Licensing IP International S.à.r.l. v. Fred Sponomi
Claim Number: FA2005001895029
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Fred Sponomi (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pronhub.xyz> (the Disputed Domain Name”), registered with Danesco Trading Ltd. (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2020; the Forum received payment on May 5, 2020.
On May 20, 2020, the Registrar confirmed by e-mail to the Forum that the <pronhub.xyz> Disputed Domain Name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the Disputed Domain Name. The Registrar has verified that Respondent is bound by the Danesco Trading Ltd. 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 May 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@pronhub.xyz. Also on May 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 June 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates several websites in the adult entertainment industry and has rights in the PORNHUB trademark through its registration of the mark with the numerous trademark agencies around the world, one of which is the United States Patent and Trademark Office (“USPTO”). The United States Registration No. is 4,220,491, registered on Oct. 09, 2012 (the “PORNHUB Mark”). Complainant claims that its business model of securing a strong position in the online adult entertainment market, is its most important asset. Complainant collects and aggregates content consisting of user-produced adult videos from a variety of sources, and its websites generate a large volume of web traffic.
Complainant contends that the Disputed Domain Name is identical or confusingly similar to the PORNHUB Mark as it consists of the entirety of Complainant’s PORNHUB Mark, except that it is misspelled by switching the letters “r” and “o”, and then followed by the generic Top-Level Domain (“gTLD”) “ ”xyz”.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Respondent is not commonly known by the Disputed Domain Name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the PORNHUB Mark, and Respondent fails to use the Disputed Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Conversely, Respondent uses the Disputed Domain Name to direct Internet users seeking Complainant’s business to Respondent’s own website.
Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith for the following reasons: Respondent disrupts Complainant’s business by diverting Internet users to Respondent’s website and Respondent does so for commercial gain by displaying ads that compete with Complainant’s business; Respondent engages in typosquatting by registering a Disputed Domain Name consisting of a misspelling of the PORNHUB Mark; and Respondent had actual knowledge of Complainant and its trademark rights at the time Respondent registered the Disputed Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademark rights in the PORNHUB Mark. The Disputed Domain Name is confusingly similar to Complainant’s PORNHUB Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name and that Respondent registered and is using the Disputed 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”).
The Panel finds that Complainant has rights in the PORNHUB Mark through its registration of the PORNHUB Mark with numerous trademark offices in jurisdictions worldwide (e.g., USPTO Reg. No. 4,220,491, registered Oct. 09, 2012). Registration of a trademark with multiple trademark offices is sufficient to establish rights in a mark. 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.”). In addition, registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the 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.”).
The Panel further finds that Respondent’s <pronhub.xyz> Disputed Domain Name is identical or confusingly similar to Complainant’s PORNHUB Mark as it consists of the entirety of Complainant’s trademark, except it is misspelled by switching the letters “r” and “o” and then adds the “.xyz” gTLD. Transposing letters of a mark to create a misspelling and adding a gTLD are not changes sufficient to distinguish a domain name for purposes of Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the Disputed Domain Name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the PORNHUB Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the Disputed Domain Name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the Disputed Domain Name resolves to a webpage containing ads that unfairly compete with Complainant’s business.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the Disputed Domain Name in bad faith.
First, Respondent registered and is using the <pronhub.xyz> Disputed Domain Name in bad faith as Respondent disrupts Complainant’s business by diverting Internet users to its own website on which is displayed content that competes with Complainant’s business. Use of a domain name to offer competing goods or services demonstrates bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products).
Second, Respondent registered and is using the <pronhub.xyz> Disputed Domain Name in bad faith given that Respondent has engaged in typosquatting when it registered the Disputed Domain Name. Respondent registered the Disputed Domain Name by misspelling the PORNHUB Mark, which it did by switching the order of the letters “r” and “o” in the trademark. Typosquatting of a registered trademark, as here, indicates bad faith registration and use per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Finally, Respondent registered and is using the <pronhub.xyz> Disputed Domain Name in bad faith because Respondent had actual knowledge of Complainant’s rights in the PORNHUB Mark at the time of registration of the Disputed Domain Name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel concludes that the misspelling of Complainant’s PORNHUB Mark is another indication that Respondent had actual knowledge of the trademark when it registered the Disputed Domain Name. Such actual knowledge constitutes bad faith registration and use under Policy ¶4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pronhub.xyz> Disputed Domain Name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 23, 2020
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