Licensing IP International S.ŕ.r.l. v. Suren Akopian
Claim Number: FA2008001909814
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Suren Akopian (“Respondent”), Armenia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pohub.com>, registered with NetTuner Corp. dba Webmasters.com.
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.
Complainant submitted a Complaint to the Forum electronically on August 25, 2020; the Forum received payment on August 25, 2020.
On August 25, 2020, NetTuner Corp. dba Webmasters.com confirmed by e-mail to the Forum that the <pohub.com> domain name is registered with NetTuner Corp. dba Webmasters.com and that Respondent is the current registrant of the name. NetTuner Corp. dba Webmasters.com has verified that Respondent is bound by the NetTuner Corp. dba Webmasters.com 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 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@pohub.com. Also on August 28, 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 23, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
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). See Compl. Annex 3. Respondent’s <pohub.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark and adds the “.com” generic top-level domain (“gTLD”). It is important to note that the date Respondent acquired the disputed domain name is much later than the date the domain name was created.
Respondents has no rights or legitimate interests in the <pohub.com> 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 is merely diverting Internet users seeking Complainant to unaffiliated and competing websites.
Respondent registered and used the <pohub.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by diverting Internet users to third party websites that may present a false impression of affiliation with Complainant. Finally, 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.
1. Complainant is a Luxembourg company that operates numerous websites featuring adult-oriented content.
2. Complainant has established its trademark 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. 09, 2012).
3. Respondent registered the <pohub.com> domain name on July 15, 2013.
4. Respondent has caused the domain name to be used to divert Internet users seeking Complainant to unaffiliated and competing websites.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. 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. 09, 2012). See Compl. Annex 3. 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).”). Therefore, the Panel finds that the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PORNHUB mark. Complainant argues Respondent’s <pohub.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark and adds the “.com” gTLD. Using misspellings of a complainant’s mark, such as the deletion of letters, and adding a gTLD may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”). Here, Complainant alleges that Respondent merely removed the letters “r” and “n” from the spelling of Complainant’s mark. Therefore, the Panel finds Respondent’s <pohub.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It 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”).
(a) Respondent has chosen to take Complainant’s PORNHUB trademark and to use it in its domain name, making a slight alteration to its spelling;
(b) Respondent registered the <pohub.com> domain name on July 15, 2013;
(c) Respondent has caused the domain name to be used to divert Internet users seeking Complainant to unaffiliated and competing websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <pohub.com> 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 may note the WHOIS of record identifies the Respondent as “Suren Akopian” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <pohub.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <pohub.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to divert Internet users to nonaffiliated and competing third party website. Using a disputed domain name to redirect to divert Internet users seeking a complainant goods or services to a third party websites 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 General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provided screenshots of the various third party websites the disputed domain names would redirect to, each containing adult oriented material and links that compete with Complainant’s services. See Compl. Annexes 10. Therefore, the Panel finds Respondent fails to use the <pohub.com> 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).
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.
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 argues Respondent registered and uses the <pohub.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by diverting Internet users to third party websites that may present a false impression of affiliation with Complainant. Registering a disputed domain name for the purpose of diverting Internet user seeking a complainant’s services to websites offering competing service may be evidence of bad faith under Policy ¶ 4(b)(iii). 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).”). Here, Complainant provided screenshots of the various third party websites the disputed domain names would redirect to, each containing adult oriented material that compete with Complainant’s services. See Compl. Annexes 10. Therefore, the Panel finds Respondent registered and used the <pohub.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registering the <pohub.com> domain name. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. 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.”). The Panel, however, finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations and worldwide fame along with the fact that Respondent is attempting to compete with Complainant. As such, the Panel determines whether Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pohub.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 25, 2020
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