Decisión del Panel Administrativo nº D2020-3163 of WIPO Arbitration and Mediation Center, January 20, 2021 (case xHamster IP Holdings Ltd v. Nguyễn Văn Lu)

Resolution DateJanuary 20, 2021
Issuing OrganizationWIPO Arbitration and Mediation Center
DecisionTransfer
DominioGeneric Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

xHamster IP Holdings Ltd v. Nguyễn Văn Lu

Case No. D2020-3163

1. The Parties

The Complainant is xHamster IP Holdings Ltd, Antigua and Barbuda, internally represented.

The Respondent is Nguyễn Văn Lu, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name [xhmaster.com] (the “Disputed Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2020.

On December 2, 2020, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on December 2, 2020. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2020.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 6, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, xHamster IP Holdings Ltd, offers adult entertainment services in the form of downloadable video recordings, motion pictures, film clips, and images. In 2020, the Complainant’s website “www.xhamster.com” was ranked the 4th most popular pornography Internet website and the 20th most trafficked website in the world.

The Complainant owns some trademark registrations for XHAMSTER in Classes 09, 35, 38, 41, 42 and 45, including, but not limited to, Benelux Trademark Registration No. 0986331 registered on December 3, 2015, Antigua and Barbuda Trademark Registration No. 9039 registered on November 3, 2015, and European Union Trademark Registration No. 018255445 registered on October 31, 2020.

According to what the Complainant submitted, the XHAMSTER trademark was first used upon registration of the domain name [xhamster.com] on April 2, 2007.

The Disputed Domain Name [xhmaster.com] was registered on October 6, 2007, eight years prior to the Complainant’s acquisition of relevant registered trade mark rights. As of the date of this Decision, the Disputed Domain Name is redirected to a website of a third party for advertising online gambling services. However, according to what the Complainant asserted, the Disputed Domain Name used to resolve to a parking page containing sponsored links to various third-party contents, including those associated with pornography-related products/services.

The Complainant sent a demand letter to the Respondent via the Registrar on October 16, 2020, requesting for the transfer of the Disputed Domain Name. However, the Respondent did not respond to the demand letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

Firstly, the Complainant contends that the Complainant’s XHAMSTER trademark has been used in commerce upon the registration of its domain name [xhamster.com] on April 2, 2007 and registered under Benelux Trademark Registration No. 0986331, Antigua and Barbuda Trademark Registration No. 9039 and European Union Trademark Registration No. 018255445 for adult entertainment products/services.

Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the XHAMSTER trademark owned by the Complainant since all the letters, even though they are misspelled, of the Disputed Domain Name are identical to the XHAMSTER trademark. According to the Complainant, the misspelling of a mark and adding a generic Top-Level Domain (“gTLD”) are not changes sufficient to distinguish the Disputed Domain Name from the XHAMSTER trademark.

Furthermore, according to what the Complainant submitted, the Respondent uses the Disputed Domain Name to attract users to the Respondent’s website using the XHAMSTER trademark awareness across the globe.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant...

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