Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 2.2, “factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the Respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning”.In the present case, there is no evidence of any fame of the mark at the time that the disputed domain name was registered, but there is evidence of the Respondent registering similar three and four-letter domain names.
The Complainant’s reference to Google Trends may arguably show that “xnxx.com” has been searched to some degree on Google since 2004, but that it has only recently become a more common search term, suggesting that in fact the domain name was not widely known in 2004.The US trademark registration certificate on its face, shows that the registrant is “VLAB Limited”, a Hong Kong company, and not the Complainant.No assignment agreement in respect of this trademark has been submitted that would explain this discrepancy.d) Failure to Prove Common Law Rights Themselves Even assuming that an actual assignment of common law trademark rights in favour of the Complainant existed, the Complainant has failed to prove the existence of any common law trademark rights themselves.Here, the Complainant has not submitted any evidence of the income or sales produced in association with the purported common law trademark, volume of customers or of Internet traffic associated with the purported common law trademark, or any volume or scope of advertising and marketing associated with the purported common law trademark.The Complainant cannot rely upon a trademark that is apparently registered to another entity, and as such, the Complainant has not proven that it is the owner of any registered trademark rights.
In the absence of any registered trademark rights as aforesaid, the Complainant must be able to demonstrate common law trademark rights under the Policy.
Accordingly, the Respondent submits that since the Complainant has failed to satisfactorily demonstrate its own rights, that the Panel need not even consider the question of the Respondent’s rights and legitimate interest.
However, the Respondent claims to be able to demonstrate its rights and legitimate interest.
Consequently, the Complainant’s claim that it has “been using” its purported mark since 2004, is unsubstantiated and contradicted by the available evidence.
b) Failure to Show Chain in Title to Purported Common Law Rights Even if the Complainant itself could not have possibly have used the purported mark since 2004 as claimed, the Complainant has not provided any evidence to establish any chain of title to common law trademark rights which might, ostensibly, support a claim that it is the recipient of an assignment of the purported common law rights from earlier on.
In the absence of “strong and serious evidence”, the Complainant has not proven the existence of common law trademark rights.