Licensing IP International S.à.r.l. v. Jurgen Neeme / hello@thedomain.io
Claim Number: FA2005001897549
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Jurgen Neeme / hello@thedomain.io (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pornhub.direct> and <pornhub.xyz>, registered with Dynadot, LLC and NameSilo, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2020. The Forum received payment on May 25, 2020.
On May 26, 2020, Dynadot, LLC and NameSilo, LLC confirmed by e-mail to the Forum that the <pornhub.direct> and <pornhub.xyz> domain names are registered with Dynadot, LLC and NameSilo, LLC and that Respondent is the current registrant of the names. Dynadot, LLC and NameSilo, LLC have verified that Respondent is bound by the Dynadot, LLC and NameSilo, LLC registration agreements 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 registrations as technical, administrative and billing contacts, and to postmaster@pornhub.direct and postmaster@pornhub.xyz. 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 registrations 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 Alan L. Limbury 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a collection of websites in the adult entertainment industry. Complainant has rights in the PORNHUB mark through its registration of the mark with numerous trademark agencies around the world. Respondent’s <pornhub.direct> and <pornhub.xyz> domain names are identical or confusingly similar to Complainant’s mark as they consist of the textual component of Complainant’s marks with the addition of a top-level domain (“TLD”).
Respondent has no rights or legitimate interests in the <pornhub.direct> and <pornhub.xyz> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its mark. Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent does not make active use of the domain names which resolve to parked webpages which display pay-per-click links to websites offering services competitive with those of Complainant.
Respondent registered and uses the <pornhub.direct> and <pornhub.xyz> domain names in bad faith. Respondent lists the domain names for sale via an auction service. Respondent demonstrates a pattern of bad faith by registering multiple domain names which infringe on Complainant’s trademark rights. Respondent disrupts Complainant’s business by diverting Internet users to Respondent’s webpages which display pay-per-click links to websites offering competitive services. Respondent knew of Complainant’s rights in the mark at the time of registration of the domain names.
Further, reverse Whois searches indicate that the Respondent’s name “Jurgen Neeme” is associated with at least 11,140 current domain names and a total of 25,148 domain names when including historical Whois records. A reverse Whois search of the Respondent’s email address indicates it is associated with at least 37,110 current domain names. This sheer quantity of domain names associated with this single holder clearly indicate that Respondent is involved as a trader in the monetization of domain names, through registration, acquisition, parked domain monetization (landing pages with PPC links), and resale.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 the domain names should be cancelled or transferred:
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 shown that it has rights in the PORNHUB mark through numerous registrations, including USPTO Reg. No. 4,220,491, registered Oct. 9, 2012 and EUIPO Reg. No. 010166973, registered May 11, 2012.
Respondent’s <pornhub.direct> and <pornhub.xyz> domain names are identical to Complainant’s mark as each includes the entirety of Complainant’s mark. The additional TLD suffixes are inconsequential and may be disregarded for the purposes of this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <pornhub.direct> domain name was registered on November 17, 2018 and the <pornhub.xyz> domain name was registered on July 19, 2018. They resolve to websites displaying pay-per-click links to other websites which offer services of the same kind as offered by Complainant under its PORNHUB mark, which the Panel finds Complainant has shown to be famous, since its website at “www.pornhub,com” was receiving over 25 million daily visits by February, 2012.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.
Paragraph 4(a)(iii) of the Policy sets out the conjunctive requirement that the Complainant establish both that Respondent registered the domain names in bad faith and that Respondent is using them in bad faith. Sub-paragraph 4(b)(iv) of the Policy sets out the following illustrative circumstances, which, though not exclusive, shall be evidence of both bad faith registration and bad faith use for purposes of paragraph 4(a)(iii):
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel finds that, when registering the domain names, Respondent must have had Complainant’s famous PORNHUB mark in mind and that, by using the domain names to resolve to websites displaying pay-per-click links to websites offering services which compete with those offered by Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.
This finding is sufficient for the Panel to determine that Complainant has established that the domain names were registered and are being used in bad faith. Accordingly, it is unnecessary to address the other representations made in the Complaint as supporting a finding of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhub.direct> and <pornhub.xyz> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 22, 2020
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