Hammy Media, Ltd. and xHamster IP Holdings Ltd v. Reneil Montoya / Sploom LLC
Claim Number: FA1704001725444
Complainant is Hammy Media, Ltd. and xHamster IP Holdings Ltd (“Complainant”), represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, USA. Respondents are Reneil Montoya, Panama, and Sploom LLC, Texas, USA (“Respondents”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xhamster-deutsch.com> and <xhamsters-deutsch.com>, registered with eNom, Inc. and NameSilo, LLC, respectively.
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 5, 2017; the Forum received payment on April 5, 2017.
On April 6, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <xhamster-deutsch.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 6, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <xhamsters-deutsch.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On April 10, 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 Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@xhamster-deutsch.com, and postmaster@xhamsters-deutsch.com. Also on April 10, 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, 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. The XHAMSTER has been used as a trademark in connection with the above referenced classes of goods and services, including, without limitation, streaming of adult-oriented audiovisual material.
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 fo 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 names that are the subject of this Complaint (the “Infringing Domains”), Complainants must prove the following: (i) the Infringing Domains are 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 Domains; and (iii) the Infringing Domains were registered and are being used in bad faith.
A. The Infringing Domains are 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 Domains are 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 Domains registered by Respondent subsume Complainants’ registered XHAMSTER trademark in its entirety. The xhamster-deutsch.com Infringing Domain begins with the XHAMSTER mark followed by a dash and “deutsch” (which means “German” in German) then by the top-level domain .com. The xhamsters-deutsch.com Infringing Domain begins with the XHAMSTER mark followed by an s then a dash and “deutsch” then the top-level domain .com. The Infringing Domains are simply Complainants’ registered XHAMSTER mark with a descriptive word appended to it. The obvious similarity between the marks 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 (ForumNov. 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.”); Am. Express Co. v. MustNeed.com, FA257901 (ForumJune 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)).
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 (ForumDec. 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).”).
However, there is significant additional evidence that not only are the Infringing Domains substantially similar to Complainants’ trademark, but that the substantial similarity was intended and is compounded by Respondent’s use of Complainants’ trademark on the websites at the Infringing Domains.
The Infringing Domains are being used in a manner identical to Complainants’ uses of their registered XHAMSTER trademark. Specifically, and without limitation, Respondent is using the Infringing Domains for a website that allow users to watch adult-oriented videos. The Infringing Website prominently displays Complainants’ registered XHAMSTER trademark at the top of the page. Alongside the XHAMSTER trademark on the Infringing Website is a cartoon hamster, obviously meant to be a play on Complainants’ hamster mascot. Underneath the XHAMSTER trademark on the Infringing Website reads “nur deutsch, kein scheissdreck!” which roughly translates to “Only German, No Bullshit” – which is obviously trading off of Complainants’ motto “Only Porn, No Bullshit,” which was previously part of Complainants’ logo.
Further review of the Infringing Website shows that many if not all videos displayed on the Infringing Websites 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 Domains to be substantially similar to Complainants’ registered mark. The earliest available archive of the website at xhamster-deutsch.com from March 15, 2015 from the Internet Archive’s Wayback Machine after Registrant registered the Infringing Domain, shows that the website has been substantially the same as it is today, subject to some design changes.
Pursuant to the current WhoIs data, the xhamster-deutsch.com domain name was registered on or about November 15, 2014 and xhamsters-deutsch.com domain name was registered on or about February 8, 2017. This was approximately seven-and-a-half years and ten years, respectively, 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 Domains and the Infringing Websites directly compete with Complainants’ services. Complainants offer a German language version of the xHamster.com website at de.xHamster.com. A consumer looking for Complainants’ services at the Infringing Domains is likely to be confused by the Infringing Websites and believe that Respondent is the operator of xHamster.com. This is because Respondent is using Complainants’ trademark and offering the same services offered by Complainants. For instance, when a potential german speaking customer conducts an internet search for xhamster in german (i.e., searches for “xhamster deutsch”) he is presented with results containing Respondent’s Infringing Domain and Infringing Website. The infringing result is confusingly similar to the xHamster.com website and draws consumers away from Complainants and their legitimate and authorized website and services.
