Tenza Trading Ltd. v. Domain Manager
Claim Number: FA1211001470412
Complainant is Tenza Trading Ltd. (“Complainant”), represented by Anna M. Vradenburgh of The Eclipse Group, LLP, California, USA. Respondent is Domain Manager (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <porntube.net>, registered with Fabulous.com PTY LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2012; the National Arbitration Forum received payment on November 8, 2012.
On November 11, 2012, Fabulous.com PTY LTD confirmed by e-mail to the National Arbitration Forum that the <porntube.net> domain name is registered with Fabulous.com PTY LTD and that Respondent is the current registrant of the name. Fabulous.com PTY LTD has verified that Respondent is bound by the Fabulous.com PTY LTD 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 November 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@porntube.net. Also on November 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has received the following registrations upon which this complaint is based for the mark PORNTUBE:
U.S. Registration No. 3,936,197 for entertainment services, namely, providing a website featuring adult entertainment; entertainment services, namely, providing a website featuring photographs, videos, related film clips, and other multimedia materials in the field of adult entertainment. The first use of this mark in interstate commerce for these goods was at least as early as May 2005. This application was filed on October 29, 2008, and issued March 29, 2011.
Corresponding Canadian Registration No. TMA 779,803 for entertainment services, namely, providing a website offering adult entertainment; entertainment services, namely, providing a website offering photographs, videos, related film clips, and other multimedia materials in the field of adult entertainment. This application claimed the priority filing date of October 29, 2008, and issued on October 14, 2010.
Community Trademark Registration No. 008,725,401 for adult entertainment services; providing a website featuring adult entertainment; providing a website featuring photographs, videos, related film clips, and other multimedia materials in the field of adult entertainment, entertainment services provided via the internet. This application claimed the priority filing date of October 29, 2008, and issued on June 2, 2010.
FACTUAL AND LEGAL GROUNDS
To prove that it is entitled to the transfer of the domain name porntube.net, the Complainant must prove the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that Registrant has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. The domain name porntube.net entirely subsumes Complainant’s trademark PORNTUBE. Accordingly, the domain name is identical to the trademark in which the Complainant has rights.
A. The Subject Domain Name porntube.net Is Identical To Complainant’s
Registered Mark PORNTUBE
The disputed domain name registered by Respondent is porntube.net. The domain name appears to be newly registered as of April 10, 2011. In 2008, another break in the registration of this domain name is noted in Domain Tools, a service that provides, in part, the historical registration information of domain names. Complainant notes that the Domain Tool’s history shows a second “Not Resolvable” entry indicating that the domain name was again rendered inoperable on July 3, 2011, shortly after the domain name was removed from its server on June 24, 2011. Complainant is alleging that Respondent’s registration is likely the later date of April 10, 2011. However, the earliest possible date for registration of the domain name by the Respondent appears to be August 16, 2008, the date of the prior break in the registration of the domain name.
The domain name was being used in association with adult entertainment products and services. More specifically, as of June 20, 2011, the domain name has been used in association with a link site directing web users to a wide variety of adult entertainment products and services. The website directs users to goods and services that are the same as, and/or are related to, Complainant’s goods. Further, at that time, the website prominently displayed Complainant’s registered trademark.
Complainant’s registered and common law trademark is PORNTUBE. Complainant has received U.S. Registration No. 3,936,197, Canadian Registration No. TMA 779,803, and Community Trademark Registration No. 8,725,401 for the mark PORNTUBE, for inter alia, adult entertainment services. The U.S. trademark application was filed on October 29, 2008. Each of the foreign registrations claims a priority filing date of October 29, 2008. Each of these registrations was received without any objections from the corresponding Trademark Office, including any objection that the mark was merely descriptive. These registrations are prima facie evidence that the mark is distinctive and capable of source identification. Additionally, the domain name porntube.com was initially registered on November 29, 2004.
