Licensing IP International S.ŕ.r.l. v. Heart Bleed
Claim Number: FA2002001885461
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Heart Bleed (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youporn.wiki>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2020; the Forum received payment on February 24, 2020.
On February 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <youporn.wiki> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 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@youporn.wiki. Also on March 3, 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 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant is a word-leader in the adult entertainment market. Complainant has rights in the YOUPORN mark through its registration of the mark with multiple national trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,534,702, registered Nov 18, 2008).
2. Respondent’s <youporn.wiki>[i] domain name is identical or confusingly similar to Complainant’s mark as it features Complainant’s mark and only adds the “.wiki” top-level domain (“TLD”).
3. Respondent lacks rights or legitimate interests in the <youporn.wiki> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the YOUPORN mark.
4. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent creates the false impression of affiliation with Complainant as a “wiki” website.
5. Respondent registered and uses the <youporn.wiki> domain name in bad faith. Respondent uses the domain name to disrupt Complainant’s business by diverting Internet users searching for Complainant to Respondent’s page and offering services in competition with Complainant.
6. Respondent fails to make active use of the <youporn.wiki> domain name.
7. Respondent knew of Complainant’s trademark rights at the time Respondent registered the domain name given the fame of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the YOUPORN mark. Respondent’s domain name is confusingly similar to Complainant’s YOUPORN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <youporn.wiki> domain name and that Respondent registered and uses the domain name 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 has rights in the YOUPORN mark through its registration of the mark with multiple national trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,534,702, registered Nov 18, 2008). Registration of a mark with a national trademark agency like the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, Complainant has established rights in the YOUPORN mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <youporn.wiki> domain name is identical or confusingly similar to Complainant’s mark as it features Complainant’s mark and only adds the “.wiki” top-level domain (“TLD”). The addition of a TLD alone fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel holds that the <youporn.wiki> domain name is confusingly similar to the YOUPORN mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <youporn.wiki> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interests in the <youporn.wiki> domain name as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the YOUPORN mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a 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 WHOIS information for the <youporn.wiki> domain name lists the registrant as “Heart Bleed,” and there is no other evidence to suggest that Respondent was authorized to use the YOUPORN mark. Therefore, the Panel holds that Respondent is not commonly known by the <youporn.wiki> domain name per Policy ¶ 4(c)(ii).
Complainant next contends Respondent fails to use the <youporn.wiki> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent creates the false impression of affiliation with Complainant as a “wiki” knowledge base website. A domain name which incorporates the mark of another and which passes off as a complainant and offers goods or services which compete with a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the archived resolving webpages of the <youporn.wiki> domain name which display Complainant’s mark and services in competition with Complainant. The Panel also agrees with Complainant that the addition of the TLD “.wiki” gives the impression that the domain name is affiliated with Complainant as a wiki, or knowledge base website, on which users collaboratively modify and structure content directly from a web browser. Therefore, Respondent does not use the <youporn.wiki> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <youporn.wiki> domain name in bad faith as Respondent uses the domain name to disrupt Complainant’s business by diverting Internet users searching for Complainant to Respondent’s page and offering services in competition with Complainant. Passing off as a complainant to offer competing goods or services shows bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The record includes screenshots of the archived resolving webpages of the <youporn.wiki> domain name which display Complainant’s mark and services in competition with Complainant. Thus, the Panel agrees with Complainant that the domain name gives a false impression of affiliation with Complainant and therefore that Respondent registered and uses the <youporn.wiki> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant further contends Respondent registered and uses the <youporn.wiki> domain name in bad faith as Respondent knew of Complainant’s trademark rights at the time Respondent registered the domain name given the fame of Complainant’s mark. Actual knowledge of a complainant’s mark prior to registering a domain incorporating that mark is adequate to find bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant argues that Respondent was aware of Complainant’s trademark rights prior to registration of the domain name given that Complainant’s website received between 55 and 120 million daily page views in 2017 and 40 and 105 million page views in 2018. Because it is reasonable to infer that the Respondent had actual knowledge of Complainant’s rights in the YOUPORN mark when Respondent registered the <youporn.wiki> domain name, the Panel holds that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds 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 <youporn.wiki> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 30, 2020
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