Licensing IP International S.à.r.l. v. Dipraj Patra
Claim Number: FA2103001937344
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Dipraj Patra (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubsave.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 21, 2021; the Forum received payment on March 21, 2021.
On March 22, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <pornhubsave.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 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 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@pornhubsave.com. Also on March 30, 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 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 operates numerous websites featuring adult-oriented content. Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012). Respondent’s <pornhubsave.com> domain name is confusingly similar to Complainant’s mark as Respondent adds the word “save” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <pornhubsave.com> domain name as Respondent is not commonly known by the disputed 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 enabling Internet users to make unauthorized reproductions of Complainant’s content available at Complainant’s legitimate website.
Respondent registered and uses the <pornhubsave.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by allowing Internet users to copy Complainant’s content that is normally behind a paywall. Furthermore, Respondent is attempting to attract Internet users for commercial gain by allowing Internet users to copy Complainant’s material while seeking donations via PayPal or cryptocurrency. Finally, Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <pornhubsave.com> domain name.
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 claims rights in the PORNHUB mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <pornhubsave.com> domain name is confusingly similar to Complainant’s mark as Respondent adds the generic word “save” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark. Adding a generic term and a gTLD to a complainant’s mark does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel finds that Respondent’s <pornhubsave.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <pornhubsave.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS of record identifies the Respondent as “Dipraj Patra” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <pornhubsave.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is enabling Internet users to make unauthorized reproductions of Complainant’s content available at Complainant’s legitimate website. Using a disputed domain name to enable Internet users to illegally access or use a complainant’s goods or services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant provides screenshots of the <pornhubsave.com> domain name’s resolving webpage, which shows a webpage that offers methods to download Complainant’s videos. The Panel finds that Respondent fails to use the <pornhubsave.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues Respondent registered and used the <pornhubsave.com> domain name in bad faith. Specifically, Complainant argues Respondent is attempting to disrupt Complainant’s business by allowing Internet users to copy Complainant’s content that is normally behind a paywall. Registering a disputed domain name to disrupt a complainant’s business by offering a complainant’s goods or services may be evidence of bad faith under Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). Complainant provides screenshots of the disputed domain name’s webpage, which show Internet users how to to download Complainant’s paid-for content for free, which Complainant argues is disruptive to Complainant’s business. This is evidence that Respondent registered and uses the <pornhubsave.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues Respondent is attempting to attract Internet users for commercial gain by allowing Internet users to copy Complainant’s material while seeking donations via PayPal or cryptocurrency. Registering a confusingly similar domain name for the purpose of commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Further, fundraising based on an offer of goods or services of a complainant without permission is evidence of bad faith under Policy ¶ 4(b)(iv). See Nat’l Rifle Ass'n. v. fredg.com, FA 95837 (Forum Nov. 30, 2000) (finding bad faith where the respondent registered the domain names <friendsofnra.com>, <friendsofnra.net>, and <friendsofnra.org> with the intention of using the domain names in connection with individual NRA fundraising, but without permission from the complainant to use the registered marks). Complainant provides screenshots which ask for donations via PayPal or Bitcoin for the illegal download service Respondent purportedly provides. This is evidence that Respondent registered and uses the <pornhubsave.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registering the <pornhubsave.com> domain name. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations and the fact that Respondent is offering methods to circumvent Complainant’s subscriptions. The Panel finds that Respondent did have actual knowledge of Complainant’s rights in its mark and registered and uses the domain name in bad faith.
Complainant has proved 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 <pornhubsave.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
April 29, 2021
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