Licensing IP International S.à.r.l. v. Nikolay Alexeev
Claim Number: FA1912001873811
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Nikolay Alexeev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pronhub.site> (“Domain Name”), registered with Danesco Trading Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.
On December 5, 2019, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <pronhub.site> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name. Danesco Trading Ltd. has verified that Respondent is bound by the Danesco Trading 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 December 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2019 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@pronhub.site. Also on December 11, 2019, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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, Licensing IP International S.à.r.l., is a corporation that does business in the online adult entertainment market. Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,220,491, registered Oct. 9, 2012). Respondent’s <pronhub.site> domain name is confusingly similar to Complainant’s mark as it misspells the PORNHUB mark by transposing the letter “o” with the letter “r” while appending the “.site” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <pronhub.site> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the Domain Name to trade off the goodwill associated with Complainant’s mark for commercial gain through offering competing adult video content.
Respondent registered and uses the <pronhub.site> domain name in bad faith. Respondent’s use of the Domain Name to offer competing adult-oriented videos disrupts Complainant’s business by creating a false association between the content on Respondent’s website and Complainant’s PORNHUB mark. Lastly, Respondent must have had actual knowledge of Complainant’s rights in the PORNHUB mark at the time it registered the Domain Name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Rather Respondent sent two e-mails on December 12, 2019 that are reproduced in their entirety below:
Email 1
I do not understand the essence of the claim.
1) the domain before me was from different owners and I look no one had problems
2) the domain is remotely similar to the domain of those who filed the complaint, by analogy, here are a lot of things, the sausage is similar to a handrail in a bus, but we don’t take a handrail for a sausage
Email 2
What is the official answer?
Why they did not offer to buy this domain
Complainant holds trademark rights for the PORNHUB mark. The Domain Name is confusingly similar to Complainant’s PORNHUB mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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 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.
In view of Respondent's failure to submit a formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the PORNHUB mark through its registration of the mark with the USPTO. Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <pronhub.site> domain name is confusingly similar to Complainant’s PORNHUB mark as it merely transposes the letters “r” and “o” in the PORNHUB mark and adds the “.site” gTLD. These changes are insufficient to distinguish the Domain Name from the PORNHUB mark under Policy ¶ 4(a)(i). See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because the domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the PORNHUB mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Nikolay Alexeev” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is used to redirect to a website at www.pornoscraper.com where Respondent offers adult videos in direct competition with Complainant under the heading “PornHub Video”. The use of a domain name to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, December 22, 2018, Respondent had actual knowledge of Complainant’s PORNHUB mark, which had been in use for 11 years at the time. The Respondent is offering services from the Domain Name that are in direct competition to the Complainant’s services, from a website with the title “PornHub Video”, a direct reference to Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to redirect Internet users to Respondent’s own website at www.pornoscraper.com where Respondent offers adult entertainment videos in direct competition with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii).
I note in the interest of completeness that even if the unsupported assertion made by Respondent that the Domain Name was owned by previous owners was true, that does not prevent a finding that Respondent lacks rights or legitimate interests or that it registered and used the Domain Name in bad faith. Equally Complainant has no obligation to purchase a domain name from a third party and Complainant’s decision not to offer to purchase the Domain Name has no bearing on the outcome of this proceeding.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pronhub.site> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: January 5, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page