Licensing IP International S.à.r.l. v. Itmer Pure
Claim Number: FA2101001928582
Complainant is Licensing IP International S.à.r.l. ("Complainant"), represented by ROBIC, LLP, Canada. Respondent is Itmer Pure ("Respondent"), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pornhubr.com> and <pornhubpremiun.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 15, 2021; the Forum received payment on January 15, 2021.
On January 19, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <pornhubr.com> and <pornhubpremiun.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@pornhubr.com, postmaster@pornhubpremiun.com. Also on January 25, 2021, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, a Luxembourg corporation, operates various websites that aggregate adult video content. Complainant states that PORNHUB is its flagship brand; its PORNHUB.com website had an overall Alexa global ranking of 40 in February 2017, and had 42 million visits in 2019. Complainant owns trademark registrations for PORNHUB and PORNHUB PREMIUM in the United States and other jurisdictions worldwide dating back to 2012, and also asserts common law rights in the PORNHUB mark.
Respondent is the registrant of the disputed domain names <pornhubr.com> and <pornhubpremiun.com>, originally registered in May 2016 and August 2015 respectively. Both domain name registrations were held in the name of a privacy registration service immediately prior to the commencement of this proceeding. Complainant asserts, based upon historical Whois data, that the disputed domain names were acquired by Respondent between May and August 2018. Complainant alleges that Itmer Pure is an alias of iTech Media Solutions OÜ a/k/a Itech Me, an Estonian company managed by an individual named Priit Eiber, and cites numerous other similar proceedings under the Policy in which it has prevailed against that company or its manager. See Licensing IP International S.à.r.l. v. Itech Me, FA 1923919 (Forum Jan. 25, 2021) (ordering transfer of <compornhub.com>); Licensing IP International S.à.r.l. v. Itech Me, FA 1923921 (Forum Jan. 12, 2021) (awarding transfer of <pornh7b.com>); Licensing IP International S.à.r.l. v. Itech Me, FA 1923922 (Forum Jan. 6, 2021) (awarding transfer of <0ornhub.com>); Licensing IP International S.à.r.l. v. Priit Eiber, FA 1881317 (Forum Mar. 24, 2020) (ordering transfer of <porhub.com>); Licensing IP International S.à.r.l. v. Priit Eiber, FA 1882530 (Forum Mar. 16, 2020) (ordering transfer of <ponrhub.com>); Licensing IP International S.à.r.l. v. Priit Eiber, FA 1881314 (Forum Mar. 12, 2020) (ordering transfer of <pornhyb.com>); Licensing IP International S.à.r.l. v. Priit Eiber, FA 1881299 (Forum Mar. 12, 2020) (ordering transfer of <pornhuv.com>); Licensing IP International S.à.r.l. v. Priit Eiber, FA 1873816 (Forum Jan. 10, 2020) (ordering transfer of <pormhub.com>; Licensing IP International S.à.r.l. v. Priit Eiber, FA 1873821 (Forum Feb. 10, 2020) (ordering transfer of <pornhub.co>).
The domain names resolve to landing pages that forward users to a website promoting services similar to and in competition with those promoted by Complainant on its PORNHUB.com website. Complainant states that Respondent is not commonly known by the disputed domain names and has not been authorized to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain names <pornhubr.com> and <pornhubpremiun.com> are confusingly similar to its PORNHUB mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <pornhubr.com> incorporates Complainant's registered PORNHUB trademark, adding the letter "R" and the ".com" top-level domain. The disputed domain name <pornhubpremiun.com> also incorporates the PORNHUB mark, and corresponds to Complainant's registered PORNHUB PREMIUM mark, omitting the space and misspelling "premium" as "premiun," and appending the top-level domain. These additions and alterations do not substantially diminish the similarity between the disputed domain names and Complainant's marks. The Panel finds each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
Both of the disputed domain names incorporate Complainant's registered mark without authorization, and they are being used to promote a directly competing website. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Licensing IP International S.à.r.l. v. Itech Me, FA 1923919, supra (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's conduct is indicative of bad faith registration and use under these provisions of the Policy, for substantially the same reasons as those set forth in the many decisions cited above involving Itech Me or Pritt Eiber as the named respondent. The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhubr.com> and <pornhubpremiun.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 18, 2021
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