Licensing IP International S.à.r.l. v. I.P.L INET-PAY LIMITED
Claim Number: FA2008001908733
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is I.P.L INET-PAY LIMITED (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <porn-hub.tv>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2020; the Forum received payment on August 17, 2020.
On August 17, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <porn-hub.tv> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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.tv. Also on August 25, 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 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the PORNHUB mark acquired through its ownership of its portfolio of registered trademarks described below and the substantial reputation and goodwill that it has acquired in the PORNHUB mark, and the website to which it resolves, which was established in 2007. By 2012 Complainant’s website enjoyed in excess of 25 million daily visits.
Complainant asserts that its ownership of the trademark and service mark registrations for the PORNHUB mark prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file this Complaint under the Policy.
Complainant asserts that the disputed domain name is identical or confusingly similar to its PORNHUB mark and argues that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar under the Policy.
Complainant further argues that panels established under the Policy have found that the overall facts and circumstances of a case, including relevant website content, may support a finding of confusing similarity, particularly where, as in this Complaint, it appears that a respondent registered a domain name precisely because it believed that such domain name was confusingly similar to a mark held by a complainant.
Complainant adds that the Top Level Domain (“TLD”) extension <.tv”> in the disputed domain name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test.
Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name arguing that Respondent is not commonly known by the disputed domain name and appears to be commonly known by the name disclosed by the Registrar’s response to Forum’s request for verification of the details of the registration of the disputed domain name in the course of this proceeding, namely “I.P.L. INET-PAY LIMITED.”
Complainant refers to screenshots of the website to which the disputed domain name resolves and Complainant’s own website to which its <pornhub.com> domain name resolves, which are exhibited in an annex to the Complaint.
Complainant asserts that the screenshots illustrate that Respondent is using the disputed domain name to provide adult content similar to that provided by Complainant on its pre-existing website at the <pornhub.com> address.
Complainant adds that Respondent’s website contains no information to identify the registrant or the website operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or “privacy policy” usually found on websites.
Complainant asserts that it has never requested, allowed or authorized Respondent to register or hold the disputed domain name, or to use Complainant’s PORNHUB mark, or any other of Complainant’s trademarks, tradenames, domain names or any other identification element of the Complainant or imitation thereof.
Complainant submits that generally-speaking, panels established under the Policy have found that Internet domain names that are identical to a complainant’s trademark, as in the present proceeding, carry a high risk of implied affiliation. Complainant argues that such composition cannot constitute fair use of the disputed domain name.
Complainant asserts that Respondent cannot show that it has made use of, or made demonstrable preparations to use, the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services before any notice to it of the dispute. In support of this submission Complainant alleges that the disputed domain name was registered and is being misused by Respondent to take parasitic advantage of the goodwill attaching to the Complainant’s PORNHUB mark by diverting web traffic to a website that is not affiliated with Complainant. Complainant alleges that the disputed domain name is therefore being used to create confusion and infringe Complainant’s rights in the PORNHUB mark.
Complainant submits that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s PORNHUB mark, but instead is using the disputed domain name to misdirect Internet users seeking Complainant’s website to other websites that are unrelated to the Complainant yet offer similar services.
Complainant alleges that the disputed domain name was registered in bad faith alleging that the registrant must have been aware of Complainant and its mark and website when the disputed domain name was registered. Complainant asserts that it has achieved a significant degree of public recognition in practically all parts of the world. In 2012, Complainant’s <pornhub.com> received 25 million daily visits and had 1 million videos uploaded. Complainant argues that it follows that the disputed domain name was registered in bad faith in order to compete with and disrupt the business of Complainant.
Complainant further alleges that the disputed domain name is being used in bad faith because the website to which it resolves is infringing its rights in the PORNHUB mark, diverting traffic intended for Complainant to Respondent’s website and disrupting Complainant’s business.
In an annex to the Complaint, Complainant has exhibited a screenshot of another website, which presents adult content and contains a statement “The responsible body for data processing on this website is: IPL INET-PAY Limited..”
Complainant argues that this is evidence that Respondent operates or administers the data processing for a competing website which offers adult content and is a competitor of Complainant taking advantage of Complainant’s reputation to divert Internet traffic and disrupt Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant hosts a website with adult content and is the owner of a large portfolio of registrations for the PORNHUB mark including the following:
· United States service mark PORNHUB, registration number 4220491, registered on the Principal Register on October 9, 2012 for services in international classes 38, 41, 42; and
· European Union Trade Mark PORNHUB, registration number 1399833, registered on May 11, 2012 for services in international classes 38, 41 and 42.
