Licensing IP International S.à.r.l. v. Priit Eiber
Claim Number: FA2001001881314
Complainant is Licensing IP International S.à.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 <pornhyb.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.
Jeffrey M. Samuels, 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 <pornhyb.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@pornhyb.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 Jeffrey M. Samuels 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 Licensing IP International S.à.r.l. is a corporation located in Luxembourg. Complainant is involved in the online user-generated adult entertainment market. Complainant owns several registrations around the world for the marks PORNHUB and PORNHUB PREMIUM, the earliest of which issued in 2012. See U.S. Trademark Registration No. 4,220,491. Complainant’s PORNHUB mark is also registered with the Trademark Clearinghouse. According to a document titled “2018 Year in Review,” which was published in the “Pornhub Insights” section of the pornhub.com website, in 2018 alone, 33.5 billion visits were made to the site and average daily visitors totaled 92 million.
The disputed domain name, <pornhyb.com>, was created and registered by a third party in October 2007. The <pornhyb.com> site resolves to web pages featuring adult entertainment. Complainant contends, however, that based on the Domain Tools report set forth in Appendix 2 to the Complaint, Respondent Priit Eiber, a resident of Estonia, did not acquire the domain name until November 2018.
Complainant maintains that the disputed domain name is confusingly similar to Complainant’s marks “given that all but the TLD part are word elements in the Domain Name that are almost identical to the textual component of the Complainant’s Marks and that <pornhyb.com> is an obvious or intentional misspelling of `PORNHUB’ (and of pornhub.com) or a minor variation with a very high degree of resemblance with `PORNHUB’, including in appearance, sound and the ideas suggested.” Complainant notes that its PORNHUB mark and the domain name’s use of “pornhyb” differ only in that the letter “U” in PORNHUB is replaced by the letter “y” in pornhyb and that the letters “U” and “Y” are next to each other on most keyboards. Thus, Complainant maintains, the disputed domain name constitutes typosquatting.
Complainant further argues that Respondent has no rights or legitimate interests in the <pornhyb.com> domain name. More specifically, Complainant indicates that Respondent cannot establish he is using the disputed domain name in connection with a bona fide offering of goods or services given that the evidence establishes that Respondent registered the domain name and uses it to trade off the goodwill of Complainant’s marks. Further, Complainant adds, Respondent is not commonly known by the domain name and may not be found to be making a noncommercial or fair use of the domain name insofar as the evidence supports a determination that Respondent acquired the domain name and uses it to redirect Internet users who were looking for the pornhub.com website to unrelated alternative websites.
With respect to the issue of bad faith registration and use, Complainant asserts that Respondent registered the disrupted domain name primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the Policy. Complainant points out that its marks have been extensively used on a worldwide basis and had a “significant Internet presence before the Domain Name was acquired by the Respondent and that the website it redirects to provides services of a similar nature or in the same category as those on the Complainant’s website.”
Complainant also points out that the act of typosquatting has been found “inherently parasitic.”
According to Complainant, the Panel should also find bad faith in accordance with paragraph 4(b)(iv) of the Policy. “More specifically, the website linked to the Domain Name advertises an online adult entertainment game, inviting users to click on a link in order to enter the game. When users click on this link, they are redirected to a website competing with and/or unrelated to the Complainant (e.g. `familysexsimulator.net’ or `dirty.games’) whereby the Respondent, as it is appropriate to infer since such conclusion is prima facie obvious and/or no other plausible conclusion is apparent, is paid for referring traffic to such website…”
Finally, Complainant points out that Respondent was involved in an earlier UDRP proceeding involving the domain name pormhub.com, which proceeding led to a determination that the domain name should be transferred to Complainant. See Licensing IP International S.à.r.l v. Priit Eliber FA 1873816 “(Forum Jan. 10, 2020). The instant Respondent is also involved in a pending UDRP proceeding involving the domain name pornhub.co.
B. Respondent
Respondent indicates that his company, Itech Media Solutions OU, bought the pormhub.com[i] domain name in November 2018 from the Sedo marketplace for $29,900 as an investment. He further contends that, in order to avoid any problems with the PORNHUB trademark or a finding of bad faith, he redirected 100% of all Internet traffic directly to pornhub.com from the very beginning of domain name purchase and that as soon as he received the instant Complaint, he stopped showing any content on <pornhyb.com>. “Therefore, <pornhyb.com> is not being used in bad faith and is not doing business in competition with that of Complainant…. In short, our company feels that we have done everything correctly. We bought the domain name with official documents from official marketplace, haven’t used `Pornhub’ trademark in any way and haven’t used the domain name in bad faith.”
The Panel finds that: (1) the disputed domain name is confusingly similar to the PORNHUB trademark and that Complainant has rights in such mark; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is being used 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.
The Panel concludes that the disputed domain name is confusingly similar to the PORNHUB trademark. As noted by Complainant, the disputed domain name, <pornhyb.com>, is an obvious or intentional misspelling of PORNHUB. The substitution of a single letter and the addition of a TLD does not distinguish a domain name for purposes of paragraph 4(a)(i) of the Policy. See Oracle International Corp. 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.”)
