HD-XVideos.com Ordered Transferred to XVideos.com
The WIPO panel concluded that the domain name, acquired in 2012 by Seychelles-based EvoPlus Ltd., was registered in bad faith because WGCZ S.R.O. of Las Vegas holds a trademark for the XVideos online adult brand. The panel said WGCZ has held the U.S. trademark since 2012.
In urging the panel to side for its case, WGCZ said that it has developed a protectable goodwill and reputation attaching to its XVideos mark.
WGCZ, in its complaint, said that XVideos.com is the 42nd most-visited site globally and the 48th most-visited site in the U.S.
"XVideos has become so well known since 2007 that it receives approximately 4.4 billion page views per month, three times the number of views received by numerous other world-famous Internet sites, including CNN.com and ESPN.com and has 350 million unique visitors every month," the complainant said.
The panel, agreeing with WGCZ, said that the "balance of probabilities" showed that EvoPlus was aware of XVideos' intellectual property holding.
"[EvoPlus] registered the disputed domain name on April 4, 2012, some five months prior to the complainant's registration of its U.S. mark for XVideos," the panel wrote. "However by the date of the respondent's registration the complainant had been using its mark in the XVideos.com domain name and at the website to which it resolves since 2007.
"Had the respondent wished to differentiate itself and to avoid the risk of trading off the goodwill and reputation attaching to the complainant's mark and website, then it could have registered a much more distinctive domain name," the panel wrote.
"Having chosen to wholly incorporate the XVideos mark into its choice of disputed domain name, the respondent then added the prefix 'HD'. The panel, as noted above, does not consider that this is sufficient to distinguish the disputed domain name and on balance considers that the respondent more likely than not chose to incorporate the complainant's mark purposefully into the disputed domain name in order to attract Internet users to its website."
The panel, finding EvoPlus registered and used the site in bad faith, ordered HD-XVideos.com transferred.