A comparison of the Infringing Domains and the registered XHAMSTER trademark illustrates that the Infringing Domains subsume Complainants’ registered XHAMSTER trademark in its entirety. Further, both the trademark and the Infringing Domains are used in association with the display and distribution of adult-oriented videos and other content. Since the Infringing Domains and the registered XHAMSTER trademark are substantially similar and the Infringing Domains entirely subsume the registered XHAMSTER mark, and since all are used in association with adult-oriented videos and other content, the Infringing Domains are likely to cause confusion with consumers.
B. Respondent Has No Legitimate Interest or Rights in the Infringing Domains
The registration of the Infringing Domains, on November 15, 2015 and February 8, 2017, are 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 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 Domains which completely subsume Complainants’ XHAMSTER mark. When attempting to register the Infringing Domains, it is certain that Respondent encountered Complainants’ website and knew that Complainant was the registrant of the xHamster.com domain name. It is clear that Respondent chose the Infringing Domains because the xHamster.com domain was already registered by Complainants, the xHamster.com website was popular and the Infringing Domains were substantially similar to 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 Domains and starting services using Complainants’ trademark in direct competition with Complainants. 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 Domains. Respondent obviously knew that it had no rights to the XHAMSTER mark before it began to use the websites at the Infringing Domains. And given that Respondent is admittedly simply reframing or copying the videos from the xHamster.com website, Respondent’s Infringing Websites are 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 Domains. Quite to the contrary, Respondent makes no effort to identify itself as the operator of the Infringing Domains, setting forth no contact details and 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 Domains 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 Domains. Respondent’s sole intent is to commercially gain from the infringing use of Complainants’ trademark, which is evident from the Infringing Websites.
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 Domains. 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 Domains.
C. Respondent’s Registration and Use of the Infringing Domains Was in Bad Faith
Complainants have already referenced in passing above the many ways in which it is certain that Respondent registered the Infringing Domains in bad faith and has since been using the Infringing Domains in bad faith. Complainants now focus on these issues.
Since Respondent registered the Infringing Domains, Respondent has used them as video streaming websites in direct competition with Complainants’ xHamster.com website. Registrant goes so far as to imbed videos taken from the xHamster.com website in the Infringing Website.
By using the Infringing Domains 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 domain names which entirely subsume the registered XHAMSTER mark to divert Internet users to websites 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 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 (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 (ForumSept. 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 Domains 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 Domains. As detailed above, Complainants registered the xHamster.com domain name over seven and ten years before Respondent registered the Infringing Domains, respectively, and the xHamster.com website has been one of the most popular websites in the world since before Respondent registered the Infringing Domains. Respondent knew that the xHamster.com domain name was registered and knew the strength of the XHAMSTER mark before it registered the Infringing Domains. 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 Domains. 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 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 Domains, 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 Domains. Yet, Respondent proceeded to register the Infringing Domains 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 Domains and Respondent’s use of the XHAMSTER mark. Accordingly, Respondent’s registration and use of the Infringing Domains 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 names 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 Domains and for commercial gain, Internet users to the Infringing Websites 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 (ForumDec. 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 (ForumDec. 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 Domains are substantially similar to, and entirely subsume, Complainants’ registered XHAMSTER mark, (b) Respondent has no legitimate interest in the Infringing Domains, and (c) that Respondent has registered and used the Infringing Domains in bad faith. Accordingly, Complainants respectfully request that the Infringing Domains 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 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.”).
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 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The WHOIS information contains largely the same contact information, with the only differences being that one registrant lists a person instead of an entity, and one lists an apartment number while the other one does not. Additionally, the <xhamsters-deutsch.com> WHOIS information, while listing the individual “Reneil Montoya,” lists “Sploom LLC” as the organization, which is the name that apparently registered the other disputed domain name, <xhamster-deutsch.com>. Further, when a user attempts to access the <xhamster-deutsch.com> domain name, it redirects the user to the landing page for <xhamsters-deutsch.com>. The telephone numbers are the same, as are the addresses (although one address also has an apartment number). Therefore, this Panel finds Respondents are controlled by a single entity (meaning they are a single entity for the purposes of the UDRP).