Complainant has an Internet presence and its online business operates on its primary website to which its domain name <pornhub.com> resolves, offering adult content to Internet users.
The disputed domain name was registered on March 24, 2015. The registration was updated on February 23, 2020 and resolves to a website with adult content.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation of the details of the registration of the disputed domain name for the purposes of this proceeding.
Respondent has availed of a privacy service to conceal its name on the published WhoIs and its identity was disclosed by the Registrar in the course of this proceeding.
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 has adduced convincing, uncontested evidence that it has rights in the PORNHUB mark acquired through its ownership of its portfolio of registered trademarks described above and the substantial reputation and goodwill that it has acquired in the PORNHUB mark and the website to which it resolves which was established in 2007 and had in excess of 25 million daily visits by 2012.
The disputed domain name consists of Complainant’s PORNHUB mark in its entirety with the two elements “porn” and “hub” separated by a hyphen together with the generic Top Level Domain (“gTLD”) extension <.tv”>.
There is nothing in the combination “porn-hub” to distinguish it from Complainant’s mark. The hyphen adds no distinguishing characteristic and in the circumstances of this Complaint the gTLD <.tv> extension may be disregarded when applying the confusing similarity test, because it would be seen in context as a standard requirement for registration of a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark PORNHUB in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima face case that Respondent has no rights or legitimate interests in the disputed domain name submitting:
· that Respondent is not commonly known by the disputed domain name;
· that Respondent’s website contains no information to identify the registrant or the website operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or privacy policy” usually found on websites.
· that Respondent appears to be commonly known by the name disclosed by the Registrar in response to Forum’s request for verification of the details of the registration of the disputed domain name in the course of this proceeding, namely “I.P.L. INET-PAY LIMITED”;
· that the screenshots of the website to which the disputed domain name resolves and Complainant’s own website at its <pornhub.com> address, illustrate that Respondent is using the disputed domain name to provide adult content similar to that provided by Complainant;
· that Complainant has never requested, allowed or authorized Respondent to register or hold the disputed domain name, or to use Complainant’s PORNHUB mark, or any other of Complainant’s trademarks, tradenames, domain names or any other identification element of the Complainant or imitation thereof;
· that Respondent’s use of the disputed domain name that is almost identical to Complainant’s trademark, carries a high risk of implied affiliation with Complainant which cannot constitute fair use of the disputed domain name;
· that Respondent cannot show that it has made use of, or demonstrable preparations to use, the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services before any notice to it of the dispute;
· that the disputed domain name was registered and is being misused by Respondent to take parasitic advantage of the goodwill attaching to the Complainant’s PORNHUB mark by diverting web traffic to a website that is not affiliated with Complainant;
· that the disputed domain name is therefore being used to create confusion and infringe Complainant’s rights in the PORNHUB mark; and
· that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s PORNHUB mark, but instead the disputed domain name is being used by Respondent to misdirect Internet users seeking Complainant’s website to other websites that are unrelated to the Complainant yet offer similar services.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove its rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and therefore has not discharged the burden.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
In 2012, Complainant’s <pornhub.com> received 25 million daily visits and had one million videos uploaded. The uncontested evidence shows that Respondent is not only the owner of the competing website to which the disputed domain name resolves but it appears that it is also the data controller of another website that that presents similar adult content.
In such circumstances, given that the disputed domain name is almost identical to Complainant’s PORNHUB mark this Panel finds that the disputed domain name was on the balance of probabilities registered in bad faith with Complainant’s mark in mind in order to take advantage of Complainant’s name, reputation and goodwill.
In an annex to the Complaint, Complainant has produced a screenshot of said other website, which presents adult content and contains a statement “The responsible body for data processing on this website is: IPL INET-PAY Limited…” This is Respondent’s name as disclosed by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name. Respondent has availed of a proxy service to conceal its identity on the published WhoIs.
Complainant argues that this is evidence that Respondent operates or administers the data processing for a competing website which offers adult content and is a competitor of Complainant taking advantage of Complainant’s reputation to divert Internet traffic and disrupt Complainant’s business.
There is no evidence or circumstances on record indicating that the disputed domain name was registered or acquired for any reason other than to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site and is therefore using the disputed domain name in bad faith.
As this Panel finds that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of 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.tv> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 21, 2020
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