Rights in the PORNTUBE trademark were originally owned by EMC Ideas, Inc., and were assigned to Complainant on February 16, 2011. Similarly, the domain name was transferred to Complainant on or around December 2010. EMC Ideas, Inc. continuously and consistently used the trademark from at least as early as May 2005 through early 2011, when the mark was assigned. Complainant continued the use of this mark from the date of the assignment to the present date. All rights to the trademark and goodwill associated therewith were assigned from EMC Ideas, on February 16, 2011. The use of this mark has been continuous and consistent by Complainant and its prior owner since at least as early as May 2005 to the present, in association, in part, with adult entertainment products, including on-line adult entertainment services. Accordingly, in light of the continuous use of the mark, common law rights were well established from at least as early as May 2005, until the filing date of the U.S. application on October 29, 2008, at which time Complainant firmly established nationwide priority of rights. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Rights in the PORNTUBE trademark were acquired long prior to the registration date of the domain name porntube.net by the Respondent in 2011, or possibly 2008. Although the owners have changed, the trademark rights acquired by Complainant and the use of the trademark have been continuously consistent for adult entertainment services since at least as early as May 2005 to the present, long prior to any registration of the domain name porntube.net in 2011 or 2008.
A comparison of the domain name and the registered trademark illustrate that the domain name is identical to the registered trademark in which Complainant has rights. Further, both the trademark and the domain name are used in association with adult entertainment products and services. Since the domain name and registered trademark are identical, and since both are used in association with adult products and services, the domain name is likely to cause confusion with consumers.
B. The Respondent has no legitimate interest or rights in the domain name.
The domain name is currently registered in the name of Domain Manager. The registration of the domain name was well after the mark and the services associated therewith had been in consistent and continuous use by Complainant and its predecessors. Indeed, Complainant registered the domain name porntube.com at least as early as 2004. As it is commonly understood that the .com domain names are more valuable and the first to be purchased, and since the website associated with the domain name porntube.com is a high traffic site, it is clear that Respondent knew that it had no legitimate rights or interest in the domain name porntube.net. Indeed, a well-known traffic ranking site, Alexa.com, assigned a global rank of 801 for the website at porntube.com, and a US ranking of 799, as of February 2012, and as of October 2012, the global rank is 651 and the US rank is 642. A ranking under a few thousand is a good ranking, but a ranking under 1000 demonstrates a phenomenal amount of consumers visiting the site, and being exposed to the PORNTUBE trademark. For reference and comparison regarding the ranking, google.com has been ranked at 1 by Alexa. The Alexa website reports that “visitors to the site [porntube.com] view 2.8 unique pages each day on average.” Historical traffic rankings demonstrate that this website porntube.com has been under 10,000 ranking since prior to 2008.
Trademark rights were clearly established long prior to the earliest possible registration date of this domain name by the Respondent, that is, long prior to 2011, and 2008. Moreover, Respondent is not commonly, or otherwise, known by the domain name. Indeed, Respondent directed this mark to a portal or link website. To the best of Complainant’s knowledge and belief, the porntube.net domain name has consistently been used to direct Internet users to adult entertainment products and services, the identical market of the services associated with the trademark PORNTUBE. It is clear that the only rationale for registering this domain name would be to capitalize on the consumer’s awareness of the services associated with the PORNTUBE trademark and the goodwill of the mark. This is classic trademark infringement and trading off of the goodwill of another’s trademark.
In light of the fact that Complainant’s website has been operational since at least as early as 2005, and was continuously used up to the time that Respondent registered the domain name, Respondent was on notice that the use of the porntube.net domain name was in violation of another party’s rights. Consequently, Respondent could not use the domain name with any bona fide offering of goods or services. Indeed, “[i]t is especially difficult to find a bona fide offering of goods when the Respondent uses a domain name confusingly similar to a competitor’s mark.” See L.F.P. Inc v. Hustlertv.com, FA0201000-104134 (National Forum, March 11, 2002), citing, America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[i]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to complainant’s mark and for the same business.”)
