Licensing IP International S.ŕ.r.l. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2010001919109
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubdeutsch.net>, registered with Internet Domain Service BS Corp.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 31, 2020; the Forum received payment on October 31, 2020.
On November 3, 2020, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <pornhubdeutsch.net> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 November 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@pornhubdeutsch.net. Also on November 4, 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 November 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it operates numerous websites featuring adult-oriented content. Over the years, and through efforts and acquisitions, Complainant and its corporate affiliates have gained a strong position in the online adult entertainment market, where Internet traffic, including its channeling and control, represents a crucial aspect. One of the keys for Complainant to succeed is its business model. Complainant has contributed to the advent of user-generated adult video portals that aggregate content from a variety of sources, where users can watch, like, share, comment and upload their own videos. Given that several websites operated under Complainant’s brands are free of charge, it causes a very important volume of web traffic (i) to such free of charge websites, as well as (ii) to Complainant’s advertisers and subscription-based websites where the free of charge websites lead to. For instance, in respect of Complainant’s flagship brand PORNHUB, in 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 (which is 23 million more than the previous year); (iii) more than 39 billion searches were conducted during the year by users worldwide (which is 8.7 billion more than the previous year), which is the equivalent of approximately 80,000 visits, 78,000 searches, and 220,000 video views every minute. Those activity metrics led to 209 gigabytes of data transfer per second, 200 million video votes, 70 million messages sent between users and over 11.5 million comments left on videos. Complainant has rights in the PORNHUB mark through its registration of the mark in the European Union on May 11, 2012).
Complainant alleges that the disputed domain name is identical or confusingly similar to its PORNHUB mark as it consists of Complainant’s mark followed by the geographic term “deutsch,” which means “German.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the PORNHUB mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent registered it to misleadingly divert consumers away from Complainant’s website to Respondent’s own competing website for financial gain. Furthermore, the resolving website mimics Complainant’s website. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website for Respondent’s commercial gain, including by displaying click-through advertising links. Respondent also uses the disputed domain name to pass off as Complainant. Furthermore, Respondent had actual knowledge of Complainant’s rights to the PORNHUB mark prior to registering the disputed domain name, evidenced by the famous nature of Complainant’s mark. Complainant cites UDRP precedents to support its position.
Finally, Complainant argues that the Panel should not consider December 13, 2012 as the creation date of the disputed domain name. Instead, the Panel should consider a date between October 3, 2016 and November 2, 2016 because that is the oldest date for an available historical WHOIS record on which the same WHOIS data regarding the registrant’s name and/or registrant’s organization is displayed compared to the current WHOIS record.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark PORNHUB and uses it to market adult entertainment.
Complainant’s rights in its mark date back to at least May 11, 2012.
The disputed domain name was registered December 13, 2012.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website mimics Complainant’s website, displays Complainant’s mark and logo, and offers competing services; it also displays click-through advertising links.
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 disputed domain name incorporates Complainant’s mark in its entirety and merely adds the geographically descriptive term “deutsch” and the gTLD “.com”. The addition of a geographic term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its PORNHUB mark. Respondent is not commonly known by the disputed domain: when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is 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); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information of record lists the registrant as “Domain Admin / Whois Privacy Corp.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to divert consumers away from Complainant’s website to Respondent’s own competing website for Respondent’s financial gain. Complainant provides screenshots of the resolving website, which mimics Complainant’s website and provides competing content and services. Using a confusingly similar domain name to divert internet users to a respondent’s competing website for the respondent’s financial gain may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website for Respondent’s commercial gain. Using a confusingly similar domain name to a divert internet users to a respondent’s competing website for a respondent’s financial gain can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Further, the resolving website displays click-through advertisements, and this too indicates bad faith registration and use. See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Further, also as already noted, the resolving website mimics Complainant’s website, so Respondent attempts to pass off as Complainant. Using a confusingly similar domain to pass off as a complainant can evidence bad faith Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Consequently, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv) on this ground also.
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website mimics Complainant’s website and displays Complainant’s mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhubdeutsch.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 25, 2020
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