Licensing IP International S.à.r.l. v. Christopher Goldberg
Claim Number: FA2103001935840
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Christopher Goldberg (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubdownload.com>, registered with Porkbun LLC.
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 in English to the Forum electronically on March 9, 2021. The Forum received payment on March 9, 2021.
On March 10, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <pornhubdownload.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC registration agreement, which is in the English language, 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 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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 firstname.lastname@example.org. Also on March 15, 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.
On March 16, 2021 Respondent, having informed the Forum in German that he needed to have the Complaint and its accompanying documents translated into German, formally requested a 20-day extension of time in which to file a Response. On April 2, 2021 the Forum found that extenuating circumstances exist warranting an extension and granted Respondent an extension until April 29, 2021 to do so.
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Registration Agreement is in English. Pursuant to Rule 11(a), the language of the proceeding shall be English unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
The Panel notes that the domain name is in English and resolves to an English language website. These circumstances satisfy the Panel that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Complainant and its corporate affiliates have gained a strong position in the online adult entertainment market. Complainant has rights in the PORNHUB mark through numerous registrations of the mark, including with the European Union Intellectual Property Office (“EUIPO”). Respondent’s <pornhubdownload.com> is confusingly similar to Complainant’s PORNHUB mark.
Respondent lacks rights or legitimate interests in the <pornhubdownload.com> 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 uses the disputed domain name to allow Internet users to make unauthorized reproductions of Complainant’s copyrighted content.
Respondent registered and uses the <pornhubdownload.com> domain name in bad faith to disrupt Complainant’s business by diverting Internet users away from Complainant’s website to Respondent’s competing website for Respondent’s financial gain. Respondent also derives undue and unfair advantages from the value of the reputation and goodwill attaching to the Complainant’s famous mark, of which Respondent had actual knowledge of prior to registering the disputed domain name.
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 its registration with the EUIPO (e.g. Reg. No. 10,166,973, registered May 11, 2012).
The Panel finds Respondent’s <pornhubdownload.com> to be confusingly similar to Complainant’s PORNHUB mark as it merely adds to Complainant’s mark the generic term “download”, which does not sufficiently distinguish the domain name from the mark, and the inconsequential top-level domain (“gTLD”) “.com”, which may be ignored.
Complainant has established this element.
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 names 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 names or a name corresponding to the domain names 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 names, 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 names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <pornhubdownload.com> domain name was registered on February 29, 2020, by which time Complainant’s PORNHUB mark had become famous. The domain name resolves to an English language website which displays Complainant’s PORNHUB mark and images from Complainant’s website at <pornhub.com> and offers Internet users ways to make unauthorized reproductions of copyrighted content from Complainant’s website.
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 the Respondent. The evidentiary burden therefore shifts to the 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). The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Panel finds that Respondent clearly had Complainant’s famous PORNHUB mark in mind when registering the <pornhubdownload.com> domain name and did so intending to mislead Internet users into believing that Respondent’s website is affiliated with or sponsored by Complainant. Hence Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.
Further, by using the domain name to resolve to a website displaying images from Complainant’s website and promoting ways to download material from that website, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Accordingly, the Panel finds that the <pornhubdownload.com> domain name was registered and is being used in bad faith under Policy paragraphs 4(b)(iii) and (iv).
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhubdownload.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 7, 2021
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