xHamster IP Holdings Ltd v. Kevin Adamson
Claim Number: FA1907001853032
Complainant is xHamster IP Holdings Ltd (“Complainant”), represented by Maria Ermilova, Cyprus. Respondent is Kevin Adamson (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xhamsterzoo.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his 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 July 22, 2019; the Forum received payment on July 22, 2019.
On July 22, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <xhamsterzoo.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2019 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@xhamsterzoo.com. Also on July 23, 2019, 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 August 15, 2019, 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 operates in the digital media industry specializing in web-based hosting of adult entertainment. Complainant has rights in the XHAMSTER mark based upon its registration of the mark with the Benelux Office for Intellectual Property (“BOIP”), filing date November 19, 2015, registration date December 3, 2015. Complainant states that it started to operate its website at <www.xhamster.com> in 2007 and that it has consequently acquired common law trademark rights, but it presents no evidence to support this allegation.
Complainant alleges that the disputed domain name is identical or confusingly similar to its XHAMSTER mark.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, says Complainant: “The Respondent’s business model depends on confusion of Internet users of affiliation with our business, to attract them to theirs and to obtain financial gain from such operation. … The Respondent’s actions prove that their goal is to trade on our goodwill and their whole operation is based on our proprietary information infringement.” Complainant also states: “As another proof of the Respondent’s illegitimate activities we would like to present that the Respondent is using a graphic image of a hamster which is similar to the hamster’s graphic image we are using on our website”. However, Complainant does not provide any evidence to support these allegations.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Complainant states: “The Respondent is illegally using our proprietary information and infringing our trademark. Their activities are unlawful and constitute unfair competition, trademark dilution, false designation of origin and cybersquatting. The domain name registration took place when information regarding our trademark application and/or registration was publicly available. … [T]he Registrant’s activities constitute a material breach of their agreement with the Registrar’s Terms and Conditions … “. But, again, Complainant fails to provide any evidence to support its allegations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark XHAMSTER and uses it to offer adult entertainment material.
Complainant’s rights in its mark date back to November 19, 2015.
The disputed domain name was registered on September 28, 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website appears to offer images of bestiality, consequently the Panel did not examine it in any detail.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name wholly incorporates Complainant’s XHAMSTER mark and merely adds the generic term “zoo” and the “.com” generic top-level domain (“gTLD”). The addition of generic or descriptive terms and a gTLD to a complainant’s mark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, Panel finds that the <xhamsterzoo.com> domain name is confusingly similar to Complainant’s XHAMSTER mark.
Complainant has not produced any evidence to support its allegations, thus the Panel would be inclined to find against Complainant for this element of the Policy. In any case, the issue is moot for the reasons given below.
Under the Policy, the relevant date for a mark is the filing date, see Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Here, the disputed domain name was registered on September 28, 2015, before Complainant filed its trademark application on November 19, 2015.
The Panel notes that Complainant alleges to have acquired common law trademark rights dating back to 2007. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant has not provided any evidence to support its allegation regarding common law trademark rights. Consequently, the Panel cannot find that Complainant’s rights predated its trademark application.
Given that Respondent’s registration of the disputed domain name predates Complainant’s proven rights in the XHAMSTER mark, the Panel declines to find bad faith under the Policy. See WIPO Jurisprudential Overview 3.0 at ¶ 3.8.1 (“… where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”); see also Wirecard AG v. Telepathy Inc., Development Services, D2015-0703 (WIPO June 22, 2015); see also MD On-line, Inc. v. Yenta Marketing, Inc., D2014-1468 (WIPO Nov. 8 2014).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <xhamsterzoo.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: August 15, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page