The Panel further determines that Complainant, as the owner of registrations throughout the world for the PORNHUB trademark and as the result of the widespread use of the mark, has rights in such mark. 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.”)
The Panel concludes that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
The evidence supports a determination that Respondent registered the domain name and uses it to trade off the goodwill of Complainant’s PORNHUB mark. At the time Respondent registered the domain name in November 2018, Complainant’s pornhub.com website was being viewed billions of time by millions of users. As of November 2018, the pornhub.com website was ranked in the top 100 of visited sites as listed in alexa.com. The fact that the disputed domain name differs in only letter from the PORNHUB mark and that the involved letters appear next to each other on a standard keyboard supports a finding that Respondent engaged in what is known as typosquatting, which is a species of cybersquatting. In view of this, it may not be found that Respondent is using the domain name in connection with a bona fide offering of goods or services.
There also is no evidence that Respondent is commonly known by the disputed domain name. The WHOIS record of the domain name lists the registrant’s name as Priit Eiber.
While Respondent alleges that, from the time of purchase of the disputed domain name, he has redirected all traffic from the <pornhyb.com> site to Complainant’s pornhub.com site, the evidence contradicts such assertion. Exhibit 10 to the Complaint demonstrates that, as late as January 27, 2020, visitors to the disputed website would land on pages relating to adult entertainment or redirected to other adult entertainment sites. That being the case, Respondent may not be found to have engaged in a noncommercial or fair use of the domain name.
Finally, Complainant asserts, and Respondent does not deny, that Complainant never requested, allowed or authorized Respondent to register or hold the domain name in issue.
As noted above, the disputed domain name was first registered by a third party in 2007 and Complainant first obtained a trademark registration for the PORNHUB mark in 2012. However, Respondent’s rights relate back only to November 2018, when he acquired the disputed domain name. Thus, the fact that the disputed domain name was first registered prior to Complainant’s 2012 registration does not preclude a finding of bad faith registration and use on the part of Respondent. (…the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview”) §3.9 and cases cited therein.)
The Panel finds that the evidence establishes that the disputed domain name was registered and is being used in bad faith. The evidence indicates that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor. As noted above, the disputed domain name reverts to sites that offer adult-entertainment, the very same service that Complainant offers under its PORNHUB trademark. While Respondent contends he stopped showing any content on <pornhyb.com> as soon as he received the complaint, such fact, even if accepted[ii], does not preclude a finding of the requisite bad faith.
The use of the (present tense) words “has” and “have” in Paragraphs 4(a)(i) and (ii), and “is being used” in Paragraph 4(a)(iii), suggest that proof of the relevant matters listed in those subparagraphs is to be provided as at the time a complainant files its complaint. See Lonely Planet Publications Pty. Ltd. v. Mike Tiler, WIPO Case D2004-0670. See also WIPO Overview, §2.11 (“Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.”) While this section of the WIPO Overview relates to the issue of rights or legitimate interests, the Panel can find no reason why it should not also apply with respect to the issue of bad faith registration and use. Moreover, to allow a respondent to avoid a determination of bad faith registration and use based on actions taken after a complaint is filed would permit respondents to manipulate the system and provide no assurance that the challenged act would not re-commence at a point in the future.
The Panel further determines that, through his use of the <pornhyb.com> domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to his site and those of others by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <pornhyb.com> site or of the services offered at such site. As determined above, the evidence establishes that Respondent’s <pornhyb.com> site, at least up until the time the instant complaint was filed, relates to adult entertainment, the same area of commerce Complainant’s PORNHUB mark is directed, and that the disputed domain name is confusingly similar to the PORNHUB mark. Moreover, given the widespread use of Complainant’s pornhub.com site for a period of time far preceding Respondent’s registration of the disputed domain name[iii], it is clear that Respondent was aware of Complainant and of its PORNHUB mark at the time he registered the <pornhyb.com> domain name.
There are other indicia of the requisite bad faith. For example, it is well-settled by various UDRP panel decisions that the practice of typosquatting is, by itself, evidence of the bad faith registration of a domain name. See Thierry Mugler v. Carmen Jimenez/Domain Discreet Privacy Service, WIPO Case D2014-0602.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhyb.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: March 12, 2020
[i] The Response references the purchase of the pormhub.com domain name on November 24, 2018 but the purchase agreement attached as an exhibit to the Response indicates that the domain name in dispute, pornhyb.com, was also purchased on that date.
[ii] The Panel notes that the Response does not include language to the effect that the information set forth is, to the best of one’s knowledge, complete and accurate, in contravention of UDRP Rule 5(viii). Moreover, there is no evidence, such as a current screenshot of the pornhyb.com site, in support of Respondent’s contention.
[iii] Complainant’s application to register its PORNHUB trademark with the United States Patent and Trademark Office includes a date of first use and first use in commerce of March 11, 2007.
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