Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Maxim Ermak
Claim Number: FA1704001728900
Complainant is Hammy Media, Ltd. and xHamster IP Holdings Ltd (“Complainant”), represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, U.S.A. Respondent is Maxim Ermak (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xhamster.one>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically April 25, 2017; the Forum received payment April 25, 2017.
On April 27, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <xhamster.one> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and 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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@xhamster.one. Also on April 28, 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 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 issues 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’s Contentions in this Proceeding:
Complainant established rights in the XHAMSTER mark with which the disputed domain name is confusingly similar. Complainant registered the XHAMSTER mark with the Benelux Office for Intellectual Property (Registration No. 0986331 on May 24, 2007). Respondent’s <xhamster.one> domain name is confusingly similar to Complainant’s XHAMSTER mark because it incorporates the mark in its entirety and only adds a top level domain (“TLD”) “.one.”
Respondent has no rights or legitimate interests in the disputed domain name because Respondent cannot demonstrate that he is commonly known by the disputed domain name or that he is using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Complainant did not authorize Respondent to use its XHAMSTER mark. Respondent knew about Complainant’s rights when registering the disputed domain name because the Complainant’s mark is well known. Respondent registered the disputed domain name with the intention of trading on the goodwill of Complainant for the purpose of diverting Internet users for Respondent’s commercial gain.
Respondent registered and is using the disputed domain name in bad faith because Respondent is using the disputed domain name to attract Internet users to Respondent’s website for commercial gain by creating confusion, with Complainant’s XHAMSTER mark, as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Respondent is also using the disputed domain name to disrupt the business of Complainant, who is Respondent’s competitor. Furthermore, there is advertising on Respondent’s website from which Respondent presumably draws an income and such advertising supports a showing of bad faith. Finally, Respondent’s knowledge of Complainant’s rights in the XHAMSTER mark supports a finding of bad faith.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the disputed domain name September 22, 2015.
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: xHamster IP Holdings Ltd. and Hammy Media, Ltd. Complainant argues that Hammy Media operates the website at xHamster.com and has done so since its incorporation. In or about October 2015, Hammy assigned all its rights in and to the XHAMSTER trademark to xHamster IP Holdings Ltd. At the same time, xHamster licensed the XHAMSTER trademark back to Hammy for use on the XHamster.com website and related ventures. Complainant argues that Hammy and xHamster are affiliated companies with similar owners and ultimate control. Accordingly, Complainant believes that they should be treated as one complainant.
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.”).
This Panel accepts that the evidence in the Complaint shows a sufficient nexus or link between the Complainants and treats them as a single entity in this proceeding. Complainants will be collectively referred to as “Complainant” in this Decision.
FINDINGS:
Complainant established rights to and legitimate interests in the disputed domain name and the mark contained in its entirety within it.
Respondent has no such rights or legitimate interests.
Respondent registered a disputed domain name that is both identical to and confusingly similar to Complainant’s protected mark, which is contained in its entirety within it.
Respondent registered and uses the disputed domain name 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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant established rights in the XHAMSTER mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the Benelux Office for Intellectual Property. See Compl. at attached Annex 3 (registration number 0986331, registered March 12, 2015). Generally, panels find that a complainant can be found to have established rights in a mark if the complainant registered that mark with a trademark authority. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Accordingly, the Panel finds that Complainant’s registration of the XHAMSTER mark with the Benelux Office for Intellectual Property established rights under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <xhamster.one> is identical to Complainant’s XHAMSTER mark because the disputed domain name incorporates the mark in its entirety and only adds a TLD. The Panel finds that incorporating a registered mark in its entirety and adding a TLD is not sufficient to distinguish the mark from the disputed domain name under Policy ¶ 4(a)(i). See Fossil Group, Inc. v. Enadin Kucevic, FA 1599092 (Forum Jan. 24, 2015) (“The Panel agrees that the addition of “.watch” to the mark in forming this domain name illustrates how confusingly similar the disputed domain name is pursuant to Policy 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is identical and confusingly similar to Complainant’s mark according to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is identical to and confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 first asserts that Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s XHAMSTER mark. The Panel looks to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name when no other evidence is offered by Respondent. 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)([iii]), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel finds that the WHOIS information on record lists the registrant as “Maxim Ermak” and this person is not commonly known by the disputed domain name. Furthermore, a lack of evidence that Respondent is authorized to use Complainant’s mark supports a finding that Respondent has no rights or legitimate interests in the disputed domain name. 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Next, Complainant argues that Respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii), respectively. Complainant argues that Respondent is attempting to divert Internet users to Respondent’s pornographic website by using the disputed domain name, which is identical to Complainant’s well-known XHAMSTER mark. The Panel notes that Respondent hosts a pornographic website at the disputed domain name and is therefore offering the same services as Complainant. See Compl. attached at Annex 9. Furthermore, the Panel notes that Respondent’s website derives some of its content from Complainant’s website itself. See Compl. attached at Annex 10. Typically, panels have found that such a use precludes a bona fide offering of goods or services or legitimate non-commercial or fair use of a disputed domain name. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use). Consequently, the Panel finds that Respondent has not provided a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent is using the disputed domain name to disrupt traffic to Complainant’s website and accrue commercial gain for its own purposes. Complainant argues that Respondent registered the domain name in bad faith according to Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). The Panel finds that the disputed domain name is identical to Complainant’s mark and that it links to a website that offers the same services as Complainant’s website. See Compl. at attached Annex 9. The Panel finds that Respondent’s use of a domain name identical to Complainant’s mark to link to a website offering services identical to Complainant’s services supports a finding of bad faith. See Jerie v. Burian, FA 795430 (Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Complainant also contends that Respondent had actual and/or constructive knowledge of Complainant’s rights in the XHAMSTER mark, due to Complainant’s long prior use and worldwide awareness. Complainant argues that such knowledge indicates Respondent’s bad faith under Policy ¶ 4(a)(iii). While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here finds based on the actual nominal use in the disputed domain name of Complainant’s protected mark plus the use made of the disputed domain name that Respondent’s conduct shows actual notice of Complainant's mark and thus Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xhamster.one> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 6, 2017
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