Licensing IP International S.à.r.l. v. Maxim Kiselev
Claim Number: FA2105001947420
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Maxim Kiselev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubxxxx.com>, registered with Registrar of Domain Names REG.RU 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 to the Forum electronically on May 25, 2021. The Forum received payment on May 25, 2021. The Complaint was received in both English and Russian.
On May 26, 2021, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <pornhubxxxx.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 June 1, 2021, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of June 21, 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@pornhubxxxx.com. Also on June 1, 2021, the Russian 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 June 24, 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 Russian. Pursuant to Rule 11(a), the language of the proceeding shall be Russian 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.
A. Complainant
Complainant, Licensing IP International S.à.r.l., operates in the adult entertainment market. Complainant has rights in the PORNHUB mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <pornhubxxxx.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <pornhubxxxx.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to use the PORNHUB mark. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered the <pornhubxxxx.com> domain name in bad faith with knowledge of Complainant’s rights in the PORNHUB mark. Respondent disrupts Complainant’s business and attempts to attract users to its own website where it offers competing content and monetized advertisements and hyperlinks.
B. Respondent
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 based on registration of the mark with the USPTO, e.g., Reg. No. 4,220,491, registered October 9, 2012. The Panel finds Respondent’s <pornhubxxxx.com> domain name to be confusingly similar to Complainant’s mark because it incorporates the entire PORNHUB mark and simply adds the letters “xxxx”, which are insufficient to distinguish the domain name from the mark, together with the inconsequential gTLD “.com”, which may be ignored.
(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 <pornhubxxxx.com> domain name was registered on December 18, 2019, by which time Complainant has shown that its PORNHUB mark had become famous. The domain name resolves to an English language website which displays content and services of the same nature as those via Complainant’s “www.pornhub.com” website, together with advertisements and hyperlinks which generate revenue for Respondent.
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.
Registration and Use in Bad Faith
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 <pornhubxxxx.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 content and services of the same nature as those via Complainant’s “www.pornhub.com” website, together with advertisements and hyperlinks which generate revenue, 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 <pornhubxxxx.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.
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 <pornhubxxxx.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: June 29, 2021
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