A respondent disrupts a complainant’s business and shows bad faith under Policy ¶ 4(b)(iii) when a respondent appropriates a complainant’s mark for the purpose of diverting a complainant’s customers to a respondent’s competing business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). As such, the Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant contends Respondent has registered and is using the <xhamsterhq.com> in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the XHAMSTER mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends that <xhamsterhq.com> creates confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of attracting Internet traffic and benefitting commercially. Respondent mentions Complainant’s XHAMSTER mark and business explicitly and features links to Complainant’s website on its resolving website. As such, the Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that in light of the fame and notoriety of Complainant’s XHAMSTER mark, it is inconceivable that Respondent could have registered the <xhamsterhq.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, actual knowledge of a Complainant's rights in the mark prior to registering the disputed domain name 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). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Here, Complainant’s XHAMSTER mark has created significant good will and consumer recognition around the world and it has maintained a position in the top 150 websites globally. Respondent’s links to Complainant’s website are also evidence of Respondent’s actual knowledge. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when it was registered and subsequently used.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xhamsterhq.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: May 30, 2017
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