Licensing IP International S.à.r.l. v. Andrei Ivanov
Claim Number: FA2009001913329
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Andrei Ivanov (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornohub.kim>, 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 Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2020; the Forum received payment on September 22, 2020.
On September 23, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <pornohub.kim> 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 September 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@pornohub.kim. Also on September 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 October 21, 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 a large portfolio of trademark registrations described below and the goodwill and reputation it has acquired by extensive use of the mark in its adult entertainment business. Referring to a screenshot history from the Domain Tools website it claims long and continuous use of its PORNHUB mark and its domain name <pornhub.com> since at least as early as May 27, 2007.
Complainant further claims that it has an extensive reputation in the use of the PORNHUB mark asserting that the year 2019 alone (i) 42 billion visits were made to the PORNHUB.com website (which is 8.5 billion more than the previous year); (ii) the average of daily visitors was 115 million; (iii) more than 39 billion searches were conducted during the year by users worldwide and refers to third party data to support its claim to large numbers of daily hits on its site.
Complainant submits that the disputed domain name <pornohub.kim> is confusingly similar and almost identical to its PORNHUB mark arguing that a side by side comparison shows that both are identical except for the inclusion of the letter "o" in the disputed domain name.
In support of this allegation Complainant refers to a copy of a dictionary definition of the word “porn” to show that it is equivalent to the word “porno” each being informal abbreviations for the word “pornography”.
Complainant adds that the name of the website to which the domain name resolves is presented as” pornhub kim” (with a visual emphasis on the term “PORNHUB”.
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name and submits that once it makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
Complainant asserts that Respondent cannot argue that he has been commonly known by the disputed domain name given that the only names that Respondent appears to have been commonly known by are those found as the registrant name and organization in the WHOIS record of the disputed domain name, namely “Andrei Ivanov”.
Referring to screenshots of the websites linked to the disputed domain name, Complainant submits that they contain 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 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 Respondent cannot show rights or legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)(i) on the basis of his 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 him of the dispute, given that there is sufficient evidence, to demonstrate that Respondent registered the disputed domain name and misuses it to take parasitic advantage of the value of the goodwill attaching to the Complainant’s mark through web traffic diversion, advertisement and other illegitimate domain monetization means.
Complainant further argues that Respondent’s use of the disputed domain name should not be considered “fair” as it falsely suggests affiliation with Complainant as the trademark owner.
Complainant adds that neither can Respondent show rights to and legitimate interests in the domain name pursuant to UDRP Policy ¶ 4(c)(iii) on the basis that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark at issue, given that there is sufficient evidence to demonstrate that the Respondent acquired the domain name and misuses it for commercial, illegitimate and/or unfair purposes.
Complainant submits that the disputed domain name was registered in bad faith primarily for the purposes of disrupting Complainant’s business as a competitor arguing that the concept “competitor should be given a wide meaning to include a person who acts in opposition to another for commercial gain.
Complainant refers to a screenshot of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, which is named “PORNHUB KIM” on which Respondent provides content and services of the same nature as the adult content provided by complainant via its website at the <pornhub.com> address.
Complainant argues that Respondent thereby derives undue and unfair advantages from the value of the reputation and goodwill attaching to the Complainant’s PORNHUB mark and the traffic related to services associated thereto.
Complainant furthermore submits that Respondent’s abusive scheme includes redirection hyperlinks disguised as thumbnails on the subpages to which the categories on the homepage lead. The hyperlinked thumbnails all ultimately bring visitors to another website named “JIZZ FARM” accessible via the domain name <jizzfarm.com>. It also includes advertisements in the form of banners and floater ad, samples of which are shown in screenshots which are exhibited in an annex to the Complaint.
Complainant argues that the nature and quality of these ads (from which the Complainant derives no revenue) cannot be subject to any control by the Complainant, unlike those available from the PORNHUB.com website in connection with which the Complainant's marks are legitimately used.
Complainant argues that this Panel should find bad faith also under UDRP ¶ 4(b)(iv) for the Respondent’s acquisition and use of the disputed domain name for monetization purposes.
