XVideos.nu Domain Name Ordered Transferred
The arbitrator ordered the domain name handed over after he found the adult tube site to be confusingly similar to XVideos.com's own adult brand and registered in bad faith. XVideos.com has operated since 2007.
XVideos.nu, according to Internet archive records, has operated as an adult tube site since early 2012. At post time, the site, registered to Andrei Ivanov, continues to operate as such.
XVideos.com's parent company, WGCZ S.R.O., filed the UDRP claim last month — one of many it has successfully waged this past year against entrepreneurs who have cybersquatted on its trade names.
The company operates scores of other tube sites, including XNXX.com, and is based in Czechoslovakia and has U.S. operations in Las Vegas.
In the case over XVideos.nu, sole panelist Ian Lowe said that WGCZ S.R.O. produced evidence that Ivanov was an "experienced domainer" with nine years of experience in the area of adult tube websites, and that he registered the site only to ride on the coattails of the XVideos.com brand, which counts 350 million unique visitors every month.
"[Ivanov] has used the domain name for a website providing similar services to those of the complainant under the XVideos name including the provision of links to third-party websites directly competing with the complainant," the arbitrator wrote. "In the panel's view, this amounts to paradigm bad faith registration and use for the purposes of the policy."
Ivanov, in an informal email response to the claim, suggested that "XVideos" is generic and that WGCZ S.R.O. only registered the brand as a U.S. trademark in September 2012.
Ivanov claimed that when he registered the domain name, "XVideos" was not a trademark. He later suggested that "XVideos" was like "porn videos" or "porn tube" and that his website had nothing in common with XVideos.com, according to the filing.
But the arbitrator said that the "fact that the complainant had not yet registered its trademark at the time the domain name was registered does not prevent the panel from deciding against the respondent."
Marc Randazza of Randazza Legal Group, which represented WGCZ S.R.O. in the UDRP claim decided at WIPO, told XBIZ that the case relied on XVideos "very strong trademark rights." Randazza noted that the arbitrator relied on prior cases that established it as well.
"Protecting a brand is like building a defensive wall," he told XBIZ. "Every effort builds on prior efforts. That's why it is a bad idea to just wait until you have a big problem.
"You get rid of small problems, one by one, and next thing you know, you have a nice tall and stout wall of brand protection."