Licensing IP International S.à r.l. v. REDACTED PRIVACY et al.
Claim Number: FA1904001841075
Complainant: Licensing IP International S.à r.l. of Luxembourg, Luxembourg.
Complainant Representative: EuroDNS SA of Leudelange, Luxembourg.
Respondent: Andrei Ivanov of Moscow ru, International, RU.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: .TOP Registry; Afilias Limited; Binky Moon, LLC; Dog Beach, LLC; dot Bid Limited; ShortDot SA; Top Level Design, LLC
Registrars: NameCheap, Inc.
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.
Natalia Stetsenko, as Examiner.
Complainant submitted: May 2, 2019
Commencement: May 14, 2019
Default Date: May 29, 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 name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant has established rights in the following trademarks
YOUPORN, registered the United States Patent and Trademark Office (“USPTO”), such as Reg. No. 3.534.702 YOUPORN, registered on November 18, 2008, covering services in Intl Class 41. The registration and use is confirmed by the entry with the Trademark Clearinghouse registered for and with the US Trademark 3.534.702, under the handle 0006110000062379-1.
PORNHUB, registered in the United States Patent and Trademark Office (“USPTO”), such as Reg. No. 4.220.491 PORNHUB, registered on October 9, 2012, covering services in Intl Classes 38, 41 and 42. The registration and use is confirmed by the entry with the Trademark Clearinghouse registered for and with the US Trademark 4.220.491, under the handle 0006110000085640-1.
TUBE8, registered in 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 registration and use is confirmed by the entry with the Trademark Clearinghouse registered for and with the US Trademark 4.220.492, under the handle 0006110000093389-1.
REDTUBE, registered in the United States Patent and Trademark Office (“USPTO”), such as Reg. No. 3.884.412, registered on November 30, 2010 covering services in Intl Classes 9, 38, 41 and 42. The registration and use is confirmed by the entry with the Trademark Clearinghouse registered for and with the US Trademark 3.884.412, under the handle 0006110000067462-1.
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.
SEXTUBE, registered with the United States Patent and Trademark Office (“USPTO”), Reg. No. 3,350,922 SEXTUBE, registered on December 11, 2007, covering services in Intl Classes 38 and 41.
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.
The domain names <pornohub.bid>, <pornhubteen.top> and <xxxyouporn.top> are confusingly similar to the Complainant’s trademarks because they incorporate them in their entirety, simply adding the letter “o”, the word “teen” or letters “XXX”, each of which, as noted by Complainant, refer to adult content, and the gTLDs „.bid” and „.top”. Adding a generic term, a letter or letters does not eliminate the likelihood of confusion, hence is not sufficient to escape the finding that the mentioned domains name are confusingly similar to the Complainant's trademarks.
The remaining disputed domain names are identical to the Complainant’s trademarks because they incorporate them in their entirety without any alterations and/or additions and simply add the respective gTLDs, which does not affect finding on these domains being identical to the Complainant’s trademarks.
2. According to Complainant, Respondent was not authorized to register any of the disputed domain names. The services of Respondent are identical to those provided by Complainant and relate to adult entertainment.
The Panel notes that Respondent operates adult websites from all the disputed domain names, which deal with explicitly sexual material. In this Panel’s opinion, under the circumstances of the case available for review under the URS procedure, the mere fact that the domain names incorporate Complainant’s marks and resolve to websites offering identical and/or similar services is not automatically sufficient to prove that Respondent’s use does not constitute a bona fide offering of services.
Given the descriptive/suggestive nature of Complainant’s marks and the higher standard set forth under the URS Policy, there is no basis for Panel to find in favor of Complainant. Particularly, it is not evident from the records that Internet users would be misled into believing that the services offered through the disputed websites originate from Complainant or that Respondent’s activity is affiliated or endorsed by Complainant.
3. Complainant notes that the disputed domain names were registered several years after the registration of the corresponding Complainant’s domain names and after the respective trademarks registrations. Furthermore, according to Complainant, these domain names resolve to websites offering service identical to those covered by Complainant’s trademark registrations and receive adds revenue by misusing the Complainant’s trademarks. Finally, the registration of several domain names related to various trademarks of Complainant clearly demonstrates a willingness to benefit from Complainant’s trademarks.
While in a number of cases previous Panels found that registration of multiple domain names incorporating third parties’ trademarks constitutes bad faith registration, this Panel finds the scope of case review available under the URS Policy insufficient to resolve the matter. The conclusion on the third element of the Policy would require more in-depth analysis and additional evidence supporting bad faith registration and use, particularly that related to trademarks’ reputation and fame leading to the likelihood of confusion.
Therefore, it is found that Complainant did not establish bad faith registration and use under the URS Policy.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.
Natalia Stetsenko, Examiner
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