Licensing IP International S.ŕ.r.l. v. Priit Eiber
Claim Number: FA2001001881299
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 <pornhuv.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2020; the Forum received payment on January 30, 2020.
On January 30, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <pornhuv.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 February 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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@pornhuv.com. Also on February 5, 2020, 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 February 25, 2020.
On February 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a leader in the online adult entertainment market. Complainant has common law rights in the PORNHUB mark through its continuous use in commerce. Complainant also has rights in the PORNHUB mark through registration of the mark with numerous trademark entities, including the United States Patent and Trademark Office (“USPTO”) (e.g. 4,220,491 registered on October 9, 2012). Respondent’s <pornhuv.com> domain name is identical or confusingly similar to Complainant’s trademark as it includes the PORNHUB trademark in its entirety, replacing the letter “b” with the letter “v” and adding the “.com” top-level domain (“TLD”). Various changes in the registrant name/organization, registrar, name server history, and resolving webpage indicate that it is likely that the domain name registrant has also changed.
Respondent lacks rights or legitimate interests in the <pornhuv.com> domain name. Respondent is not authorized to use the Complainant’s PORNHUB trademark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s uses the disputed domain name to trade off the goodwill of complainant and divert Internet users looking for Complainant’s website to an unrelated, alternative site.
Respondent registered and uses the <pornhuv.com> domain name in bad faith. Respondent registered the disputed domain name to compete with Complainant and divert Internet users to its own site, which invites Internet users to play an online adult entertainment game in competition with Complainant. Respondent engages in typosquatting, which also indicated bad faith. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the PORNHUB trademark prior to its acquisition of the disputed domain name.
B. Respondent
The Respondent bought the domain name for €15730.00 in 2018. Lots of domain names featuring the PORNHUB trademark are for sale on domain name marketplaces. In order to avoid problems with Complainant, Respondent directs SEO (search engine optimization)/Google traffic to Complainant’s website and doesn’t mention Complainant’s trademark in any way. Respondent does not use the disputed domain name in bad faith.
[The Panel note, that in its Response, Respondent mentions a <pormhub.com> domain name not subject to the instant case].
The Complainant is the owner of the following trademark registrations:
United States trademark No. 4,220,491 PORNHUB (word), registered October 9, 2012 for services in classes 38, 41 and 42;
Canadian trademark No. 1,645,050 PORNHUB (word), registered May 4, 2016 for goods and services in classes 5, 9, 10, 18, 21, 25, 35, 38 and 41.
The Complainant also generally refer to PORNHUB (word and figurative) trademarks registered in a number of other countries/regions, such as Japan, Mexico, Argentina, Great Britain and European Union, as well as claiming common law rights in the PORNHUB trademark through its continuous use in commerce.
The disputed domain name was registered in the name of the Respondent on November 2018.
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.
The Complainant claims to have common law rights in the PORNHUB trademark through its continuous use in commerce. Common law rights may be establish per Policy ¶ 4(a)(i) by establishing secondary meaning, including longstanding use of the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant has provided blog posts, media articles, and the Google Trends report to demonstrate secondary meaning and common law rights in the PORNHUB mark. Therefore, the Panel finds that Complainant has established common law rights in the PORNHUB trademark per Policy ¶ 4(a)(i).
The Complainant also asserts rights in the PORNHUB trademark based on registration of the trademark with the numerous trademark entities, including the USPTO. Registration of a trademark with multiple trademark entities is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Complainant provides a table of its various trademark registrations and a copy of its trademark registration with the USPTO (e.g. 4,220,491 registered on October 9, 2012), as well as with the Canadian Intellectual Property Office (e.g. 1,645,050 registered on May 4, 2016). The Panel therefore find that Complainant has rights in the PORNHUB trademark per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <pornhuv.com> domain name is identical or confusingly similar to the Complainant’s trademark as it includes the PORNHUB trademark in its entirety, replacing the letter “b” with the letter “v” and adding the “.com” top-level domain (“TLD”). The substitution of a single letter and the addition of a TLD may not distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Oracle International Corporation v. Terence / tellraceheart, FA 1713066 (Forum Feb. 22, 2017) (“Respondent’s <oracie.com> domain name contains Complainant’s ORACLE trademark with its “l” replaced by the similarly shaped letter “i” and the top-level domain name “.com” appended thereto to form the at-issue domain name.”). As the Complainant has stated, the letters “b” and “v” are neighbors on the keyboard, and it is indeed easy to misspell a word with “b” to the same word but with “v”. The Panel therefore find that the disputed domain name is at least confusingly similar to the PORNHUB trademark under Policy ¶ 4(a)(i).
