Licensing IP International S.à.r.l. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA2002001885460
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhub.bet>, registered with Dynadot, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2020; the Forum received payment on February 24, 2020.
On February 26, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <pornhub.bet> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@pornhub.bet. Also on February 26, 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 20, 2020, 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. 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
Complainant operates numerous websites featuring adult-oriented content. Complainant has rights in the PORNHUB mark through its use in commerce since 2007 and its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) and many other national trademark offices dating back to 2012. Respondent’s <pornhub.bet> domain name, registered on January 1, 2019, is identical or confusingly similar to Complainant’s mark as Respondent merely adds the “.bet” generic top-level domain (“gTLD”) to Complainant’s fully incorporated mark.
Respondents has no rights or legitimate interests in the <pornhub.bet> domain name as Respondent is not commonly known by the disputed domain names 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 diverting Internet users seeking Complainant to unaffiliated websites that solicits users to download a particular internet browser app.
Respondent registered and used the <pornhub.bet> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain by redirecting them to a website encouraging users to download a particular internet browser app. Additionally, Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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.
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”) and other national trademark offices around the world. Registration with such offices 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 the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <pornhub.bet> domain name is identical or confusingly similar to Complainant’s mark as Respondent merely adds the “.bet” gTLD to Complainant’s fully incorporated mark. Merely adding a gTLD to an otherwise unaltered mark may not sufficiently distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶4(a)(i).”). Therefore, the Panel finds that Respondent’s <pornhub.bet> domain name is identical to Complainant’s mark.
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 <pornhub.bet> domain name as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. In considering this issue, relevant WHOIS information can be used as evidence to show that 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 that the WHOIS record for the <pornhub.bet> domain name identifies the Respondent as “Super Privacy Service LTD c/o Dynadot” and no information in the record provides Respondent’s true identity or indicates that it is authorized to use Complainant’s mark. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <pornhub.bet> domain name under Policy ¶ 4(c)(ii) as Respondent is not commonly known by the disputed domain name.
Next, Complainant argues that Respondent fails to use the <pornhub.bet> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is diverting Internet users seeking Complainant to unaffiliated websites that solicits users to download a particular internet browser app. Using a disputed domain name to divert Internet users that are seeking a complainant’s goods or services 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also 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).”) Here, Complainant provides a screenshot of the <pornhub.bet> domain name’s resolving webpage, which invites users to download a “UC Browser” that appears to be unrelated to Complainant’s services. Complainant asserts that the Respondent is seeking to be paid or rewarded for referring traffic to the third party website at which the promoted browser may be downloaded. As the Respondent has provided no Response or made any other submission in this case, this assertion is unrebutted. Therefore, based upon a preponderance of the evidence before it, the Panel finds that Respondent’s use of the <pornhub.bet> domain name in the manner described herein is not a use 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).
Complainant asserts that Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registering the <pornhub.bet> domain name. Actual knowledge of a complainant's rights in its mark prior to registering a disputed domain name can adequately create a foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations, the distinctiveness of its PORNHUB mark, and the worldwide fame of the mark as supported by evidence such as user statistics and page rankings of its <pornhub.com> website. As such, the Panel finds it highly likely that Respondent did have actual knowledge of Complainant’s right in its mark.
Complainant further argues that Respondent registered and used the <pornhub.bet> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain by redirecting them to a website encouraging users to download a specific browser app in the hopes of graining compensation from a third-party. Registering a disputed domain name that is confusingly similar to a famous trademark for the purpose of deceiving Internet users and redirecting them to an unaffiliated website so to benefit commercially may be evidence of bad faith under Policy ¶ 4(b)(iv). See International Business Machines Corporation v. Le Van Hai, D2019-3000 (WIPO Mar. 4, 2020) (use of the famous IBM trademark found to be in bad faith where “Respondent baits those consumers and then switch them to its products, which is totally unrelated to the products of the Complainant that the consumers may actually search for.”) Here, Complainant provides a screenshot of the <pornhub.bet> domain name’s resolving webpage which directs users to download a UC Browser unrelated to Complainant’s services. Complainant alleges that this activity benefits Respondent financially through the gaining of referral fees and Respondent has not participated in this case to rebut this assertion. Therefore, the Panel finds that Respondent has registered and used the <pornhub.bet> domain name in bad faith as contemplated by Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhub.bet> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 23, 2020
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