Licensing IP International S.ŕ.r.l. v. Priit Eiber
Claim Number: FA1912001873816
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Priit Eiber (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pormhub.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard 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, NameCheap, Inc. confirmed by e-mail to the Forum that the <pormhub.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2020 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@pormhub.com. Also on December 12, 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.
A timely Response was received and determined to be complete on December 30, 2019.
On January 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant alleges, inter alia, that:
Complainant provides online services to the adult entertainment market.
Complainant holds a registration for the PORNHUB service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,220,491, registered October 9, 2012.
The domain name <pormhub.com> was first registered on October 13, 2007, by a registrant not a party to this proceeding.
From that date to the present, a total of 135 distinct ownership records have been created for the domain name.
Respondent acquired and registered the domain name on or about November 12, 2018.
The domain name is confusingly similar to Complainant’s PORNHUB mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the PORNHUB mark or to register the domain name.
Respondent does not use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to trade off the goodwill associated with Complainant’s mark for commercial gain by redirecting Internet users seeking Complainant’s official website to a third-party website operating in competition with the business of Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
The domain name is an instance of typo-squatting.
Respondent knew of Complainant’s rights in the PORNHUB mark at the time it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent asserts, among other things, that:
There are numerous domain names available in the marketplace which contain minor variations of the term PORNHUB.
Respondent purchased the <pormhub.com> domain name in 2018 for $65,000.
Respondent has redirected 100% of Internet traffic attracted to the domain name directly to Complainant’s official website.
Respondent is prepared to sell the domain name for a price reflecting its market value.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the PORNHUB service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark[ … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Estonia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pormhub.com> domain name is confusingly similar to Complainant’s PORNHUB service mark. The domain name incorporates the mark in its entirety, with only a substitution for the letter “n” by the letter “m” and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018):
Respondent arrives at each of the disputed domain names by merely misspelling each of the .. domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the … domain names from Complainant’s trademark.
See also Lucasfilm Entertainment Company Ltd. LLC v George Ring, FA 1673825 (Forum June 7, 2016) (finding that, although a respondent’s domain name <lukasfilm.com> incorporated the LUCASFILM mark of another and merely substituted a phonetically identical ‘k’ for the ‘c,’ it was nonetheless confusingly similar to that mark).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested <pormhub.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the disputed <pormhub.com> domain name, and that Complainant has not authorized Respondent to use the PORNHUB service mark or to register the domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Priit Eiber,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, over the objection of Respondent, that Respondent uses the <pormhub.com> domain name to trade off the goodwill associated with Complainant’s mark for commercial gain by redirecting Internet users seeking Complainant’s official website to a third-party website operating in competition with the business of Complainant. Respondent contends that it has redirected 100% of Internet traffic attracted to the domain name directly to Complainant’s official website. Respondent does not say when this redirection occurred. This is significant because Respondent’s rights or interests in the domain name are assessed as of the date of filing of the Complaint. On the point, see, for example: Elders Limited v. Private Company, D2007-1099 (WIPO September 10, 2007). Accordingly, Complainant’s contention prevails, and Respondent’s employment of the challenged domain name must be found to be neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018):
Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use where Respondent is apparently using the disputed domain name to offer for sale competing services.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶4(a)(ii).
Before coming to the merits of Complainant’s allegation that Respondent has registered and is using the <pormhub.com> domain name in bad faith, we must address a threshold question as to the effect of the timing of events set out in the parties’ pleadings for their impact on this issue. The Complaint before us sets out the following points:
a. Complainant holds a registration for the PORNHUB service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,220,491, registered October 9, 2012.
b. The domain name <pormhub.com> was first registered on October 13, 2007, by a registrant not a party to this proceeding.
c. From that date to the present, a total of 135 distinct ownership records have been created for the domain name.
d. Respondent acquired and registered the domain name on or about November 12, 2018.
Respondent does not dispute any of this, but it confirms that it acquired the domain name in 2018. Complainant makes reference to a claim that it has rights in the domain name under the common law dating from the first quarter of 2007, which, if adequately established, would give Complainant time priority over the claim of Respondent, or that of any other registrant in the lengthy chain of ownership of the domain name, to superior rights in the domain name vis-ŕ-vis those of Complainant in its mark. However, Complainant has not supplied satisfactory evidentiary support for its claim of common law rights in its mark. The pivotal question of Respondent’s bad faith, or its absence, therefore hinges on whether Respondent’s rights in the domain name run from its original registration by another party in 2007, or, instead, from the date of Respondent’s acquisition and registration of the domain name in 2018, which falls six years after Complainant obtained registration of the PORNHUB service mark.
Helpfully, this is not the first occasion on which this question has come before a UDRP panelist. It is now plain that a line of panel decisions has established a consensus that the date on which a respondent holder acquired and registered its domain name is the date from which panelists will assess the question of bad faith registration and use. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, sec. 3.9, and cases cited therein.
Accordingly, Complainant has time priority as to its rights obtained by registration of its PORNHUB service mark in the fall of 2012, and the full scope of Respondent’s knowledge and behavior running from its acquisition and registration of the <pormhub.com> domain name in November of 2018 are in the zone of interest. We turn, then, to the substance of Complainant’s claim that Respondent has both registered and is using (as of the date of the Complaint) the domain name in bad faith.
We note first in this regard that our review of the record compels the conclusion that Respondent knew of Complainant and its rights in the PORNHUB mark when Respondent registered the <pormhub.com> domain name in 2018. This is evident both from the form of the domain name and the use made of it by Respondent to attract Internet users to a website doing business in competition with that of Complainant. That knowledge is a marker for bad faith in the registration of the domain name. See, for example, iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018):
Respondent’s prior knowledge [of a UDRP complainant’s mark, and, therefore, its bad faith in registering a confusingly similar domain name] is evident … from Respondent’s use of its trademark[-]laden domain name to direct internet traffic to a website which is a direct competitor of Complainant.
We are also persuaded by the evidence that the <pormhub.com> domain name is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in creating a domain name in order to take advantage of typing errors commonly made by Internet users in entering into a web browser the name of an enterprise with which they wish to do business online. Here the desired effect is obtained by substituting for the letter “n” in Complainant’s mark the letter “m,” found next to it on the standard QWERTY keyboard. Typo-squatting, without more, may be taken as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Adorama, Inc. v. Moniker Privacy Services, FA1610020 (Forum May 1, 2015):
Respondent has also engaged in typo[-]squatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration [and use] under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <pormhub.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 10, 2020
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