Licensing IP International S.à.r.l. v. Host Master / Transure Enterprise Ltd
Claim Number: FA2103001935838
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhuj.com>, which is registered with Above.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2021; the Forum received payment on March 9, 2021.
On March 11, 2021, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <pornhuj.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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 postmaster@pornhuj.com. Also, on March 18, 2021, 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 April 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a major international marketer of online video-on-demand entertainment services.
Complainant holds a registration for the PORNHUB service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,220,491, registered October 9, 2012, on the basis of an application that was filed August 3, 2011, and reported a first use in commerce of March 11, 2007.
The domain name <pornhuj.com> was registered September 4, 2010, following the expiration, on March 16, 2010, of a previous registration of unknown origin.
Respondent, whose identity is masked by a privacy service, acquired the domain name in 2015 or 2016.
The domain name is confusingly similar to Complainant’s PORNHUB mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the PORNHUB mark.
Respondent does not use the domain name in connection with either a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Instead, Respondent uses the domain name to divert Internet users seeking Complainant’s online services to a parked webpage hosting links to other web sites operating in competition with the business of Complainant, from the performance of which links Respondent receives income in the form of click-through fees.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent has offered the domain name for sale.
Respondent has established a pattern of bad faith registration of domain names.
Respondent registered the domain name with knowledge of Complainant’s rights in the PORNHUB mark.
Respondent both registered and now uses the domain name in bad faith.
Additional allegations of the Complaint are set out in the discussion below of the question of bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 rights in the PORNHUB service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark]… demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <pornhuj.com> domain name is confusingly similar to Complainant’s PORNHUB service mark. The domain name incorporates the dominant part of the mark, with only the substitution of the letter “b” with the letter “j” and the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018):
Respondent arrives at each of the disputed domain names by merely misspelling [complainant’s mark in] each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <pornhuj.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <pornhuj.com> domain name, and that Complainant has not authorized Respondent to use the PORNHUB mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Host Master / Transure Enterprise Ltd,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <pornhuj.com> domain name to divert Internet users seeking Complainant’s online services to a webpage hosting links to other websites operating in competition with the business of Complainant. Complainant also contends, again without objection from Respondent, that Respondent receives income in the form of click-through fees from the operation of such links. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Forum December 8, 2003) (finding that for a UDRP respondent to employ a domain name to direct Internet users to websites featuring links to third-party websites and pop-up advertisements was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) where that respondent presumably received compensation for each misdirected Internet user).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the challenged <pornhuj.com> domain name, which we have found to be confusingly similar to Complainant’s PORNHUB service mark, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Tumblr, Inc. v. Ailing Liu, FA1543807 (Forum March 24, 2014):
Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar [to the mark of another] domain name to resolve to a website featuring links and advertisements unrelated to [a UDRP] complainant’s business and respondent is likely collecting fees.
We are also convinced by the evidence that Respondent registered the disputed <pornhuj.com> domain name while knowing of Complainant and its rights in the well-known PORNHUB mark. This further demonstrates Respondent’s bad faith in registering it. See, for example, Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO December 18, 2000) (finding that, at the time a respondent registered contested domain names aping the mark of a UDRP complainant, it knew of that mark given its worldwide prominence, and thus that that respondent registered the domain names in bad faith).
Further to the point of time, we take note of the fact that the Complaint before us alleges that the domain name <pornhuj.com> was registered on September 4, 2010, following the expiration, on March 16, 2010, of a previous registration of unknown origin, and that Respondent, whose identity is masked by a privacy service, acquired the domain name in 2015 or 2016. We likewise take note of the further assertion of the Complaint to the effect that Complainant holds a registration for the PORNHUB service mark, which registration was effective with the United States Patent and Trademark Office (“USPTO”) on October 9, 2012. The question presented by these facts is whether it is possible to find bad faith in the registration of a domain name where that domain name was registered before a contending mark holder established its rights in the mark by, as in this case, registration with a relevant trademark authority. The World Intellectual Property Organization (“WIPO”) has addressed this question in its “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” Third Edition (“WIPO Jurisprudential Overview 3.0”) (2017), at section 3.9:
[T]he … date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith.
* * * * *
In cases where the domain name registration is masked by a privacy or proxy service and the complainant credibly alleges that a relevant change in registration has occurred, it would be incumbent on the respondent to provide satisfactory evidence of an unbroken chain of registration; respondent failure to do so has led panels to infer an attempt to conceal the true underlying registrant following a change in the relevant registration. Such an attempt may in certain cases form part of a broader scenario whereby application of UDRP paragraph 4(b)(iv), read in light of paragraph 4(a)(ii), can support an inference of bad faith registration for the respondent to rebut.
* * * * *
Facts or circumstances supporting an inference that a change in registrant has occurred may typically include a change in the content of the website to which a domain name directs to take advantage of the complainant’s mark ….
The Complaint contends that the facts set out below support a conclusion that, notwithstanding earlier registrations of the contested domain name, Respondent acquired it no earlier than 2015, so that Complainant’s 2012 registration of the PORNHUB mark makes its rights in the mark senior in time to any rights Respondent might have had in its confusingly similar domain name, as a consequence of which Respondent is responsible for registering the domain name in bad faith:
[I]ndicators that a … change in title of the [d]omain [n]ame occurred … in 2015 … [include]…:
(a) … between … March 6, 2015 and November 22, 2015[,] … a webpage displaying adult content … [replaced] a blank page.
(b) …[o]n April 28, 2015, the IP address hosting the website linked to the [d]omain [n]ame changed from 69.43.161.166 to 103.224.212.254,…. [and]
(c) … [b]etween September 2, 2015 and August 16, 2016, the
DNSSEC status for the domain name changed from
“signedDelegation” to “unsigned.”
Applying the teachings of the WIPO Overview, and having in mind that Respondent does not contest Complainant’s contentions on this question, we conclude that Complainant acquired rights in its PORNHUB service mark before Respondent registered the <pornhuj.com> domain name. For this reason, viewed in light of the undenied worldwide prominence of the mark, we must further conclude that Respondent registered the domain name while knowing of Complainant’s rights in its mark, and, therefore, that it registered the domain name in bad faith.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <pornhuj.com> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 14, 2021
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