Licensing IP International S.à.r.l. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2103001935837
Complainant is Licensing IP International S.à.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 <rf-pornhub.com>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2021; the Forum received payment on March 9, 2021.
On March 10, 2021, Internet Domain Service BS Corp confirmed by email to the Forum that the <rf-pornhub.com> 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 March 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@rf-pornhub.com. Also on March 12, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 April 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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, a Luxembourg corporation, operates various websites that aggregate adult video content. Complainant states that PORNHUB is its flagship brand; its PORNHUB.com website had an overall Alexa global ranking of 40 in February 2017, and had 42 billion visits in 2019. Complainant owns trademark registrations for PORNHUB in the United States and other jurisdictions worldwide dating back to 2012, and also asserts common law rights in the PORNHUB mark.
Respondent registered the disputed domain name <rf-pornhub.com> in February 2018. Complainant suggests that the domain name was selected for its similarity to <rt.pornhub.com>, the address that Complainant uses for its Russian-specific website, in an instance of typosquatting. The disputed domain name is being used for a website that displays advertisements alongside content and services of the same nature as those offered by Complainant. Complainant states that Respondent's website uses an altered copy of Complainant's own HTML code that enables it to hotlink content from Complainant's website while generating revenue for Respondent. Complainant states that Respondent is not commonly known by the disputed domain name and has not been authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <rf-pornhub.com> is confusingly similar to its PORNHUB mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <rf-pornhub.com> incorporates Complainant's registered PORNHUB trademark, prefixing it with the letters "rf" and a hyphen, and appending the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Licensing IP International S.à.r.l. v. Itmer Pure, FA 1928582 (Forum Feb. 18, 2021) (finding <pornhubr.com> confusingly similar to PORNHUB); Allianz SE v. Unknown / Adolf Tom, D2019-1783 (WIPO Sept. 10, 2019) (finding <rt‑allianzpartners.com> confusingly similar to ALLIANZ; Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding <xrprf.com> confusingly similar to XRP). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. It is being used for a commercial website that displays Complainant's mark and logo and otherwise mimics the appearance of Complainant's website, displaying advertisements alongside hotlinks to Complainant's content. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Licensing IP International S.à.r.l. v. Harold Haynes, FA 1897515 (Forum June 24, 2020) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name, registered in the name of what the Panel infers to be a privacy registration service, incorporates Complainant's registered mark without authorization. It is being used for a commercial website that displays Complainant's mark and logo and otherwise mimics the appearance of Complainant's website, displaying advertisements alongside hotlinks to Complainant's content. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Licensing IP International S.à.r.l. v. Watcharapol Pierneth, FA 1915711 (Forum Nov. 3, 2020) (finding bad faith in similar circumstances); Licensing IP International S.à.r.l. v. Harold Haynes, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rf-pornhub.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 7, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page