Licensing IP International S.à.r.l. v. DOMAIN ADMIN
Claim Number: FA2001001881326
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is DOMAIN ADMIN (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ppornhub.com>, registered with Network Solutions, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2020; the Forum received payment on January 30, 2020.
On January 31, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <ppornhub.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@ppornhub.com. Also on February 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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. 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
i) Complainant operates numerous websites featuring adult-oriented content. 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 October 9, 2012). The disputed domain name is confusingly similar to Complainant’s mark as Respondent merely duplicates the first letter of the Complainant’s mark.
ii) Respondent has no rights or legitimate interests in the disputed 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 merely diverting Internet users seeking Complainant to a website hosting competing hyperlink advertisements.
iii) Respondent registered and used the disputed domain name in bad faith. The Google Trends graph illustrates that the textual component of Complainant’s mark has become a popular search term in the Google search engine just a few months after the date of first use of Complainant’s mark, which constitutes evidence that before the registration of the disputed domain name, Complainant’s mark quickly became distinctive identifiers that consumers associated with Complainant’s services and that Complainant’s mark acquired relatively rapid recognition due to a significant Internet presence. Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to a competing website. Respondent is typosquatting. Respondent had actual or constructive knowledge of Complainant’s rights in the PORNHUB mark at the time of registration.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on November 19, 2007.
2. Complainant has established 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 October 9, 2012).
3. The first use of Complainant's mark in commerce was made on March 11, 2007.
4. The textual component that constitutes Complainant’s mark on the Google Trends graph started to appear in October 2007.
5. Complainant provides screenshot of the disputed domain name’s resolving webpage, which shows various styles of pay-per-click hyperlink adds for similar services as offered by Complainant.
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 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 claims 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. 09, 2012). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is confusingly similar to Complainant’s mark as Respondent merely duplicates the first letter of the Complainant’s mark. While not argued by Complainant, the Panel notes Respondent includes the “.com” generic top-level domain (gTLD). Introducing spelling mistakes of the mark into a disputed domain name by adding an additional letter and gTLD may not be sufficiently distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”). Complainant argues Respondent added the letter “p” to the start of Complainant’s mark and that this change does not avoid a finding of confusing similarity. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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)”). The Panel notes the WHOIS of record identifies Respondent as “DOMAIN ADMIN” and “LEVEL2, LLC” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to host competing hyperlink advertisements. Using a disputed domain name to host pay-per-click advertisements that compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshot of the disputed domain name’s resolving webpage, which shows various styles of pay-per-click hyperlink adds for similar services as offered by Complainant. Therefore, the Panel finds Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and used the disputed domain name in bad faith. The Panel observes that if the registration of the disputed domain name predates Complainant’s first claimed rights in its mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. The Panel notes that the creation date of the disputed domain name (November 19, 2007) predates the registration of Complainant’s first claimed rights in its PORNHUB mark through its registration of the mark with USPTO (e.g., Reg. No. 4,220,491, registered October 9, 2012).
Complainant contends that upon review of the Google Trends graph for the textual component that constitutes Complainant’s marks, there is a strong link between the dates when Complainant started to use the relevant Complainant’s mark and the period when the textual components that constitute Complainant’s mark started to appear, become popular and climb in charts generated by Google Trends. It started to appear in October 2007 and recorded 1 million daily visits as of November 26, 2007. As such, the Panel finds that the registration of the disputed domain name as of November 7, 2007 was not purely coincidental.
Complainant contends that Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to a competing website. Registering a disputed domain name for the mere purpose of hosting competing hyperlinks may be evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant provides screenshot of the disputed domain name’s resolving webpage, which shows various styles of pay-per-click hyperlink adds for similar services as offered by Complainant. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Furthermore, Complainant argues Respondent is typosquatting and this act is further evidence of Respondent’s bad faith registration and use. Introducing common spelling error into a disputed domain name that take advantage of Internet user’s inadvertent typographical errors when entering a domain name may be evidence of bad faith under 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 the addition of an extra letter is a common mistake and Respondent is seeking to take advantage of these errors. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under 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 <ppornhub.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 21, 2020
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