Licensing IP International S.ŕ.r.l. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2106001950121
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <porn-hub-deutsch.com> and <pornhub-deutsch.net>, registered with Internet Domain Service BS Corp.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2021; the Forum received payment on June 8, 2021.
On June 8, 2021, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@porn-hub-deutsch.com, postmaster@pornhub-deutsch.net. Also on June 10, 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 July 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant owns and operates one of the world’s largest adult entertainment websites. Complainant has rights in the PORNHUB trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 4,220,491, registered Oct. 9, 2012). Respondent’s <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names are confusingly similar to Complainant’s PORNHUB trademark, merely adding hyphens, the geographic term “Deutsch,” and either the “.com” or “.net” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names as it is not commonly known by the disputed domains and is neither an authorized user or licensee of the PORNHUB trademark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domains primarily to divert Internet users to Respondent’s illegitimate website for commercial gain.
Respondent registered and uses the <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names in bad faith. Respondent uses the disputed domain primarily to divert Internet uses to its own website where it offers content similar to that found on Complainant’s legitimate website, disrupting Complainant’s business and leading to commercial gain for Respondent. Additionally, Complainant contends that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the PORNHUB trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the PORNHUB trademark, registered in a number of countries around the world, and has provided evidence in the form of Registration Certificates for over 20 of those, whereof the below are registered before the disputed domain names:
The U.S. national trademark registration No. 4,220,491 PORNHUB (word), registered October 9, 2012 for services in Intl Classes 38, 41 and 42;
European Union Trade Mark No. 010166973 PORNHUB (word), registered May 11, 2012 for services in Intl Classes 38, 41 and 42; and
Japanese national trademark registration No. 5593933 PORNHUB (word), registered June 28, 2013 for services in Intl Class 41.
The disputed domain names were registered on November 29, 2013 (<porn-hub-deutsch.com>) and November 28, 2013 (<pornhub-deutsch.net>).
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 asserts rights in the PORNHUB trademark through several registrations in several countries, such as its registration with the USPTO. Registration of a trademark with a trademark agency, such as the USPTO, is generally 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).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 4,220,491, registered Oct. 9, 2012). Thus, the Panel finds that Complainant has rights in the PORNHUB trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names are confusingly similar to Complainant’s PORNHUB trademark, only differing by the addition of hyphens, the geographic term “Deutsch,” and a gTLD. Previous Panels have held that such changes may not sufficiently distinguish a domain name from a trademark under Policy ¶ 4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). The Panel agrees, and finds that Respondent’s domain names are confusingly similar to Complainant’s PORNHUB trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names as it is not commonly known by the disputed domains and is neither an authorized user or licensee of the PORNHUB trademark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information of record identifies “Domain Admin / Whois Privacy Corp.” as the registrant of the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead for diverting Internet users from Complainant’s website to Respondents, where Respondent offers content highly similar to those offered by Complainant. Neither competing use or general intent to divert Internet users qualifies as a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). As noted, Complainant provides evidence of Respondent’s use of the disputed domains to offer content similar to that offered by the Complainant. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant claims that Respondent registered and uses the <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names in bad faith because Respondent uses the disputed domain names to divert Internet users to its website where it offers content similar to that offered on Complainant’s legitimate website. Such use may display bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As previously noted, Complainant provides screenshots of the resolving websites for the disputed domain names as evidence of Respondent’s competing use. Thus, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant argues that Respondent registered the <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names with actual knowledge of Complainant’s rights in the PORNHUB trademark. Per Policy ¶ 4(a)(iii), actual knowledge of another’s trademark rights may establish relevant bad faith, and can be shown through the notoriety of a mark and the use Respondent makes of a disputed domain. 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”). Here, Complainant provides evidence that it has substantial notoriety under the PORNHUB trademark. Additionally, Respondent uses the disputed domain names to display content similar to that found on Complainant’s website, and displays Complainant’s logo on the disputed domains as well. Based on these facts, the Panel agrees that actual knowledge was present, and finds bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <porn-hub-deutsch.com> and <pornhub-deutsch.net> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 12, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page