Hammy Media, Ltd. and xHamster IP Holdings Ltd v. WhoisProtectService.net / PROTECTSERVICE, LTD.
Claim Number: FA1706001736063
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 <xhamster-video.com>, (‘the Domain Name’ registered with Danesco Trading Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2017; the Forum received payment on June 15, 2017.
On June 19, 2017, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <xhamster-video.com> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name. Danesco Trading Ltd. has verified that Respondent is bound by the Danesco Trading 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 June 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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-video.com. Also on June 20, 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 July 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarised as follows:
Complainant registered the mark XHAMSTER for, inter alia, entertainment and internet related services in Benelux in 2015. The xhamster.com web site is a website where users can upload their own pornographic videos and photographs and share them with others. Complainant and its predecessors in interest have been using the XHAMSTER mark in commerce for such services since 2007.
The Domain Name is confusingly similar to the XHAMSTER mark, subsuming Complainant’s XHAMSTER mark in its entirety merely adding the generic term ‘video’ which does not distinguish the Domain Name from Complainant’s trade mark and refers to the content offered by Complainant on its web site.
The Domain Name was registered in 2012 well after Complainant began use of their XHAMSTER trade mark in 2007.
Further the Domain Name is being used to purportedly offer adult orientated videos and prominently displays Complainant’s trade mark at the top of the web site attached to the Domain Name. However, links on the site switch to other sites offering to show adult orientated material where often no videos are shown. All this damages Complainant’s brand. Occasionally videos are shown but they are copied from Complainant’s site or are inline framing videos from Complainant’s web site or showing the Hammy video player (and bearing Complainant’s logo). All of the foregoing confirms Respondent’s knowledge about Complainant and its business and mark and the intention that the Domain Name should be confusingly similar to Complainant’s XHAMSTER mark. Accordingly the competing content offered at the web site attached to the Domain Name cannot be a bona fide offering of goods and services and, as it is done for commercial gain, cannot be legitimate non commercial fair use.
Respondent is not commonly known by the Domain Name.
Complainant has not authorised Complainant to use the XHAMSTER mark.
Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name and the web site attached to it directly compete with Complainant’s services. Consumers looking for Complainant’s services at the Domain Name are likely to be confused. 42 percent of the traffic to the web site at the Domain Name is from users searching for xhamster.
Respondent has registered and used the Domain Name in bad faith. By using the Domain Name in the manner described above and using Complainant’s mark and logo on the web site attached to the Domain Name Respondent has intentionally attracted for commercial gain Internet users to the web site attached to the Domain Name by creating confusion with Complainant’s registered XHAMSTER mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site and services thereon. The fact that Respondent has copied and linked to content from Complainant’s site shows Respondent is aware of Complainant and its business.
Respondent has also registered the Domain Name to disrupt the business of a competitor which is also bad faith use and registration under the Policy.
Respondent has used a privacy service to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. 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.” The Panel finds that Complainant companies have a legitimate right to XHAMSTER the mark featured in the Domain Name and so this is a complaint suitable for both Complainant companies to bring.
Complainant registered the mark XHAMSTER for, inter alia, entertainment and internet related services in Benelux in 2015. The xhamster.com web site is a website where users can upload their own pornographic videos and photographs and share them with others. Complainant and its predecessors in interest have been using the XHAMSTER mark in commerce for such services since 2007.
The Domain Name registered in 2012 has been used to offer adult entertainment services in competition with Complainant and uses content from Complainant’s site and Complainant’s XHAMSTER name and logo on the site attached to the Domain Name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that 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 and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s XHAMSTER mark (registered in Benelux for adult entertainment services in 2015 and used since 2007 in relation to the same) with a hyphen, the generic term ‘video’ (reflecting the goods and services provided by Complainant in association with its mark) and the gTLD .com.
The addition of generic terms which are related to Complainant or its goods and services supports a finding of confusing similarity. Accordingly the addition of this generic word ‘video’ does not serve to distinguish the Domain Name from Complainant’s XHAMSTER mark especially bearing in mind that Complainant’s business is primarily distribution of videos with adult entertainment content.
The addition of a hyphen to Complainant’s mark does not create a distinct characteristic capable of overcoming a Policy 4 (a)(i) confusingly similar analysis. See Sports Auth. Mitch Inc. v Bantu 5, FA 176541 (Forum September 23, 2003).
The gTLD .com does not serve to distinguish the Domain Name from the XHAMSTER mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainants have rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent has used a privacy service and does not appear to be commonly known by XHAMSTER Complainant’s mark. Complainant has not authorised Respondent to use this mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate non commercial or fair use because it uses the name to divert Internet users to a web site offering services competing with those offered by a Complainant under its mark. See Coryn Group Inc v Media Insight, FA 19895 9 (Forum Dec. 5, 2003). The Panel may determine that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant [offering] a product that is arguably identical to Complainant’s product and under the same name. See Am. Tool & Machining, Inc. v EZ Hitch Inc, FA 113961 (Forum July 16, 2002)
It is clear from the evidence that Respondent has used the sites attached to the Domain Name to promote competing adult entertainment services which are not connected with Complainant. This use of the Domain Name, Complainant’s logo and linking and copying from Complainant’s site shows that Respondent was aware of the significance of the XHAMSTER name and Complainant’s rights at the time of registration. The usage of Complainant’s XHAMSTER mark which has a significant reputation in relation adult entertainment services for videos and web sites not connected with Complainant is not fair as the site does not make it clear that there is no commercial connection with Complainant. As such it cannot amount to the bona fide offering of goods and services.
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above Respondent's use of the site is commercial and he is using it to make profit from competing services or product not associated with Complainant in a confusing manner. The specific combination of marks and goods/ services in the Domain Name indicates Respondent was aware of Complainant’s rights at the time of registration. It seems clear that the use of Complainant’s mark in the Domain Name and the use of Complainant’s trade marks and logo on the web site attached to the Domain Name would cause people to associate the website at the Domain Name with Complainant and its business and services. Bad faith has been found where Respondent ‘duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business’ Am Int’l Group, Inc v Busby, FA 156251 (Forum May 30, 2003).
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site. This also appears designed to disrupt the business of a competitor.
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy.
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-video.com> domain name be TRANSFERRED from Respondent to xHamster IP Holdings Limited.
Dawn Osborne, Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page