Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Privacy Services Privacy Services / Privacy Services
Claim Number: FA1612001706178
Complainant is Hammy Media, Ltd. and xHamster IP Holdings Ltd (“Complainant”), represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, USA. Respondent is Privacy Services Privacy Services / Privacy Services (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xhampster.com>, registered with TLD Registrar Solutions 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2016; the Forum received payment on December 6, 2016.
On December 9, 2016, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <xhampster.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions 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 December 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 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@xhampster.com. Also on December 12, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it operates an adult-content website where users are able to upload and share their own photos and videos. As part of its business operations, Complainant uses the XHAMSTER mark. Complainant registered its XHAMSTER mark with the Benelux Office for Intellectual Property on December 3, 2015.
Complainant alleges that it has common law rights in the XHAMSTER mark dating back to its first use in May 2007, and provides evidence to that effect.
According to Complainant, prior to the filing of the original Complaint in this matter, the WhoIs information for the disputed domain name listed the Privacy Service Whois Privacy Corp. based in the Bahamas, which is arguably a legitimate WhoIs privacy service. After the original Complaint in this matter was filed, the underlying registrant information was made available in the WhoIs record, which now just shows “Privacy Service” repeated multiple times for the name and organization and a nonexistent address in Panama. It is clear therefore that Respondent does not wish to be known by the disputed domain name.
Complainant states, and provides evidence to show, that, as stated in the current WhoIs data, the Infringing Domain was originally registered on August 29, 2007. Based on a review of historical WhoIs information conducted on the respected website DomainTools.com, the current registrant of the Infringing Domain took control of the Infringing Domain sometime between July 31, 2015 and August 9, 2015. On July 31, 2015, the WhoIs information for the Infringing Domain showed the registrant as “DOMAIN MAY BE FOR SALE, CHECK IGLOO.COM Domain Admin” and on August 9, 2015 the WhoIs information showed the registrant as the same privacy service currently used by Respondent. It is clear that the current registrant purchased the domain name on July 31, 2015 at the earliest. That means that Respondent purchased the domain name more than eight years after Complainant registered the xHamster.com domain name and began using the XHAMSTER mark in commerce.
According to Complainant, the disputed domain name is confusingly similar to the XHAMSTER mark because of the addition of the letter “p” in the name, along with the “.com” general top-level domain (“gTLD”). Complainant cites UDRP precedent to support its position.
Further, says Complainant, Respondent has no legal rights or interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not licensed or permitted Respondent to use the XHAMSTER mark in any respect. Respondent has not made a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name. Respondent’s domain name resolves to an error page instructing the user to update software, thereby presumably installing malware for Respondent’s profit. Respondent cites UDRP precedents to support its position.
Complainant alleges that Respondent has registered and used the disputed domain name in bad faith. Respondent’s attempts to push users to install infected software evinces bad faith under Policy ¶ 4(b)(iv). Respondent engaged in typosquatting in an attempt to redirect users from a complainant’s website to install drive-by malware or adware for profit. Respondent has actual knowledge of Complainant’s XHAMSTER mark and its rights because of the long-standing use of the XHAMSTER mark (in regards to its use associated with its <xhamster.com> website) and deliberate misspelling of the mark to redirect users to install malware. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark HAMSTER dating back to May 2007.
The disputed domain name was first registered on August 29, 2007.
Respondent purchased the disputed domain name sometime between July 31, 2015 and August 9, 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that attempts to lure the user into installing what appears to be malware.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Before considering the three elements of the Policy, the Panel will first deal with a preliminary issue: the instant Complaint has been filed by two separate entities, so there are 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.”
The two Complainants in this matter are 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, this decision will treat them all as a single entity in this proceeding and will hereafter refer to them collectively as “Complainant.”
Complainant has presented evidence to the effect that it has common law rights in the XHAMSTER mark based on its use of the mark on its <xhamster.com> website since 2007. The WHOIS information provided by Complainant indicates that Complainant registered the <xhamster.com> domain name on April 2, 2007. Complainant has provided other evidence, including screen shots of its adult-oriented website, 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. 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.” 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.). The Panel determines that Complainant’s operation of a domain name identical to the XHAMSTER mark since 2007, and various media coverage of Complainant is sufficient to award it common law rights in the mark under Policy ¶ 4(a)(i).
