DECISION

 

Licensing IP International S.à.r.l. v. [REDACTED BY PANEL]

Claim Number: FA2011001923062

 

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada.  Respondent is [REDACTED BY PANEL] (“Respondent”), Norway.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pornhub.network>, registered with NameCheap, Inc..

 

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.

 

James Bridgeman SC  as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 26, 2020; the Forum received payment on November 26, 2020.

 

On November 27, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <pornhub.network> 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 December 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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.network.  Also on December 2, 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.

 

A timely Response was received and determined to be complete on December 2, 2020.

 

On December 4, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the disputed domain name PORNHUB established by its ownership of the trademark registrations described below and the goodwill that it has established in the  mark by extensive use on its adult entertainment website Complainant alleges that the disputed domain name is confusingly similar to the PORNHUB mark in which it has rights, that Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been used in bad faith; and that the disputed domain name is being used to resolve to a webpage that generates pay-per-click income through links.

 

B. Respondent

Respondent’s informal response was: “I agree to turn over the domain, it has not been in any use for a year and has not been abused. I am sorry for this I bought it when I was 16 as a joke and it was just renewed. I want the ‘REMEDY SOUGHT The Complainant requests that the Panel issue a decision that the domain name registrations be transferred.’ Solution”

 

FINDINGS

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 which has substantial traffic and international reputation.

 

The disputed domain name was registered on September 25, 2019 and resolves to a web page with links that appear to generate pay-per-click revenue that contains a statement that the entity hosting the webpage is:” the market leader in the domain parking space, enabling our customers to monetize their domain portfolios.”

 

Respondent registered the disputed domain name availing of a privacy service to conceal his identity.

 

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.

 

Preliminary Issue

There is a preliminary issue which determines the outcome of this Complaint.

 

Immediately upon being served with the Complaint Respondent by email responded “I wish to request a Stay so I can transfer the domain to the Complainant”.

 

There are some indications that Respondent’s explanation may not be correct such as the fact that the entity hosting the webpage is:” the market leader in the domain parking space, enabling our customers to monetize their domain portfolios…” and Respondent availed of a privacy service to conceal his identity on the published WhoIs. However, on balance, Respondent’s explanation is credible.

 

Both Complainant and Respondent have requested transfer of the disputed domain name. There is no apparent broader interest in recording a substantive decision on the merits; no pattern of bad faith conduct has been alleged; Respondent has not expressly denied registration and use of the disputed domain name in bad faith but offers in mitigation that the disputed domain name was registered when he was a teenager; there is no expressed preference for a recorded decision in the Complaint  and it would incur additional costs and loss of time to request Complainant’s views on the subject; there is no ambiguity as to the scope of Respondent’s consent, and Complainant has shown that it possesses rights in the PORNHUB mark to which the disputed domain name is identical.

 

In these circumstances since both Parties request the transfer of the disputed domain name it is appropriate that this Panel should decide to effect to their wishes; and as there is no definite broader interest in recording the substantive decision on the merits this Panel will not make any further findings.

 

Consistent with the Panel’s decision that there is no apparent broader interest in disclosing the name of Respondent, who by electing to register using a privacy service may be deemed to request that his identity not be disclosed, the Panel directs that pursuant to Policy ¶ 4(j) direct that the name of the Respondent be redacted.

 

Identical and/or Confusingly Similar

The disputed domain name <pornhub.network> is identical to the PORNHUB mark in which Complainant has rights acquired by its ownership of the abovementioned registered trademarks and extensive use of the mark on its adult entertainment website.

 

The generic Top Level Domain (“gTLD”) extension <.network> may be ignored as in the circumstances it would be regarded by Internet users as a technical necessity for a domain name.

 

Rights or Legitimate Interests

It is not necessary to consider this element for reasons given above.

 

Registration and Use in Bad Faith

It is not necessary to consider this element for reasons given above.

 

DECISION

Both Parties have requested that the disputed domain name be transferred to Complainant and for reasons given above the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pornhub.network> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James Bridgeman SC

Panelist

Dated:  December 7, 2020