Finally, although the website was disabled shortly after Complainant contacted Respondent to cease use of the domain name, Respondent’s use of this domain name was strictly for commercial gain with the intent to divert consumers, and thus, Respondent cannot claim, nor can it demonstrate, any legitimate noncommercial use or fair use of the domain name. Respondent’s sole intent is to commercially gain from the use of this domain name, which is evident from its website. As discussed above, the website associated with the domain name porntube.net was a link site or a portal site. The links on the website are mostly associated with affiliate programs, wherein the person forwarding traffic to a linked site is paid for any sales or sign-ups, or advertisements for which Respondent would have been paid, and unrelated websites. For instance, Respondent’s webpage directs users via its ‘related searches’ section to x tube (xtube.com), porno tube (pornotube.com), porn city (porncity.com) and free tube (freetube.com). These sites are unrelated to each other. Misdirecting Internet traffic by utilizing Complainant’s mark does not equate to a bona fide offering of goods or services under Policy ¶4(c)(i), nor is it an example of legitimate noncommercial or fair use of a domain name under Policy ¶4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Interestingly, a link for “PORN TUBE” is listed under the heading ‘Related Searches’. Thus, when the page was operational, it appears that the Registrant was using the website at porntube.net to direct traffic to Complainant’s website porntube.com, which bears the trademark PORNTUBE. It is clear that the marketplace was the adult entertainment marketplace. Clearly, the Registrant knew of Complainant and its PORNTUBE trademark as the website for porntube.net included a “PORN TUBE” link, and utilized the trademark. As seen from above, Respondent has no legitimate interest or rights in the domain name porntube.net.
In vast contrast to Respondent, Complainant has a legitimate interest and right in the domain name porntube.net. Indeed, through Complainant’s long and consistent use, the PORNTUBE mark has become well-known and recognized by consumers throughout the world. In addition to its general adult entertainment services, from at least 2007 to the present, the PORNTUBE brand has been used to provide aggregated video services to approximately 150,000 visitors per day, wherein such services bear the PORNTUBE trademark. The current aggregated video service is operated at hdporntube.com. This service, which bears the PORNTUBE trademark, has received numerous reviews and recognition.
Since at least as early as 2005 through early 2011, Complainant’s predecessor in interest EMC Ideas, Inc., marketed and advertised the services associated with the PORNTUBE mark, and since early 2011, Complainant has marketed and advertised the services associated with the PORNTUBE mark. Complainant’s marketing efforts have resulted in worldwide sales of services bearing the PORNTUBE mark. Indeed, the porntube.com website has approximately 1.821 million unique visitors per day. Prior to the earliest possible filing date of the porntube.net domain name, total commissions on sales were in excess of $2.7 million dollars, and the site had received in excess of 18 million unique visitors. Approximately one year later, in October of 2009, total commissions on sales had exceeded $5 million dollars, almost doubling, and the site had received almost 34.5 million unique visitors, again, nearly doubling. In addition, Complainant operates an affiliate marketing program in association with the PORNTUBE trademark and the website porntube.com. The affiliates earn money for traffic directed to the porntube.com website. Complainant has paid the webmasters approximately $80,000 per month, which translates to about 47 million visitors per month.
As can be seen by the above, Complainant’s services bearing the PORNTUBE mark remain well known and sought after by consumers throughout the world. Third party statics support Complainant’s claims. For example, Google Analytics, an independent and third party tracking service shows that the webmaster’s campaigns resulted in 47.9 million visitors just between September 25 – October 24, 2012. Further, Google analytics indicates that Complainant has an average of 11,068,939 visitors per day from the US, and an average of 49 million foreign visitors. The Google Analytics tracking supports the Complainant’s information as Google Analytics indicates that the website associated with the PORNTUBE services receives about 60 million visitors per month, wherein 36 million are from 10 countries alone, and the remaining 24 million visitors emanate from the remaining countries. See Annex 14. In particular, as reflected in the Google Analytics tracking, users visiting the PORNTUBE services are from the United States, Germany, Brazil, Turkey, Italy, United Kingdom, France, Canada, India and Spain. Indeed, the PORNTUBE services are a global brand and as evinced from the above, the services bearing the PORNTUBE mark have reached consumers throughout the world.
Further, Complainant offers a content publishing program on its site, wherein content producers are invited to submit content to the porntube.com website in exchange for traffic and advertising banners on the porntube.com website. Further still, Complainant allows third parties to advertise on the porntube.com website. As an example, Complainant received 2,250 uploaded videos in September 2012 from its content publishing program. Generally, only websites that generate a high volume of traffic will be attractive to third parties for advertising purposes or content exchange purposes. Clearly, the PORNTUBE services generate sufficient traffic that third parties desire to include their advertising banners or include their content such that they can benefit from the traffic directed from the PORNTUBE services.
Recognition of the PORNTUBE mark and products associated therewith is further demonstrated by the willingness of third parties to enter into various business arrangements with Complainant. For instance, currently, Complainant has negotiated an arrangement with Orange and Vodafone to include the PORNTUBE brand in the adult section of their mobile portals. Orange and Vodafone are large, mainstream companies that operate throughout the world, including Europe. The current negotiations place the PORNTUBE brand along-side other well-known brands such as Hustler and Playboy in the mobile portals of Orange and Vodafone.