While Complainant argues that changes in the registrar, name server history, and screenshot history indicate that Respondent recently acquired the disputed domain name and thus Respondent’s rights in the domain name are subsequent to Complainant’s trademark rights, the Panel find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the trademark and whether the disputed domain name is identical or confusingly similar to Complainant’s trademark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant contends that Respondent lacks rights or legitimate interests in the <pornhuv.com> domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s PORNHUB trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See 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). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). In the present case, the Panel notes that a privacy service was used by Respondent. As a result of the proceeding, the privacy service was lifted, and the WHOIS information for the disputed domain name lists the registrant as “Priit Eiber,” and there is no other evidence to suggest that Respondent was authorized to use the PORNHUB mark. See Amend. Compl. App. 2. Therefore, the Panel may find Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <pornhuv.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s uses the disputed domain name to trade off the goodwill of the Complainant and divert Internet users looking for Complainant’s website to an unrelated, alternative site. Using a complainant’s trademark in a disputed domain name to divert Internet users to a respondent’s own website and give the impression of affiliation between the parties may not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant argues that Respondent’s use of the PORNHUB trademark is an attempt to divert internet users and trade off the goodwill of Complainant. Complainant provides screenshots of the disputed domain name’s resolving webpage, which purportedly invites Internet users to play an online adult entertainment game unrelated to Complainant. Therefore, the Panel find that Respondent’s use of the disputed domain does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered the disputed domain name to compete with Complainant and divert Internet users to its own site, which invites Internet users to play an online adult entertainment game in competition with Complainant. A respondent’s registration and use of the disputed domain name to divert internet users to a website which offers services in competition with a complainant may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage which purportedly offers adult entertainment games that competes with Complainant’s business. The Panel agrees with the Complainant’s conclusion, and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also argues that Respondent engages in typosquatting which is evidence of bad faith registration and use of the <pornhuv.com> domain name. The registration of a domain name containing a small typographical error of a trademark may show bad faith registration and use per Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Complainant argues that Respondent engages in typosquatting as the disputed domain name consists of Complainant’s PORNHUB trademark with the letter “v” substituted for the letter ‘v.” The Panel therefore find that Respondent engages in typosquatting and registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent was well aware of Complainant’s rights in the PORNHUB trademark at the time of registration of the <pornhuv.com> domain name. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize constructive notice as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant argues that Respondent’s use of the famous PORNHUB trademark and its offering of services similar to Complainant demonstrate it was well aware of Complainant’s rights in the PORNHUB trademark prior to registering the disputed domain name. The Panel agree, and find that Respondent registered the <pornhuv.com> domain name in bad faith per Policy ¶ 4(a)(iii).
In its argument under Policy ¶ 4(a)(i), Complainant argues that changes in the registrant name, registrar, name server history, and screenshot history indicate that Respondent acquired the domain name recently, thus Respondent does not have rights in the domain name that predate Complainant’s rights in the trademark. The Panel recalls that while the dates of rights are not relevant under Policy ¶ 4(a)(i), they are relevant to whether or not the respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)). Where a respondent acquires the domain name subsequent to its initial registration, the relevant date of analysis is when the domain name was transferred to the respondent. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which complainant’s rights in the mark predated). Complainant argues that the domain name registrant name and organization changed between October 25, 2018 and January 23, 2019; the registrar changed between October 25, 2018 and January 23, 2019; the name server changed on January 23, 2019; and the content displayed on the resolving webpage changed between September 10, 2018 and January 25, 2019. Complainant argues that all of this indicates that it is likely the registrant also changed in that time period. The Panel notes that Respondent provides the receipt from Respondent’s purchase of the disputed domain name, dated November 22, 2018. Although this may not be the exact date of transfer/registration of <pornhuv.com> in the name of the Respondent, the evidence provided by the Respondent clearly indicates that Respondent became the holder of <pornhuv.com> late November or beginning of December, 2018. The Panel therefore find that Respondent’s rights in the domain name do not predate Complainant’s rights in the trademark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhuv.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 12, 2020
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