Licensing IP International S.ŕ.r.l. v. Vinay Shan
Claim Number: FA2006001901960
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Vinay Shan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <poenhub.com>, <pornhum.com>, and <wwwpornhub.com>, (‘the Domain Names’) registered with BigRock Solutions Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.
On June 30, 2020, BigRock Solutions Ltd confirmed by e-mail to the Forum that the <poenhub.com>, <pornhum.com>, and <wwwpornhub.com> domain names are registered with BigRock Solutions Ltd and that Respondent is the current registrant of the names. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org. 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 Dawn Osborne 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.
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the registered trade mark PORNHUB, registered, inter alia in the EU for adult entertainment services and used since May 2007.
The Domain Names registered in October 2007 (and acquired by the Respondent after 2019) are confusingly similar to the Complainant’s trade marks. <Poenhum.com> substitutes a letter "e" for the letter "r" which is adjacent to it on the QWERTY keyboard. <Pornhum.com> substitutes the letter "m" for the letter "b" which are close to each other on the QWERTY keyboard. <wwwpornhub.com> incorporates the Complainant’s trade mark in its entirety and simply omits the dot between www and the Complainant’s mark. Adding .com does not prevent confusing similarity between the Domain Names and the Complainant’s mark. As typosquatting registrations the Domain Names are designed by their nature to be confusingly similar to the Complainant’s mark.
The Respondent has no rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.
Using a domain name for competing pay per click links is not a bona fide offering of goods or services or a noncommercial legitimate or fair use. It is bad faith registration and use, being confusing and disruptive.
Typosquatting is bad faith per se and indicates actual knowledge of the Complainant’s well known mark.
Respondent has been involved as respondent in three prior UDRP cases, two of which led to the transfer of the disputed domain names in those cases. In one response filed in a prior case, the Respondent stated that “he works for a
company based in the USA helping with the monetization of domain names” and
that the company was LEVEL2, LLC. Incidentally, the Complainant obtained
transfer orders in two past UDRP decisions in which LEVEL2, LLC was identified
in the underlying Whois data as the organization holding the domain names at issue.
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the registered trade mark PORNHUB, registered, inter alia in the EU and used since May 2007.
The Domain Names registered in October 2007 have been used for competing pay per click links and all have had indications in the pages attached to them that the Domain Names may be for sale. The Respondent and his employer have been the subject of a number of adverse decisions under the Policy.
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 Domain Names consist of signs confusingly similar to the Complainant's PORNHUB mark (which is registered in the EU for adult entertainment services with first use recorded as May 2007) and adding the gTLD ".com". <Poenhum.com> substitutes a letter "e" for the letter "r" which is adjacent to it on the QWERTY keyboard. <Pornhum.com> substitutes the letter "m" for the letter "b" which are close to each other on the QWERTY keyboard. <Wwwpornhub.com> incorporates the Complainant’s trade mark in its entirety and simply omits the dot between www and the Complainant’s mark.
The Panel agrees that visually similar misspellings of a Complainant’s mark in a domain name do not prevent confusing similarity between that domain name and the Complainant's trade mark pursuant to the Policy. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). As such substituting a letter "e" for the letter "r", substituting the letter "m" for the letter "b" or omitting the dot between www and the Complainant’s mark does not prevent the respective Domain Names being confusingly similar to the Complainant’s trade mark under the Policy.
The gTLD ".com" does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant has not authorised the use of signs confusingly similar to its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Respondent has used the Domain Names for links offering competing services not connected with the Complainant. It does not make it clear that there is no commercial connection with the Complainant. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
Typosquatting is also an indication of a lack of rights or a legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
Offering a domain dame for sale for an amount in excess of out of pocket costs of registration is also an indication of a lack of rights or legitimate interests. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
The Respondent has not answered this Complaint or explained why it should be allowed to register domain names containing signs confusingly similar to the Complainant’s mark which is recognised for adult entertainment services.
The Domain Names seek to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
Use for competing pay per click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can indicate actual knowledge of the Complainant and its business. See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
It is also noted that the pages attached to the Domain Names appear to suggest that the Domain Names are for sale potentially in breach of para 4 (b)(i) and that the Respondent and his employer have been the subject of a number of adverse decisions under the Policy suggesting some evidence of a pattern of activity which may come within ¶ 4(b)(ii).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <poenhub.com>, <pornhum.com>, and <wwwpornhub.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 22, 2020
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