Licensing IP International S.à r.l. v. Privacy Protect, LLC (PrivacyProtect.org) et al.
Claim Number: FA1904001840847
Complainant: Licensing IP International S.à r.l. of Luxembourg, Luxembourg.
Complainant Representative:
Complainant Representative: EuroDNS SA of Leudelange, Luxembourg.
Respondent: Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, US.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
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REGISTRIES and REGISTRARS
Registries: .TOP Registry; Afilias Limited; Uniregistry, Corp.
Registrars: PDR Ltd. d/b/a PublicDomainRegistry.com
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Antonina Pakharenko-Anderson, as Examiner.
Complainant submitted: April 29, 2019
Commencement: May 6, 2019
Default Date: May 21, 2019
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 names be suspended for the life of the registration.
Clear and convincing evidence.
Procedural Findings:
This complaint and findings relate to four domain names: <brazzers.top> <pornhub.link> <pornmd.kim> <tube8.lol>. No multiple Complainants or Respondents are involved in this proceeding. No domain names are dismissed from this complaint.
Factual Findings:
The Complainant is the owner of several trademark registrations (hereinafter – “Complainant’s trademarks”) for and with the following terms:
BRAZZERS, registered in Canada, European Union, and with the United States Patent and Trademark Office (“USPTO”), such as Reg. No. 5.218.687 BRAZZERS, registered on June 6, 2017, covering services in Intl Classes 35, 38 and 41. The Complainant also has a Trademark Clearinghouse registered for and with the US Trademark 5218687, under the handle 0006110000089601-1.
PORNHUB, registered in Canada, European Union, and with the United States Patent and Trademark Office (“USPTO”), such as Reg. No. 4.220.491 PORNHUB, registered on 2012-10-09 covering services in Intl Classes 38, 41 and 42. The Complainant also has a Trademark Clearinghouse registered for and with the US Trademark 4.220.491, under the handle 0006110000085640-1.
TUBE8, registered in Canada, European Union, and with the United States Patent and Trademark Office (“USPTO”), such as Reg. No. 4.220.492 TUBE8, registered on October 9, 2012, covering services in Intl Classes 38, 41 and 42. The Complainant also has a Trademark Clearinghouse registered for and with the US Trademark 4.220.492, under the handle 0006110000093389-1.
PORNMD, registered with the United States Patent and Trademark Office (“USPTO”), Reg. No. 4.484.877 PORNMD, registered on February 18, 2014, covering services in Intl Classes 42.
1. The registered domain names are identical or confusingly similar to the marks [URS 1.2.6.1] for which the Complainant holds a valid national or regional registration and that is in current use.
The domain names “brazzers.top”, “pornhub.link”, “tube8.lol” and “pornmd.kim” (the disputed domain names) are strictly identical to the Complainant’s trademarks the sole difference being the domain name extensions used to register them. The addition of the generic toplevel domains “.top” , “.link”, “.lol” and “.kim” is irrelevant in determining whether the disputed domain names are confusingly similar to Complainant’s trademarks (see Research in Motion Limited v. Banay, WIPO Case No. D20090151 (Mar. 20, 2009).
The Examiner finds that the disputed domain names <brazzers.top> <pornhub.link> <pornmd.kim> <tube8.lol> fully incorporate the Complainant’s trademarks.
Thus, the Examiner finds that the registered domain names <brazzers.top> <pornhub.link> <pornmd.kim> <tube8.lol> are identical or confusingly similar to the marks [URS 1.2.6.1] for which the Complainant holds a valid national or regional registration and that is in current use.
2. Registrant has no legitimate right or interest to the domain names [URS 1.2.6.2]
To the the best of the Complainant’s knowledge , the domain names “brazzers.top”, “pornhub.link”, “tube8.lol” and “pornmd.kim” have been registered by the Respondent without the Complainant previous consent or knowledge.
Because the Complainant has made a prima facie showing of its rights in the Complainant trademarks, the Examiner therefore finds that the Registrant has no legitimate right or interest to the domain names.
Thus, the Examiner finds that the Respondent has not established any rights or legitimate interests in the domain names <brazzers.top> <pornhub.link> <pornmd.kim> <tube8.lol> under URS 1.2.6.2.
3. The domain names were registered and are being used in bad faith [URS 1.2.6.3]
The domain names “brazzers.top”, “pornhub.link”, “tube8.lol” and “pornmd.kim” are being used for offering services identical to the ones protected by the Complainant’s trademarks and Clearinghouse registrations. The Respondent has therefore registered several domain names identical to the Complainant trademarks and domain names, and the Respondent is using them to offer identical content and to have commercial gain with the ads redirecting Internet users to the Complainant competitors. Respondent does not fall within the category of legitimate noncommercial user.
Additionally, and after reviewing the information publicly reachable on the Whois database of these domain names, it appeared the disputed domain names were registered several years after the registration of the corresponding domain names used by the Complainant, in any cases, after the Complainant’s trademarks registration.
Moreover, these domain names resolve to websites indicating the Complainants trademarks in title, and offering service identical to the Complainants trademarks and receiving adds revenue by misusing the Complainants trademarks.
Thus, the Examiner finds the domain names <brazzers.top> <pornhub.link> <pornmd.kim> <tube8.lol> as those which were registered and are being used in bad faith.
FINDING OF ABUSE or MATERIAL FALSEHOOD
The Examiner finds that the complaint was neither abusive nor contained material falsehoods.
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.
brazzers.top
pornhub.link
tube8.lol
pornmd.kim
Antonina Pakharenko-Anderson, Examiner
Dated: May 24, 2019
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