Additionally, although there are third party uses of porn tube or porntube, these are unauthorized uses that Complainant is addressing. In a recent situation, Complainant has resolved an issue with a large adult publication. In response to Complainant’s request, the publication stated that its use was in error, and changed the online article title from “porn tube sites” to “adult tube sites.” (It should be noted that the publication is a well-known adult entertainment publication that is distributed to adult entrepreneurs and businesses.) Indeed, a search on the publication shows that all uses of PORNTUBE are in reference to Complainant.
In light of the vast use of this mark by Complainant through its affiliate program and extensive marketing program, including use prior to 2008, as discussed below, Complainant contends that Respondent is not only aware of the marketing value of the PORNTUBE mark, and of the consumer recognition of this mark, but is intentionally capitalizing on the goodwill of this trademark for commercial gain.
C. Respondent’s Registration and Use of the Domain Name Was in Bad Faith
As discussed above, since the registration of the domain name, the domain name porntube.net has been used to promote and market adult entertainment products and/or services. The earliest registration of this domain name appears to be April 10, 2011, but in no instance can it be earlier than August 16, 2008, long after trademark rights had been established in the PORNTUBE mark, which use had commenced at least as early as May 2005 in the adult entertainment field. The Respondent registered this domain name long after 2005, regardless of whether it was actually registered by Respondent in 2011 or 2008.
The Complainant contends that “by using the domain name porntube.net, Registrant has intentionally attempted to attract, for commercial gain, Internet users to its 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 Registrant’s web site.” Evidence of Respondent’s intent is illustrated by the fact that Respondent is using a domain name identical to Complainant’s mark to divert Internet users to a different website that features links to unrelated adult websites throughout the Internet. It can be inferred that Respondent makes a profit from the amount of Internet traffic it diverts to these websites. Therefore, Respondent is commercially benefiting from the likelihood of confusion it has created through the use of Complainant’s mark, and Respondent’s actions evidence bad faith use pursuant to Policy ¶4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) and State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Furthermore, based on the long prior use and consumer awareness of Complainant’s mark, and the fact that Respondent chose Complainant’s mark to attract Internet users to its website, it can be inferred that Respondent had actual knowledge of Complainant’s rights in the PORNTUBE mark when it registered the disputed domain name. Registration of an infringing domain name despite actual knowledge of Complainant’s rights is evidence of bad faith pursuant to Policy ¶4(a)(iii). See Kmart v. Kahn (id.) and Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"). Indeed, Respondent was forced to register the .net domain name and not the more sought after top level .com extension. Thus, it can be inferred that Respondent knew or should have known of Complainant’s use of the mark as the Complainant’s website was operational at that time and prominently displayed the PORNTUBE trademark. See also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Indeed, the registration after the establishment of the mark’s notoriety demonstrates and permits the inference that Respondent registered the porntube.net domain name with either actual notice or constructive knowledge of Complainant’s PORNTUBE mark. It is inconceivable that Respondent, the owner of an online adult entertainment website was unaware of Complainant’s mark prior to its registration of the porntube.net domain name.” See e.g., L.F.P. Inc. v. HustlerTV.com, FA0201000104134 (Nat. Arb. Forum March 11, 2002). As expressed in the L.F.P. case, “[t]his is evidence of bad faith registration.” Id.
The evidence presented and the arguments set forth above demonstrate that “by using the domain name, Registrant has intentionally attempted to attract, for commercial gain, Internet users to its 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 Registrant’s web site.” There is absolutely no other reason or purpose for the use and registration of this domain name. Accordingly, the registration and use of this domain name was in bad faith and in willful disregard of Complainant’s rights, and can be interpreted to be motivated by the desire to directly trade off the goodwill of Complainant’s trademark.
