Licensing IP International S.ŕ.r.l. v. Privacy.co.com - a4fbf / Savvy Investments, LLC Privacy ID# 1006281
Claim Number: FA2006001901957
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Privacy.co.com - a4fbf / Savvy Investments, LLC Privacy ID# 1006281 (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <porn-hub.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.
On June 29, 2020, Sea Wasp, LLC confirmed by e-mail to the Forum that the <porn-hub.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 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@porn-hub.com. Also on June 30, 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 26, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
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.
Respondent’s <porn-hub.com> domain name is identical or confusingly similar to Complainant’s mark as it consists of the textual component of Complainant’s mark with a common misspelling and the addition of the “.com” generic top-level domain (“TLD”).
Respondent has no rights or legitimate interests in the <porn-hub.com> domain name. Respondent is not commonly known by the at-issue 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 currently makes no active use of the disputed domain name. Previously, Respondent used the domain name to divert internet traffic to a competing website.
Respondent registered and uses the <porn-hub.com> domain name in bad faith. Respondent disrupts Complainant’s business by previously using the disputed domain name to divert Internet users to a competing webpage. Respondent passively holds the disputed domain name. Respondent knew of Complainant’s rights in the marks at the time Respondent acquired the <porn-hub.com> domain name given the fame of the PORNHUB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in PORNHUB.
Respondent is not affiliated with Complainant and is not authorized to use the PORNHUB mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in PORNHUB.
Respondent currently makes no active use of the disputed domain name. Previously, Respondent used the at-issue domain name to address a competing website.
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 at-issue domain name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its PORNHUB trademark with the USPTO, as well as other recognized registries such as the EUIPO, demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <porn-hub.com> domain name incorporates Complainant’s PORNHUB trademark with a hyphen inserted between the mark’s “n” and “h.” The domain name is concluded with the generic top-level domain name “.com.” The slight differences between Complainant’s trademark and Respondent’s domain name do nothing to change the phonetics of the embedded trademark and do not distinguish the at-issue domain name from Complainant’s mark pursuant to the Policy. Therefore, the Panel concludes that Respondent’s <porn-hub.com> domain name is confusingly similar or identical to Complainant’s PORNHUB trademark under Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of <porn-hub.com>.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Privacy.co.com - a4fbf/Savvy Investments, LLC Privacy ID# 1006281” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <porn-hub.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <porn-hub.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent has used the <porn-hub.com> domain name to direct internet users who may be seeking Complainant to a website in competition with Complainant. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(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.”).
Furthermore, Complainant’s shows that browsing to the at-issue domain name returns the error message “[t]he connection was reset.” Respondent’s passive holding of the <porn-hub.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <porn-hub.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interest, Respondent’s confusingly similar domain was used to address a website offering goods or services in competition with those offered by Complainant. Respondent’s use of the confusingly similar domain name to create the false impression of affiliation with Complainant is disruptive to Complainant’s business and shows Respondent’s bad faith registration and use of the <porn-hub.com> domain name per Policy ¶¶ 4(b)(iii) and (iv). See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also, OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent’s current passive holding of the at-issue domain name is further evidence of bad faith. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Moreover, Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark and/or, 2) in viewing the domain name will confuse the domain name with its target trademark. The registrant then may use the confusion to inappropriately capitalize on the target mark’s goodwill. Here, Respondent formed the at-issue domain name, inter alia, by inserting a hyphen between the “n” and “h” in Complainant’s trademark. The separation of the two terms PORN and HUB with a hyphen does little to change the appearance of Complainant’s mark and nothing to alter its phonetic pronunciation. One believing that the PORNHUB mark is hyphenated would likely also be predisposed to type the at-issue domain name when seeking Complainant. So too, reading the at-issue domain name in a search engine result or elsewhere might confuse an internet user into believing the domain name is associated with Complainant when it is not. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <porn-hub.com> knowing that Complainant had trademark rights in the PORNHUB mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark. Complainant’s unopposed argument urging that Respondent acquired the at-issue domain name recently and thus does not have rights predating Complainant’s rights not withstanding an array of preceding third party registrations of the at-issue domain name, is well-taken. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, which complainant’s rights in the mark predated). It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <porn-hub.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <porn-hub.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 26, 2020
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