The disputed domain name is confusingly similar to the XHAMSTER mark because of the addition of the letter “p” in the name, along with the “.com” gTLD. Panels have held that the addition of letters to create spelling and phonetic changes, in conjunction with a gTLD, is confusingly similar to a complainant’s mark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’); see also Zillow, Inc. v. Domain Admin / Whois Privacy Corp., FA 1596560 (Forum Feb. 2, 2015) (holding, “The terms remain phonetically identical and the alteration is trivial and does nothing to dispel the obvious the correspondence between the trademark and the domain name.”). The Panel finds that Respondent’s additions to the XHAMSTER mark do not distinguish the bilabial sound produced when sounding out the mark, and finds that the disputed domain name is confusingly similar to Complainant’s XHAMSTER mark under Policy ¶ 4(a)(i).
As Complainant correctly notes, because Respondent gained control of the Infringing Domain on July 31, 2015 at the earliest, that date is deemed Respondent’s registration date for the purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, § 3.7 (“[T]he transfer of a domain name to a third party does amount to a new registration….”); see also Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) (“[P]anels (including this one) have in some cases found a transfer of ownership even among related entities to be a new or fresh registration for Policy purposes.”); Simple Finance Technology Corp. v. CDN Properties Incorporated, FA1575811 (Nat. Arb. Forum Sept. 30, 2014) (finding that because there was a broken chain of ownership, the changes in registration data constituted a new registration); Celilo Group Media, Inc. v. Domain Administrator, D2010-1119 (WIPO Aug. 19, 2010) (“[T]here has been a change of control amounting to a new registration for the purposes of this element of this Policy.”); Ass’n of Junior Leagues Int’l Inc. v. This Domain Name, FA857581 (Nat. Arb. Forum Jan. 4, 2007) (“[O]ne only needs to trade the registration date [of a domain name] back to the most recent transfer instead of the original registration.”); iFranchise Group v. Bean, D2007-1438 (WIPO Dec. 18, 2007) (“[T]he general rule established by panels is that a subsequent acquirer of a domain name is held to have ‘registered’ that domain name for the purposes of the Policy as of the date of acquisition of the registration rights.”).
Further, the disputed domain name was first registered in August 2007, whereas Complainant’s common law trademark rights date back to May 2007.
Accordingly, the Panel finds that Complainant’s trademark rights predate the registration of the disputed domain name.
Complainant has not licensed or permitted Respondent to use the XHAMSTER mark in any respect. Respondent is not commonly known by the disputed domain name. The WHOIS information associated with the disputed domain name indicates that Respondent used a privacy service to shield their identity. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”); 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). The Panel finds that Respondent is not commonly known by the domain name.
Respondent has not made a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name because it redirects to a site pushing users to install malware onto their devices presumably for Respondent’s profit. See Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005), in which it was found that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website . . . [which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”. The Panel finds the facts in the instant case analogous, and likewise concludes that Respondent’s use of the disputed domain name is not permitted use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Furthermore, legitimate rights or bona fide use do not exist when there is deliberate infringement of another’s rights, or when the domain name is used in bad faith to divert users through confusion (see the discussion below) see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000 0937
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the disputed domain name resolves to an error page instructing the user to update software, thereby presumably installing malware for Respondent’s profit. The general consensus among Panels is that using a disputed domain name to infect users’ computers with malware demonstrates a bad faith use under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Amazon Technologies, Inc. v. Timothy mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Nat. Arb. Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”); Morgan Stanley v. ICS INC, FA1698162 (Nat. Arb. Forum Nov. 23, 2016) (“Respondent’s domain name resolves to a website that attempts to engage in phishing or place malware on Internet users’ computer devices. Therefore, Respondent has engaged in bad faith registration and use of the domain name.”). Accordingly, the Panel finds that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).
Further, Respondent engaged in typosquatting, through a deliberate misspelling of Complainant’s XHAMSTER mark, in an attempt to redirect users from Complainant’s website to its own website. Panels have held that respondents’ engaging in the practice of typosquatting constitutes bad faith usage under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”); see also Morgan Stanley v. ICS INC, FA1698162 (Nat. Arb. Forum Nov. 23, 2016) (“Respondent has engaged in the tactic of typosquatting. Specifically, Respondent’s omission of the letter ‘r’ in ‘Morgan Stanley’ is evidence of bad faith under Policy ¶ 4(a)(iii).”); Vanguard Group, Inc. v. IQ Mgmt. Corp., FA328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, Respondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Consequently, the Panel concludes that that Policy ¶ 4(a)(iii) bad faith is evidenced by Respondent’s typosquatting.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xhampster.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 16, 2017
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