DECISION

 

Licensing IP International S.ŕ.r.l. v. 优视科技(中国)有限公司 / UC

Claim Number: FA2008001908732

 

PARTIES

Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is 优视科技(中国)有限公司 / UC (“Respondent”), United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pornhub.community>, registered with Dynadot, LLC.

 

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 17, 2020; the Forum received payment on August 17, 2020.

 

On August 18, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <pornhub.community> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name.  Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@pornhub.community.  Also on August 19, 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 September 14, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant operates numerous websites featuring adult-oriented content. Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 9, 2012). Respondent’s <pornhub.community> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the “.community” generic top-level domain (“gTLD”) to Complainant’s mark.

 

Respondent has no rights or legitimate interests in the <pornhub.community> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent uses the domain to force Internet users to download malicious software.

 

Respondent registered and uses the <pornhub.community> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by deceiving Internet users as to Respondent’s affiliation with Complainant and make Internet users download malicious software. Additionally, Respondent had actual or constructive knowledge of Complainant’s rights in the PORNHUB mark at the time of registration.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is Licensing IP International S.ŕ.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 优视科技(中国)有限公司 / UC (“Respondent”), Univision (China) Ltd., Guangzhou, China. Respondent’s registrar’s address is listed as San Mateo, CA, USA. The Panel notes that the <pornhub.community> domain name was registered on or about September 22, 2019.

 

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

Complainant claims rights in the PORNHUB mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,220,491, registered Oct. 9, 2012). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds that the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <pornhub.community> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the “.community” gTLD to Complainant’s mark. Adding a gTLD to a complainant’s mark is generally insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). The Panel here finds Respondent’s <pornhub.community> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Respondent raises no contentions regarding Policy ¶ 4(a)(i).

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

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 has no rights or legitimate interests in the  <pornhub.community> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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 Panel here notes that the WHOIS of record identifies the Respondent as “优视科技(中国)有限公司 / UC” and no other information in the record indicates that Respondent was authorized to use Complainant’s mark or was 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).

 

Next, Complainant argues that Respondent fails to use the <pornhub.community> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is attempting to force Internet users to download malicious software. Using a disputed domain name to attempt to install fraudulent or malicious software onto an Internet user’s computer may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage, which shows a prompt for the user to download a file, as well as documents explaining the mechanics of the malware the file contains. The Panel here finds Respondent fails to use the <pornhub.community> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).

 

Respondent raises no contentions regarding Policy ¶ 4(a)(ii).

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the <pornhub.community> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by deceiving Internet users as to Respondent’s affiliation with Complainant and make visitors download malicious software. Registering a dispute domain name that deceives Internet users into believing an affiliation exists between a respondent and the complainant is evidence of bad faith under Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Additionally, prompting Internet users to download malicious software may be evidence of bad faith. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). The Panel again notes that Complainant provides a screenshot of the <pornhub.community> domain name’s resolving webpage, which shows a prompt for the user to download a file, as well as documents explaining the mechanics of the malware the file contains. Complainant argues that this malware is meant to distribute malicious advertising, which sends users notifications premised on the users’ “consent” in the form of downloading the file. The Respondent does not dispute Complainant’s assertion. The Panel here finds Respondent registered and uses the <pornhub.community> domain name in bad faith per Policy ¶ 4(b)(iii).

 

Respondent raises no contentions regarding Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

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.community> domain name be TRANSFERRED from Respondent to Complainant.

 

Darryl C. Wilson, Panelist

Dated: September 28, 2020

 

 

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