Complainant adds that this Panel should consider the nature of the domain name which uses a typo of Complainant’s widely known mark suggesting that Respondent targeted Complainant by registering the disputed domain name that is identical or confusingly similar Complainant’s mark.
Complainant further submits that this Panel should take into account that Complainant has been frequently targeted by cybersquatters and has been the successful complainant in 57 complaints under the Policy, four of which it brought against Respondent namely FA1895030, FA1873496, FA1873827 and FA1868438. Additionally, Complainant points out that it successfully brought URS proceedings against Respondent, reference FA1780839, and adds that Respondent has been the unsuccessful respondent in a number of other proceedings brought by third parties under the Policy.
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 April 30, 2019 and resolves to a website with adult content with links to other websites.
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 availed of a proxy service to conceal his identity on the published WhoIs and his name was disclosed by the Register in said reply to the Forum’s enquiry.
The Complaint refers to numerous complaints under the Policy in which Respondent was the unsuccessful respondent.
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 clear and convincing uncontested evidence that it has rights in the PORNHUB mark acquired through a large portfolio of trademark registrations described above and the goodwill and reputation it has acquired by long and extensive use of the mark in its adult entertainment business since at least 2007 growing to such an extent that its website to which its domain name <pornhub.com> resolves had 42 billion visits in 2019.
The disputed domain name consists of Complainant’s mark in its entirety except for the inclusion of the letter "o” between the two elements “porn” and “hub” in Complainant’s mark together with the <.kim> gTLD.
The additional letter “o” adds no distinguishing character to the disputed domain name and In the circumstances of this Complaint it would be considered as a standard registration requirement and disregarded by Internet users.
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 facie case that Respondent lacks rights or legitimate interests arguing:
· that Respondent is not commonly known by the disputed domain name given that the only names that Respondent appears to have been commonly known by are those found as the registrant name and organization in the WHOIS record of the disputed domain name, namely “Andrei Ivanov”;
· that the websites linked to the disputed domain name contain no information to identify Respondent as 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 Complainant never requested, allowed or authorized Respondent to register or hold the disputed domain name, or to use the Complainants’ marks, or any other Complainant’s trademarks, tradenames, domain names or any other identification element of the Complainant or imitation thereof;
· that Respondent cannot argue nor show rights to and legitimate interests in the domain name pursuant to UDRP ¶ 4(c)(i) on the basis that his use of, or demonstrable preparations to use, the domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services before any notice to him of the dispute;
· that Respondent registered the disputed domain name and misuses it to take parasitic value of the goodwill attaching to the Complainant’s PORNHUB mark through web traffic diversion, advertisement and other illegitimate means;
· that Respondent’s use of the disputed domain name should not be considered “fair” as it falsely suggests affiliation with the trademark owner as a result of the correlation between a domain name and the trademark;
· that neither can Respondent show rights to and legitimate interests in the disputed domain name pursuant to UDRP Policy ¶ 4(c)(iii) on the basis that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark at issue, because there is sufficient evidence to demonstrate that the Respondent acquired the disputed domain name and misuses it for commercial, illegitimate and/or unfair purposes.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his 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 so has not discharged the burden.
In these 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).
The record shows that the disputed domain name was chosen and registered on April 30, 2019 and in that year the hits on Complainant’s website numbered in the billions. It is implausible that the disputed domain name was chosen and registered without actual knowledge of Complainant, its website and business.
On the balance of probabilities, the disputed domain name was registered in bad faith to take predatory advantage of Complainant’s goodwill and reputation in the PORNHUB mark.
The uncontested evidence adduced by Complainant shows that Respondent is causing, permitting or allowing the disputed domain name to resolve to a website that presents adult content, competing with Complainant’s offering. In doing so Respondent is using metadata and Complainant’s mark to attract Internet traffic for commercial gain to divert and mislead Internet users away from Complainant’s website.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered and is being used in bad faith primarily for the purposes of disrupting the business of a competitor, namely Complainant.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornohub.kim> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: October 22, 2020
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