Licensing IP International S.à.r.l. v. Admin Mabinc / Mab Inc
Claim Number: FA1810001812984
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by Marcel Naud of ROBIC, LLP, Canada. Respondent is Admin Mabinc / Mab Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhob.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.
Lars Karnøe as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2018; the Forum received payment on October 22, 2018.
On October 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pornhob.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2018 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@pornhob.com. Also on October 24, 2018, 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.
A timely Response was received and determined to be complete on November 12, 2018.
On November 16, 2018 Additional Submission were timely received.
On November 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lars Karnøe 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the proprietor of several nationally and regionally registered trademarks consisting of or comprising “Pornhub” as its sole word element for the relevant goods and services, as well as the domain name pornhub.com.
Furthermore, the Complainant claims that both the “Pornhub” trademark and domain name are extremely well-known with approximately 60 million visitors per day, making the Pornhub Marks ranked #29 in Alexa’s Global (all categories) top 500 sites on the web, just a few ranks after Netflix.com and Linkedin.com, but before sites such as microsoft.com, ebay.com and bing.com
Finally, between 2007 and 2011 pornhub.com received over 70 billion visits.
B. Respondent
The Respondent, who claims to be an expert in the field of online advertising, denies that the Complainant has shown trademark rights and argues that “HOB” has a has an independent meaning and should, consequently, be considered as a different trademark.
Also, the Respondent argues that the disputed domain name was purchased at an auction in 2011, due to its descriptive meaning, at a time where neither the Complainant’s trademarks nor website was as popular as they are today.
C. Additional Submissions
In their Additional Submissions, the Complainant argues that the registration of pornhub.com predates the first registration of the disputed domain and that the Respondent’s purchase on auction was between October 2, 2011, and December 10, 2011, consequently, after the Complainant filed their first trademark applications.
There can be no doubt that the Complainant’s trademarks and domain name are extremely well-known, both within the scope of their actual services but also to mainstream advertisers.
Secondly, there can be no doubt that the disputed domain name was originally registered after pornhub.com and that the Respondent purchased it after the application of the Complainant’s application for several trademarks.
Finally, it cannot be taken into account that the Respondent, who claims to be an expert in online marketing with entertainment, was unfamiliar with the Complainant’s domain name and trademarks when purchasing the disputed domain name.
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.
Pursuant to common trademark practice and the ICANN Policy of assessing the likelihood of confusion, this Panel finds, in accordance with the Policy Paragraph 4(a)(i), that “pornhub” and “pornhob” are highly visually and phonetically similar.
Although the Respondent argues that “HOB” has an independent meaning, this Panel is not of the opinion that this alleged meaning is so widely known and/or accepted that this minor conceptual difference between the Complainant’s trademarks and domain name and the disputed domain name is enough to offset the overall assessment of similarly.
Pursuant to the Policy Paragraph 4(a)(ii) this Panel finds that the Respondent has no legitimate interest in the disputed domain name, as it is also currently is being used for services identical with the Complainants.
Finally, pursuant to Policy Paragraph 4(a)(iii) this Panel finds that regardless of the disputed domain name being purchased at an auction the disputed domain name was registered in bad faith and that the Respondent still uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhob.com> domain name be TRANSFERRED from Respondent to Complainant.
Lars Karnøe, Panelist
Dated: November 26, 2018
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