Licensing IP International S.à.r.l. v. Alexander Ivahnenko
Claim Number: FA1912001873825
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Alexander Ivahnenko (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flashpornhub.com>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.
On December 05, 2019, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <flashpornhub.com> 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@flashpornhub.com. 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.
A timely Response was received and determined to be complete on December 16, 2019.
On December 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant is the owner and operator of numerous adult oriented websites. Complainant has rights in the trademark PORNHUB through its use in commerce since 2007 and its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) and other national trademark offices of various countries dating back to 2012. Respondent’s <flashpornhub.com> domain name, registered on November 9, 2018, is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “flash” and the “.com” generic top-level domain (”gTLD”).
Respondent has no rights or legitimate interests in the <flashpornhub.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant
Respondent registered and used the <flashpornhub.com> domain name in bad faith. Respondent is attempting to disrupt Complainant’s business and attracting Internet users for commercial gain. Additionally, Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registration
B. Respondent
Respondent agrees to transfer the disputed domain name.
Respondent has consented to voluntarily transfer the disputed domain name to Complainant. As such, no formal findings under the Policy will be made.
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."
Preliminary Issue: Respondent’s Consent To Transfer
The Forum received an email from Respondent after having served it with the Complainant. In this email, Respondent consents to voluntarily transfer the <flashpornhub.com> domain name to Complainant. However, after the initiation of this proceeding, the concerned Registrar placed a hold on Respondent’s account and therefore Respondent cannot, on its own, transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <flashpornhub.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
In its email to the Forum, dated December 16, 2019, the Respondent states “I do not want to participate in this dispute, since I am not right and the applicant can get my domain…” and “I apologize for this situation. I was not aware of the fact that it was impossible to use ‘Pornhub’ in the domain name. I didn’t know that ‘Pornhub’ is a trademark.” Therefore, the Panel has determined that it is not necessary to analyze the present case under the elements of the UDRP and it may be ordered that the disputed domain name be transferred to Complainant upon the Respondent’s voluntary consent.
The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flashpornhub.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 23, 2019
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