Licensing IP International S.à.r.l. v. Itech Me
Claim Number: FA2012001923921
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Itech Me (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornh7b.com>, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2020. The Forum received payment that day.
On December 7, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <pornh7b.com> 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 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2021 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 email@example.com. Also on December 14, 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 January 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainant operates websites featuring adult-oriented content. Complainant has rights in the PORNHUB mark through numerous registrations of the mark including with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <pornh7b.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”).
Respondent has no rights or legitimate interests in the <pornh7b.com> domain name as Respondent is not commonly known by the 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 an unaffiliated and competing website.
Respondent registered and uses the <pornh7b.com> domain name in bad faith. Specifically, Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark at the time of registration and 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. Furthermore, Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to competing websites. Respondent is typosquatting.
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the PORNHUB mark through numerous registrations, including with the USPTO (e.g., Reg. No. 4,220,491, registered Oct. 9, 2012). Complainant’s earliest registration of the PORNHUB mark was with the European Union Intellectual Property Office (“EUIPO”), No. 010166973, registered on May 11, 2012.
Respondent’s <pornh7b.com> domain name is confusingly similar to Complainant’s mark as it comprises a misspelling of the PORNHUB mark along with the addition of the inconsequential “.com” gTLD, which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <pornh7b.com> domain name was registered on October 31, 2011, prior to Complainant’s first registration of its PORNHUB trademark. Complainant submits that, in determining the date when Respondent acquired and became registrant of the domain name, the Panel should not consider the October 2011 date, but rather a date between November 28, 2018 and December 13, 2018, when various changes occurred which signal a contemporaneous change of registrant during that period, namely changes of registrant name and organization, registrar, name server and website content. The domain name currently resolves to a website with adult content.
In the absence of any Response, the Panel accepts Complainant’s submission and finds that Respondent became the registrant of the domain name long after Complainant had registered the PORNHUB mark and had established a significant reputation in it. The domain name is a typosquatted version of Complainant’s mark.
Further, as noted most recently by the learned Panelist in Licensing IP International S.à.r.l. v. Itech Me, FA1923922 (Forum Jan. 6, 2021), Respondent has been found in previous proceedings under the Policy to have engaged in typosquatting of Complainant’s PORNHUB mark.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
of the domain name.
Complainant has established this element.
In light of the circumstances set out in relation to the previous element, the Panel finds that Respondent was well aware of Complainant’s PORNHUB mark when registering the domain name and did so with intent for commercial gain misleadingly to divert Complainant’s customers.
Further, typosquatting is independent evidence of bad faith registration and use of a domain name per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1623825 (Forum July 20, 2015).
The Panel finds that Respondent registered and is using the domain name in bad faith.
Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornh7b.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 12, 2021
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