LAS VEGAS — Another cybersquatting claim has brought down a bogus “XVideos” site created to lure adult tube site users.
This time around, XVideos.com’s parent company, Czech Republic-based WGCZ S.R.O, was successful in its case against the operator of XVideos.es, which ran a Spanish-language tube site clone.
A WIPO arbitrator, in his ruling that ordered a transfer of the site to WGCZ, agreed with the claim that counsel brought up: That the respondent, which had a Spanish trademark for the site, obtained the domain fraudulently.
Attorney Marc Randazza, who represents WGCZ, called the win over the domain name XVideos.es was “huge.”
“For starters, we're very proud of our international practice,” Randazza said. “As you might recall, I got an LLM in international intellectual property in Europe a few years ago and that really came in handy here.
“Additionally, when you have matters in continental Europe, they are a civil law system, which is different than the common-law system. However, our familiarity with both civil and common law allowed us to present the common law dispositive factors to a civil law arbitrator in a way that prevailed,” Randazza said. “I think that gave us quite an advantage in this case, because these arbitrations are a mixture of civil and common law. And a lawyer is versed in only one, he's not gonna be as effective as we are.
“A really big deal in this case was that the defendant was a pretty creative character. He knew that when he started cybersquatting on our client, if he got a trademark registration in Spain, he could try to rely on that for his argument that he should be deemed to be the rightful owner of the domain. However, we were able to show that this was a pretextual registration, effectively 'trademark squatting' in conjunction with cybersquatting.
“Had the arbitrator been lazy, I could have seen the arbitrator rubberstamping the case as a loss for us. But fortunately, the arbitrator did what a good arbitrator does, and really evaluated the evidence and evaluated it in an uncorrupt way.
“This is one of the most hard-fought domain name arbitrations I've ever done, because of the complications involving the choice of law issues, the foreign trademark registration, and arbitrating in another language. But, if anything, we're very flexible and responsive here, and we managed to pull it together.
“We're very grateful that our client has decided to protect its mark globally. I find that a lot of companies in the adult space don't really understand the importance of a global brand protection strategy.
WGCZ has marks for the "XVideos" name in the U.S. and in the E.U.
Its operators started up XVideos.com in 2007 and now the site reportedly has 4.4 billion page views per month.
WGCZ has been successful in scores of cybersquatting cases, including those over XVideos.co, XVideoNow.com, HD-XVideos.com, New-XVideos.com XVideos.nu, XVideosToday.net, XVideosDaily.com, XVideos.net, XN--XVdeos-4va.net, XVideosxxx.club and now XVideos.es.
Randazza, of Randazza Legal Group, noted that WGCZ is a “very forward-thinking company, with a great leadership team, including a really sharp in house counsel.”
“Their brand protection strategy doesn't just benefit them, but sets a good precedent for other companies in the industry,” he said.