Licensing IP International S.à.r.l. v. Privacy.co.com - e1b23 / Savvy Investments, LLC Privacy ID# 1006886
Claim Number: FA2006001899403
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornuhb.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2020; the Forum received payment on June 8, 2020.
On June 12, 2020, Sea Wasp, LLC confirmed by e-mail to the Forum that the <pornuhb.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 June 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@pornuhb.com. Also, on June 15, 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 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Licensing IP International S.à.r.l., has gained a strong position in the online adult entertainment market. Complainant’s rights in the PORNHUB mark dates back to at least Mach 2007 based on use of the mark in commerce. Respondent’s <pornuhb.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s PORNHUB mark, with the inversion of the “u” and the “h,” and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <pornuhb.com> domain name. Respondent is not licensed or authorized to use Complainant’s PORNHUB mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a site which contains pay-per-click advertisements.
Respondent registered and uses the <pornuhb.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Additionally, Respondent is attempting to attract Internet users to its webpage which resolves to pay-per-click advertisements. By registering a domain name that incorporates a minor typographical error of Complainant’s PORNHUB mark, Respondent is engaged in typosquatting. Finally, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the PORNHUB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Licensing IP International S.à.r.l. (“Complainant”), of Luxembourg City, Luxembourg. Complainant is the owner of domestic and international registrations for the mark PORNHUB which it has continuously used since at least as early as 2007 in connection with its provision of video on demand transmission services, video broadcasting, adult entertainment websites, and related digital transmissions.
Respondent is Privacy.co.com - e1b23 / Savvy Investments, LLC Privacy ID# 1006886 (“Respondent”), of Cheyenne, WY, USA. Respondent’s registrar’s address is listed as Metairie, LA, USA. The Panel notes that the <pornuhb.com> domain name was registered on or about October 26, 2007.
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”).
Complainant asserts rights in the PORNHUB mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 4,220,291, registered Sep. 10, 2012). Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of its registration of the PORNHUB mark with the USPTO, hence the Panel here finds that Complanant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <pornuhb.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s PORNHUB mark, merely inverting the letters “h” and “u,” and adding the “.com” gTLD. The inversion of letters and the addition of a gTLD may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also 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”). The Panel here finds that the disputed domain name is confusingly similar to the PORNHUB mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <pornuhb.com> domain name because Respondent is not licensed or authorized to use Complainant’s PORNHUB mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Privacy.co.com – e1b23” as the registrant and no information in the record evinces that Complainant has authorized Respondent to use the PORNHUB mark in any way or that Respondent is commonly known by the disputed domain name. The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website containing pay-per-click advertisements. Use of a disputed domain name to resolve to a site displaying pay-per-click advertisements generally does not qualify as a bona fide offering of goods or services. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering”). Here, Complainant has provided screenshots of web pages which Respondent’s site redirects Internet users to. The Panel here finds that Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent has registered and uses the <pornuhb.com> domain name in bad faith. Specifically, Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that entirely incorporates Complainant’s PORNHUB mark. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Additionally, Complainant alleges Respondent uses the disputed domain name to misdirect users to a commercial website which hosts advertisements and links to third-party sites. Using a confusingly similar domain name to commercially benefit via, pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees”); see also Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). The Panel again notes that Complainant has provided screenshots of a website which Respondent’s page redirects Internet users to. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a common typing error made by internet users can be evidence of bad faith per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name”). Complainant asserts that Respondent merely inverts the letters “h” and “u” from within the PORNHUB mark. The Panel here finds that Respondent’s inversion of the letters in Complainant’s mark constitutes typosquatting, further evincing bad faith registration and use by Respondent per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <pornuhb.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 22, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page