In light of the above arguments and evidence, Complainant contends that it has demonstrated that the domain name porntube.net is identical to Complainant’s registered trademark, Respondent has no legitimate interest in the domain name, and that Respondent has registered and used the domain name in bad faith. Accordingly, Complainant respectfully requests that the domain name be transferred to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims it registered the PORNTUBE mark with trademark authorities in several countries. See, for example, USPTO (Reg. No. 3,936,197 filed Oct. 29, 2008; registered on March 29, 2011); and CIPO (Reg. No. 779,803 registered on June 2, 2010). Based upon the evidence provided, the Panel finds Complainant acquired the marks through an Assignment of Record from their previous owner. Complainant has adequately demonstrated its rights in the PORNTUBE mark through such trademark registrations. The earliest filing date for those registered marks is the filing date with the USPTO of October 29, 2008. See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant contends even though the <porntube.net> domain name has been used prior to the registration of the PORNTUBE mark, Complainant has common law rights dating back to 2005. Complainant argues it was assigned rights in the PORNTUBE mark in 2011, but prior to this the mark had been used in the sale of adult oriented goods and services since 2005. Complainant states that prior to the earliest possible date of registration of the disputed domain name (2008), total sales and commissions made under the PORNTUBE mark exceeded $2.7 million dollars, and the website had exceeded 18 million unique visitors. Complainant also claims the PORNTUBE mark has consistently been used in the adult oriented material business since its inception in 2005 to the present day. Previous panels have held the continuous use of a mark as a satisfactory showing of common law rights. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Furthermore, previous panels have held a complainant establishes common law rights when their use of a mark establishes a secondary meaning of the word(s) that make up that mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel agrees and finds common law rights in the PORNTUBE mark exists, based upon Complainant’s showing of sales and website visits.
Complainant argues a comparison of the domain name and registered trademark illustrates the domain name is identical Complainant’s registered trademark. The addition of the generic top-level domain “.net” in the disputed domain name must be disregarded for the purpose of this analysis because every domain name must have a TLD (either a gTLD or a ccTLD). Therefore, the Panel finds the <porntube.net> domain name is identical to the PORNTUBE mark under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis); Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the complainant’s trademark TOSHIBA).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant notes the domain name is currently registered in the name of “Domain Manager.” While Complainant makes no specific Policy ¶4(c)(ii) arguments proving that Respondent is not commonly known by the <porntube.net> domain name, it seems clear “Domain Manager” is unrelated to the domain name. Respondent has failed to come forward with any evidence it is known as “Porntube”. Therefore, the Panel finds Respondent is not commonly known by the <porntube.net> domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complaint argues Respondent is misdirecting Internet users by utilizing the PORNTUBE mark in his domain name. Complainant submits this does not constitute a bona fide offering of goods and services, nor is it an example of a legitimate noncommercial or fair use of the domain name. Finally, Complainant claims Respondent is gaining profit by sending visitors to its <porntube.net> domain name through hyperlinks to third-party websites. This Panel agrees. WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Respondent’s alleged use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims the disputed domain name appears to have been registered on April 10, 2011 through information obtained on DomainTools.com, even though the WHOIS shows an earlier creation date of November 29, 2004. Respondent has not contested this analysis.
Complainant claims prior to Respondent shutting down the website, Respondent was using the domain name for commercial gain to divert consumers from Complainant. Complainant contends the <porntube.net> domain name was being used solely as a portal featuring links to websites. Respondent would have been paid for directing users via the domain names ‘related searches’ sections to other adult oriented websites. Complainant submitted evidence to this effect by using the Wayback archive. Screenshots were provided for July 2, 2006 and June 20, 2011. The content consists almost wholly of hyperlinks to other adult-oriented material. While linking to pornographic web site might normally be considered evidence of bad faith registration and use, that analysis is not appropriate when dealing with a clearly pornographic oriented domain name. Previous panels have held it is a bad faith use and registration to use of a disputed domain name to offer hyperlinks to competing third-party websites. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). This Panel concurs and finds it is bad faith use and registration to use a disputed domain name to offer services directly competing with Complainant’s mark. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Respondent registered and used the domain name in bad faith because it sought to confuse Internet users seeking Complainant’s business in the hopes of generating commercial gain, all as prohibited under Policy ¶4(b)(iv).
Complainant contends Respondent knew about Complainant’s PORNTUBE mark prior to registering the domain name because PORNTUBE is so widely recognized and ranked so highly in terms of internet traffic. Complainant further notes the website included links to Complainant’s <porntube.com> domain name. While panels have concluded constructive notice is not sufficient to support a bad faith finding, the Panel concludes Respondent had actual knowledge of Complainant’s mark because it its fame. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <porntube.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, January 4, 2013
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