Complainant operates an adult entertainment website, offering videos, images and sound recordings. Complainant first used the XHAMSTER mark in commerce on May 24, 2007, and first registered the <xhamster.com> domain name on April 2, 2007. 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 are seen to 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 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.). Complainant provides evidence of first use with the WHOIS information for its <xhamster.com> domain name and a screenshot of its webpage from September 5, 2007.. Complainant has provided evidence of its statistics and media coverage, about its continued use in of the XHAMSTER mark and the remarkable 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). This Panel agrees and finds Complainant has common law rights in the mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <xhamster-deutsch.com> and <xhamsters-deutsch.com> domain names are confusingly similar to its mark because they fully incorporate the XHAMSTER mark and merely add a hyphen, a generic or descriptive term, the gTLD “.com,” and a letter in one of them. Adding letters, punctuation, and generic or descriptive words to marks does not sufficiently distinguish disputed domain names from marks under Policy ¶4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶4(a)(i)); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“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 also 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<xhamster-deutsch.com> domain name is confusingly similar because it includes Complainant’s entire mark and adds a hyphen, the descriptive term “deutsch” and the generic top-level domain “.com.” Similarly, Respondent’s <xhamsters-deutsch.com> domain name is confusingly similar because it adds an “s” to Complainant’s XHAMSTER mark followed by the same changes as noted above for the other disputed domain name in this proceeding. Both disputed domain names are confusingly similar to Complainant’s mark for the purposes of Policy ¶4(a)(i).
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 the <xhamster-deutsch.com> and <xhamsters-deutsch.com> domain names. 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 Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The now disclosed WHOIS identifies “Reneil Montoya/Sploom LLC” and “SPLOOM LLC” as the registrants. There is no obvious connection between either name and either disputed domain name. No evidence exists to show Respondent has ever been known by the XHAMSTER mark. 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). Complainant has not given Respondent permission to use Complainant’s mark. The Panel must conclude Respondent is not commonly known by the <xhamster-deutsch.com> and <xhamsters-deutsch.com> domain names under Policy ¶4(c)(ii).
Complainant claims Respondent also doesn’t use the disputed domain for any bona fide offering of goods or services because it passes itself off as Complainant and trades on Complainant’s goodwill. This demonstrates a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The disputed domain names direct users a “knock off” web site similar to Complainant’s web site. Respondent presumably does this to commercially benefit from Complainant’s fame and goodwill. Such activities do not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Complainant claims Respondent uses the disputed domain names to redirect users to a webpage offering services which directly compete 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). Both domain names resolve to the same webpage, which offer competing adult entertainment videos. Some of the videos offered on Respondent’s domain names are the same as Complainant’s videos (apparently Respondent has set up an automatic copying algorithm). This isn’t a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <xhamster-deutsch.com> and <xhamsters-deutsch.com> domain names in bad faith by offering services in direct competition with Complainant. Using a confusingly similar domain name to offer competing services generally 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.”). In this case, Respondent essentially tries to pass itself off as a German language equivalent of Complainant. Respondent disrupts Complainant’s business by redirecting users seeking Complainant’s offerings to Respondent’s web site. Respondent is attempting to disrupt Complainant’s business and commercially benefit off Complainant’s well-known mark in bad faith pursuant to Policy ¶¶4(b)(iii) and (iv).
Complainant claims Respondent commercially benefits through the offering of advertisements on the resolving webpage for the disputed domain names. Commercially benefitting by offering advertisements on a website which passes itself off as Complainant is evidence of bad faith registration and use. See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 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).”). Respondent advertises for multiple websites which offer services in the adult entertainment industry. Respondent does this to receive click through fees for commercial gain. Respondent acted in bad faith when it registered and while using the disputed domain names.
Complainant claims Respondent had actual knowledge of Complainant’s mark. Considering the use of the domain names and the fact Respondent is copying videos from Complainant’s web site, it seems very clear Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and using the domain names. This constitutes 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 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.
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 <xhamster-deutsch.com> and <xhamsters-deutsch.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 8, 2017
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