Licensing IP International S.à.r.l. v. NAME AVEN
Claim Number: FA2104001939976
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is NAME AVEN (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <porjhub.com> (the “disputed domain name”), registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2021; the Forum received payment on April 1, 2021. The Complaint was received in both Chinese and English.
On April 2, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <porjhub.com> disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., 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 April 8, 2021, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 28, 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@porjhub.com. Also on April 8, 2021, the Chinese language 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 May 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF PROCEEDING
The Registration Agreement in this case is written in Chinese, thereby making the language of the proceeding in Chinese. However, pursuant to Rule 11(a), the Panel has determined that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, has decided that the remainder of the proceeding may be conducted in English.
A. Complainant
Complainant operates several websites in the adult entertainment industry and has rights in the PORNHUB trademark through its registration of the mark with numerous trademark agencies around the world, one of which is the United States Patent and Trademark Office (“USPTO”), Reg. No. 4,220,491, registered on Oct. 9, 2012; and another is the European Union Intellectual Property Office (“EUIPO”), Reg. No. 10,166,973, registered on May 11, 2012 (hereinafter collectively referred to as the “PORNHUB Mark”).
Complainant contends that the disputed domain name is identical or confusingly similar to the PORNHUB Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Respondent submitted the following email to Complainant on April 8, 2021:
“Hello
I can transfer the domain to you , its no fee
Thanks”
Respondent submitted the following email to Complainant on April 27, 2021:
“Hi
If you can cancel the complaint, I can transfer porjhub.com to you free , My team needs $150 operation fee.
Thanks”
Complainant has registered trademark rights in the PORNHUB Mark. The disputed domain name is confusingly similar to Complainant’s PORNHUB Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in respect of the disputed domain name and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that Complainant has rights in the PORNHUB Mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 4,220,491, registered on Oct. 09, 2012) and the EUIPO (e.g. Reg. No. 10,166,973, registered on May 11, 2012). Registration of a trademark with multiple trademark offices is sufficient to establish rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). In addition, registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Moreover, registration of a mark with the EUIPO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel further finds that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s PORNHUB Mark as it merely replaces the letter "N" with the letter "J," two letters that are adjacent on most keyboard layouts. Adding a generic Top-Level Domain (“gTLD”) to a misspelled mark generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the PORNHUB Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain name resolves to a webpage containing hyperlinks that unfairly compete with Complainant’s business.
In addition, Respondent lacks rights or legitimate interests in the <porjhub.com> disputed domain name because Respondent offers the disputed domain name for sale. Offering a disputed domain name for sale is further evidence that a respondent lacks rights or legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant provides screenshots showing that the disputed domain name is offered for sale via the SEDO domain name marketplace.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, Respondent registered and is using the disputed domain name in bad faith because Respondent disrupts Complainant’s business by diverting Internet users to its own website on which pay-per-click hyperlinks are displayed that compete with Complainant’s business. Use of a disputed domain name to offer competing services demonstrates bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s services and offer competitive services).
Second, Respondent registered and is using the disputed domain name in bad faith given that Respondent engaged in typosquatting when it registered the disputed domain name. Respondent registered the disputed domain name by misspelling the PORNHUB Mark, which it did by replacing the letter “N” in Complainant’s PORNHUB Mark with the letter “J.” Typosquatting of a registered trademark, as here, indicates bad faith registration and use per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Third, Respondent registered and is using the <porjhub.com> disputed domain name in bad faith as Respondent offers the disputed domain name for sale. Offering a disputed domain name for sale can demonstrate bad faith per Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Here, Complainant provides screenshots showing that the disputed domain name is offered for sale via the SEDO domain name marketplace.
Fourth, Respondent registered and is using the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in its well-known PORNHUB Mark at the time of registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark). The Panel concludes that the misspelling of Complainant’s PORNHUB Mark is another indication that Respondent had actual knowledge of the trademark when it registered the disputed domain name. Here, the PORNHUB Mark has achieved a significant degree of public recognition in practically all parts of the world where high-speed Internet is available. Such actual knowledge based on the fame of the trademark constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Respondent registered and is using the disputed domain name in bad faith based on Respondent’s pattern of bad faith registration. A respondent’s prior adverse UDRP decisions can demonstrate bad faith per Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Here, Complainant provides a screenshot showing that a reverse WhoIs search using the Respondent's email address as a keyword reveals that the Respondent holds and/or held numerous domain names corresponding to third-party trademarks, as well as several other domain names confusingly similar to Complainant’s PORNHUB Mark in addition to the disputed domain name.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <porjhub.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 11, 2021
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