DECISION

 

Licensing IP International S.à.r.l. v. Ihor Kniazkov

Claim Number: FA2006001900938

 

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada.  Respondent is Ihor Kniazkov (“Respondent”), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pornheb.com>, registered with Danesco Trading Ltd..

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 18, 2020; the Forum received payment on June 18, 2020.

 

On June 25, 2020, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <pornheb.com> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name.  Danesco Trading Ltd. 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 July 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@pornheb.com.  Also on July 1, 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 22, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions

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 the numerous trademark agencies around the world (e.g., USPTO Reg. No. 4,220,491, registered Oct. 09, 2012). See Compl. Ex. 3. Respondent’s <pornheb.com> domain name is identical or confusingly similar to Complainant’s mark as it consists of the textual component of Complainant’s mark, misspelled by switching the letters “u” and “e” and adds the “.com” generic top-level domain (“TLD”).

 

Respondent has no rights or legitimate interests in the <pornheb.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the disputed domain divert Internet users looking for Complainant’s business to Respondent’s own website and unfairly compete with Complainant.

 

Respondent registered and uses the <pornheb.com> domain name in bad faith. Respondent disrupts Complainant’s business by diverting Internet users to Respondent’s webpages and commercially gains by displaying competing content and advertisements. Respondent engages in typosquatting by registering a domain name consisting of a misspelling of Complainant’s mark. Respondent knew of Complainant’s rights in the marks at the time of registration of the disputed domain name given the fame of the PORNHUB mark.

 

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a Luxembourg company that operates a collection of websites in the adult entertainment industry.

 

2.    Complainant has established its trademark rights in the PORNHUB mark through its registration of the mark with numerous trademark agencies around the world (e.g., USPTO Reg. No. 4,220,491, registered Oct. 09, 2012) and its common law trademark rights in the mark going back to March 11, 2007.

 

3.    Respondent registered the <pornheb.com> domain name on December 20, 2012.

 

4.    Respondent uses the disputed domain to divert Internet users looking for Complainant’s business to Respondent’s own website and to compete with Complainant unfairly.

 

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:

 

(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”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PORNHUB mark through its registration of the mark with numerous trademark agencies around the world (e.g., USPTO Reg. No. 4,220,491, registered Oct. 09, 2012) and common law trademark rights in the mark going back to March 11, 2007. See Compl. Ex. 3. Registration of a mark with multiple trademark agencies is sufficient to establish rights in the 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.”). Accordingly, the Panel finds that Complainant has established rights in the PORNHUB mark for the purposes of Policy ¶ 4(a)(i) and on the evidence also finds that Complainant has established its common law trademark rights in the mark going back to March 11, 2007.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PORNHUB mark.  Complainant argues that Respondent’s <pornheb.com> domain name is identical or confusingly similar to Complainant’s mark as it consists of the textual component of Complainant’s mark, misspelled by switching the letters “u” and “e” and adds the “.com” gTLD. The misspelling of a mark and adding a gTLD are not changes sufficient to distinguish a domain name for the purposes of Policy ¶ 4(a)(i). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). The Panel therefore finds that the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

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, misspelling the trademark by switching the letters “u” and “e”, which does not negate the confusing similarity between the domain name and the trademark;

(b)  Respondent registered the <pornheb.com> domain name on December 20, 2012;

(c)  Respondent uses the disputed domain to divert Internet users looking for Complainant’s business to Respondent’s own website and to compete with Complainant unfairly;

(d)  Respondent has engaged in these activities without the consent or approval of Complainant;

(e)  Complainant argues Respondent has no rights or legitimate interests in the <pornheb.com> domain name as Respondent is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the 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 WHOIS information for the disputed domain name lists the registrant as “Ihor Knizkov,” and there is no other evidence to suggest that Respondent was authorized to use the PORNHUB mark. Furthermore, Complainant submits that information on the resolving webpage indicates Respondent is not commonly known by the disputed domain name. See Compl. Annex 10. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);

(f)   Complainant contends Respondent fails to use the <pornheb.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain divert Internet users looking for Complainant’s business to Respondent’s own website and unfairly compete with Complainant. Use of a domain name to divert Internet users to a respondent’s competing website may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving webpage of the disputed domain name which Complainant argues is used to display competing advertisements and content from Complainant's competitors. See Compl. Ex. 11. The Panel therefore finds Respondent’s use does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use per 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.

 

Registration and Use in Bad Faith

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 contends Respondent registered and uses the <pornheb.com> domain name in bad faith as Respondent disrupts Complainant’s business by diverting Internet users to Respondent’s webpages and commercially gains by displaying competing content and advertisements. Use of a domain name to offer competing goods or services can show 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). The Panel recalls Complainant provides screenshots of the resolving webpage of the disputed domain name which Complainant’s argues displays content which competes with Complainant’s business. See Compl. Ex. 11. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

Secondly, Complainant submits that Respondent registered and uses the <pornheb.com> name in bad faith as Respondent engages in typosquatting by registering a domain name consisting of a misspelling of Complainant’s mark. Typosquatting can indicate 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). Complainant argues the disputed domain name consists of a misspelling of Complainant’s PORNHUB mark by substituting the letter “u” and “e” in the mark. The Panel therefore finds bad faith registration and use per Policy ¶ 4(a)(iii).

 

Thirdly, Complainant submits Respondent registered and uses the <pornheb.com> domain name in bad faith as Respondent knew of Complainant’s rights in the marks at the time of registration of the disputed domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; 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.”). Complainant provides copies of articles pertaining to Complainant’s business, brand rankings, statistics, and advertisements to show the fame of the marks. See Compl. Ex. 7. The Panel therefore finds that Respondent had actual knowledge of the marks at the time of registration of the disputed domain name, thus constituting bad faith registration and use under Policy ¶ 4(a)(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.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pornheb.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC ,

Panelist

Dated:  July 23, 2020

 

 

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