Licensing IP International S.à.r.l. v. Privacy.co.com / Savvy Investments, LLC Privacy ID# 1129328
Claim Number: FA2003001886921
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# 1129328 (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youpor.com>, registered with Sea Wasp, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2020; the Forum received payment on March 4, 2020.
On March 6, 2020, Sea Wasp, LLC confirmed by e-mail to the Forum that the <youpor.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 March 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@youpor.com. Also on March 9, 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 April 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant operates numerous websites featuring adult-oriented content.
The Complainant has rights in the YOUPORN trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,534,702, registered Nov. 18, 2008).
Respondent’s <youpor.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely misspells Complainant’s trademark and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <youpor.com> 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 trademark.
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 unaffiliated and competing websites.
Respondent registered and used the <youpor.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by diverting Internet users to third party websites that may present a false impression of affiliation with Complainant. Furthermore, Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to competing websites. Respondent is typosquatting. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the YOUPORN trademark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
- International Trademark Registration No IR935114 YOUPORN (fig), registered August 3, 2007 for services in class 41, covering European Union;
- Australian National Trademark Registration No 1229826 YOUPORN (word), registered February 1, 2010 for goods and services in classes 25, 38, 41 and 42; and
- U.S. Trademark Registration No 3,534,702 YOUPORN (fig), registered November 18, 2008 for services in class 41.
The Complainant also generally refers to a number of YOUPORN trademarks, registered in several countries around the world.
Respondent registered the <youpor.com> domain name on September 11, 2018.
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”).
The Complainant claims rights in the YOUPORN trademark through its registration of the trademark around the world, including with the USPTO (e.g., Reg. No. 3,534,702, registered Nov. 18, 2008). Registration with the USPTO is sufficient to demonstrate rights in a trademark 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 find that the Complainant has rights in the YOUPORN trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <youpor.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely misspells the YOUPORN trademark and adds the “.com” gTLD. Introducing a spelling error into a recognizable trademark and adding a gTLD may not sufficiently distinguish a disputed domain name from a complainant’s trademark under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES trademark because it omitted the letter “e” from the trademark and added the generic top-level domain “.com”). Here, Complainant argues the Respondent merely removes the letter “n” from YOUPORN trademark.
Therefore, the Panel find that Respondent’s <youpor.com> domain name is confusingly similar to Complainant’s trademark YOUPORN.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 <youpor.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed or authorized by the Complainant to use Complainant’s trademark.
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 trademark 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)”). In the present case, the Panel notes that the WHOIS of record identifies the Respondent as “Privacy.co.com / Savvy Investments, LLC Privacy ID# 1129328” and no information in the record indicates that Respondent was authorized to use Complainant’s trademark or was commonly known by the disputed domain name. Therefore, the Panel find that Respondent has no rights or legitimate interests in the <youpor.com> 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 <youpor.com> domain name s 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 divert Internet users to nonaffiliated and competing third party website/s. Using a disputed domain name to redirect to divert Internet users seeking a complainant goods or services to a third party websites 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 Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage that Complainant alleges competes with Complainant. The Panel finds that Respondent fails to use the <youpor.com> 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).
Complainant argues that Respondent registered and used the <youpor.com> domain name in bad faith. Specifically, that Respondent is attempting to disrupt Complainant’s business by diverting Internet users to third party websites that may present a false impression of affiliation with Complainant. Registering a disputed domain name for the purpose of diverting Internet users seeking a complainant’s services to websites offering competing service may be evidence of bad faith under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, Complainant provided screenshots of the disputed domain name’s resolving webpage that Complainant alleges competes with Complainant. Therefore, the Panel find that Respondent registered and used the <youpor.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent is attempting to attract Internet users for commercial gain by diverting the users to competing websites. Registering a disputed domain name to redirect Internet users to competing service for commercial gain may be evidence of bad faith under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”). Here, Complainant provided screenshots of the disputed domain name’s resolving webpage, which Complainant asserts provide some financial gain to Respondent. Therefore, the Panel find that Respondent registered and used the <youpor.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Furthermore, Complainant argues that 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.”). Here Complainant argues the Respondent merely removed the letter “n” from Complainant’s trademark and legitimate domain name to take advantage of Internet users spelling mistakes. Therefore, the Panel find that Respondent registered and used the <youpor.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the YOUPORN trademark at the time of registering the <youpor.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (FORUM Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (FORUM January 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 and worldwide fame along with the fact that Respondent is typosquatting.
The Complainant also provide significant arguments in support of the date to be considered regarding the disputed domain name, as it seems to have been registered originally on October 24, 2006, but in the name of the Respondent first on September 11, 2018. The Panel therefore wants to strongly point out that the “registration date” in a domain name dispute is always the date when the disputed domain name was registered in the name of the respondent in the dispute. That date may be the same as the original date of creation of the disputed domain name, if the domain name has been continuously registered in the name of the same holder / respondent since then, but as soon as a domain name is transferred to a new holder, the new registration date in the name of that new holder is the date to consider in a dispute.
The Panel notes that on September 11, 2018, the registration date to consider in this case, the Complainant’s trademark was well known on the specific market, and the Panel find that it is obvious that the Respondent had full knowledge of the YOUPORN trademark when registering <youpor.com> - a typosquatted version of YOUPORN - and thus registered the 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 <youpor.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 9, 2020
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