Licensing IP International S.à.r.l. v. Privacy.co.com / Savvy Investments, LLC Privacy ID# 1002007
Claim Number: FA2001001881336
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Privacy.co.com / Savvy Investments, LLC Privacy ID# 1002007 (“Respondent”), Wyoming.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pirnhub.com>, registered with Sea Wasp, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin 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, Sea Wasp, LLC confirmed by e-mail to the Forum that the <pirnhub.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@pirnhub.com. Also on February 6, 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 February 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <pirnhub.com> domain name is confusingly similar to Complainant’s PORNHUB mark.
2. Respondent does not have any rights or legitimate interests in the <pirnhub.com> domain name.
3. Respondent registered and uses the <pirnhub.com> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant provides online adult entertainment. Complainant has common law rights in the PORNHUB mark through its continuous use in commerce since 2007. Complainant holds a registration for the PORNHUB mark with numerous trademark entities, including the United States Patent and Trademark Office (“USPTO”) (e.g. 4,220,491 registered on October 9, 2012, showing a First Use Date of March 11, 2007).
The <pirnhub.com> domain name was originally registered on November 6, 2007, and Respondent acquired it sometime after it was incorporated in December of 2013. Respondent uses the disputed domain name to compete with 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 to have common law rights in the PORNHUB mark through its continuous use in commerce. Common law rights may be established for purposes of Policy ¶ 4(a)(i) by demonstrating 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.”). Complainant provides 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 mark under Policy ¶ 4(a)(i).
Complainant also asserts rights in the PORNHUB mark based on registration of the mark with the numerous trademark entities, including the USPTO. Registration of a mark with multiple trademark entities is sufficient to establish rights in a mark under 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, showing a First Use Date of March 11, 2007). The Panel therefore finds that Complainant has rights in the PORNHUB mark dating back to the First Use Date, as verified by the USPTO.
Respondent’s <pirnhub.com> domain name is simply a misspelling of Complainant’s PORNHUB mark, with the added “.com” generic top-level domain (“gTLD”). The substitution of a single letter and the addition of a gTLD do not distinguish a domain name from a mark 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.”). The Panel therefore finds that Respondent’s <pirnhub.com> domain name is confusingly similar to Complainant’s PORNHUB mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights or legitimate interests in the <pirnhub.com> domain name, as Respondent is not commonly known by the domain name and Respondent is not a licensee or authorized to use Complainant’s PORNHUB mark. The WHOIS information for the disputed domain name lists the registrant as “Privacy.co.com/Savvy Investments, LLC Privacy ID#1002007.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); see also 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); see also 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)”).
Complainant also argues that Respondent fails to use the <pirnhub.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the disputed domain name to trade off the goodwill of Complainant by diverting Internet users looking for Complainant’s website to an unaffiliated website. Using a complainant’s mark in a disputed domain name to divert internet users to competing website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving webpage, which shows a competing website. Therefore, the Panel finds that Respondent’s use of the disputed domain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant also argues that Respondent engages in typosquatting, which is further evidence of bad faith registration and use of the <pirnhub.com> domain name. The Panel agrees and finds 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.”).
The Panel finds that Complainant has satisfied 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 <pirnhub.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 29, 2020
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