Licensing IP International S.ŕ.r.l. v. Milen Radumilo
Claim Number: FA2005001897514
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhtb.com>, registered with Network Solutions, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2020; the Forum received payment on May 22, 2020.
On May 28, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <pornhtb.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@pornhtb.com. Also on June 8, 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 July 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant operates numerous websites featuring adult-oriented content. Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012). See Compl. Annex 3. Respondent’s <pornhtb.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <pornhtb.com> domain name as Respondent is not commonly known by the disputed domain name and has not 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 parking the disputed domain name with pay-per-click advertisements.
Respondent registered and uses the <pornhtb.com> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name. Next, Respondent has an established pattern of bad faith registrations. Furthermore, Respondent is attempting to disrupt Complainant’s business by offering links to competing goods or services. Finally, Respondent is attempting to attract Internet users for financial gain by offering links to competing services on the parked webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Luxembourg company that operates numerous websites featuring adult-oriented content.
2. Complainant has established its trademark rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012).
3. Respondent registered the <pornhtb.com> domain name on March 22, 2019.
4. Respondent has parked the disputed domain name to solicit pay-per-click advertisements.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the PORNHUB mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012). See Compl. Annex 3. Registration with the USPTO 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).”). Since Complainant provides examples of registration with the USPTO, the Panel finds that the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PORNHUB mark. Complainant argues Respondent’s <pornhtb.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark and adds the “.com” gTLD. Introducing a spelling error into a recognizable mark and adding a gTLD may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). Here, Complainant argues the Respondent merely replaces the letter “u” with the letter “t” from Complainant’s mark and adds the “.com” gTLD. Therefore, the Panel finds Respondent’s <pornhtb.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PORNHUB trademark and to use it in its domain name, merely altering slightly the spelling of the mark;
(b) Respondent registered the <pornhtb.com> domain name on March 22, 2019;
(c) Respondent has parked the disputed domain name to solicit pay-per-click advertisements;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <pornhtb.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 mark. 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 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 the WHOIS of record identifies the Respondent as “Milen Radumilo” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <pornhtb.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <pornhtb.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is parking the disputed domain name with pay-per-click advertisements. Using a disputed domain name to compete with a complainant by hosting pay-per-click links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the domain name’s resolving webpage, showing links for adult-oriented services that may compete with Complainant, as well as evidence of Respondent use of a monetization service for parked domain names. See Compl. Annex 10. Therefore, the Panel finds Respondent fails to use the <pornhtb.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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and used the <pornhtb.com> domain name in bad faith because Respondent is attempting to sell the disputed domain name. Registering a disputed domain name merely to offer it for sale may be evidence of bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Here, Complainant provides a screenshot of a domain name reseller, which lists the <pornhtb.com> domain name for $688 USD. See Compl. Annex 10. Therefore, the Panel finds Respondent registered and used the <pornhtb.com> domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues Respondent has an established pattern of bad faith registrations due to prior UDRP decisions that have resulted in transfer. A pattern of bad faith registrations may be established under Policy ¶ 4(b)(ii) when a respondent has been a party in prior UDRP decisions that resulted in the transfer of the disputed domain name. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant provides a list of prior ADR Forum and WIPO cases that Respondent has been party to, all of which have resulted in the transfer of the disputed domain name. See Amend. Compl. Annex 12. Therefore, the Panel finds that Respondent has an established pattern of bad faith registrations under Policy ¶ 4(b)(ii).
Thirdly, Complainant argues Respondent is attempting to disrupt Complainant’s business in bad faith by offering links to competing goods or services. Registering a disputed domain name to disrupt a complainant’s business by offering competing hyperlinks may be evidence of bad faith under Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). Here, the Panel notes that Complainant provides screenshots of the <pornhtb.com> domain name’s resolving webpage, showing links for adult-oriented services that may compete with Complainant. See Compl. Annex 10. Therefore, the Panel finds Respondent registered and used the <pornhtb.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Fourthly, Complainant argues Respondent is attempting to attract Internet users for financial gain in bad faith by offering links to competing services on the parked webpage. Registering a disputed domain name that offers competing hyperlinks so to attract Internet users for commercial gain may be evidence of bad gait under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel notes again Complainant’s screenshots of the <pornhtb.com> domain name’s resolving webpage, showing links for adult-oriented services that may compete with Complainant, as well as evidence of Respondent use of a monetization service for parked domain names. See Compl. Annex 10. Therefore, the Panel finds Respondent registered and used the <pornhtb.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the PORNHUB mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhtb.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 3, 2020
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