Licensing IP International S.à r.l. v. Privacy Protect, LLC (PrivacyProtect.org) et al.
Claim Number: FA1809001804504
Complainant: Licensing IP International S.à r.l. of Luxembourg, Luxembourg.
Complainant Representative:
Complainant Representative: EuroDNS SA of Leudelange, Luxembourg.
Respondent: Privacy Protect, LLC (PrivacyProtect.org) of , Massachusetts, US.
Respondent Representative: No response submitted
REGISTRIES and REGISTRARS
Registries: Afilias plc; Uniregistry, Corp.
Registrars: PDR Ltd. d/b/a PublicDomainRegistry.com
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: September 4, 2018
Commencement: September 4, 2018
Default Date: September 19, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complaint at hand refers to the domain names <pornhub.red>, <redtube.kim> and < youporn.click> registered by Privacy Protect, LLC (PrivacyProtect.org) of 10 Corporate Drive Burlington, MA 01803 United States of America.
In accordance with the provisions of URS, Complainant claims (i) that the domain names <pornhub.red>, <redtube.kim> and < youporn.click> are identical or confusingly similar to word marks for which the Complainant holds valid national registrations and that are in current use; (ii) that The Registrant has no legitimate right or interest to the domain names, and (iii) that the domain names were registered and are being used in bad faith.
Complainant contends that it owns rights in the trademarks “REDTUBE”, “YOUPORN” and “PORNHUB”, all of them being registered in the U.S. and other jurisdictions, and all of them having been validated through valid entries made at the Trade Mark Clearinghouse. It is contended as well that said trademarks are famous due to the amount of visits (millions) in connection with adult entertainment services.
The Complainant asserts, in addition, that after reviewing the information publicly reachable on the whois database of the domain names, it appears that the respondent registered them several years after the registration of the Famous Trademarks basis of the claim. Moreover, these domain names resolve to websites offering adult videos pertaining to the Complainant core services, and
contain links to the Complainants’ websites and logos trying to impersonate it.
It is claimed, in conclusion, that the domain names are being used for offering services identical to the ones protected by the Complainant Trademarks and Clearinghouse registrations.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
Complainant submitted evidence to demonstrate that it is the owner of the trademarks “REDTUBE”, “YOUPORN” and “PORNHUB”, and also demonstrated that said trademarks were validated through registrations with the Trademark Clearinghouse, and therefore are in use.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Examiner is in agreement with the assertion that the litigious domain names <pornhub.red>, <redtube.kim> and < youporn.click> identically reproduce the trademarks “PORNHUB”, “REDTUBE”, and “YOUPORN” registered by the Complainant. Moreover, since said trademarks are registered with the Trademark Clearing House, when registering the domains <pornhub.red>, <redtube.kim> and < youporn.click> the Registrant must have received notifications with the registered marks details, to inform him about a potential conflict. Going ahead with the registration of the domain names evidences no legitimate right or interest to the domain names. Moreover, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith. a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online 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 or location or of a product or service on that web site or location.
Determined: Finding for Complainant
In the present case it is evident that the disputed domain names <pornhub.red>, <redtube.kim> and < youporn.click> exactly reproduce the registered trademarks “PORNHUB”, “REDTUBE”, and “YOUPORN” owned by the Complainant, being the extensions .red, .kim, and .click the only different elements. The bad faith in the registration of the domains <pornhub.red>, <redtube.kim> and <youporn.click> is clearly evidenced by the fact that the disputed domains resolve to websites offering adult videos pertaining to the Complainant core services. Thus, it is imperative to agree with the Complainant in that the domain owner is attempting to create an association with the business of the Complainant. With the domains <pornhub.red>, <redtube.kim> and < youporn.click> the owner of the disputed domains does intend to create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<pornhub.red>, <redtube.kim> and < youporn.click>.
Luz Helena Villamil Jimenez, Examiner
Dated: September 19, 2018
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