DECISION

 

Licensing IP International S.à.r.l. v. 响 施

Claim Number: FA2005001897516

 

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada.  Respondent is 响 施 (“Respondent”), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pornhub.cool>, registered with Dynadot, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 22, 2020; the Forum received payment on May 22, 2020.

 

On May 25, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <pornhub.cool> 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 May 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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.cool.  Also on May 27, 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 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 a response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is engaged in the online adult entertainment business.

 

Complainant holds a registration for the PORNHUB trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,586,801, registered October 16, 2018.

 

Respondent registered the domain name <pornhub.cool> on August 27, 2019.

 

The domain name is confusingly similar to Complainant’s PORNHUB mark.

 

Respondent is not licensed or otherwise authorized to use Complainant’s PORNHUB mark.

 

Respondent has not been commonly known by the domain name.

 

Respondent does not use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Instead, Respondent makes no active use of the domain name.

 

Respondent does not have rights to or legitimate interests in the domain name.

 

Respondent knew of Complainant’s rights in the PORNHUB mark when it registered the domain name.

 

Respondent registered and uses the domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and

 

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

 

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.    Respondent has no rights or legitimate interests in respect of the domain name; and

iii.   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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate.  The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory.  See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true).  But see 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”).

 

Identical and/or Confusingly Similar

Complainant has rights in the PORNHUB trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO.  See, for example, Nintendo of America Inc. v. lin amy, FA 1818485 (Forum December 24, 2018):

 

Complainant’s ownership a USPTO trademark registration for the … mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pornhub.cool> domain name is confusingly similar to Complainant’s PORNHUB mark.  The domain name incorporates the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.cool.”  This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy.  See, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003):

 

The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.

 

See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):

 

[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <pornhub.cool> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests).  See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):

 

Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy.  Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence).  Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <pornhub.cool> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the PORNHUB mark.  Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “响 施,” which may be translated as “Xiǎng shī” or “sound,” and so does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).  See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner);  see also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent does not use the <pornhub.cool> domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that the domain name does not resolve to an active website, a condition called “passive use.” This passive deployment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.  See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):

 

Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

We are persuaded by the evidence that, as is alleged in the Complaint before us, Respondent has failed to make any active use of the <pornhub.cool> domain name in the more than nine (9) months since it was registered in 2019.  Failure to make any active use of the domain name for an extended period, particularly where, as here, it is difficult to imagine any active use of the domain name that would not offend the provisions of the Policy, is evidence of bad faith in its registration and use under Policy ¶ 4(a)(iii).  See, for example, Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1532854 (Forum February 25, 2014):

 

Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.

 

We are also convinced by the evidence that Respondent knew of Complainant and its rights in the PORNHUB mark when it registered the challenged domain name.  This further demonstrates Respondent’s bad faith in registering it.  See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name). 

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pornhub.cool> domain name be forthwith TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  June 22, 2020

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page