Licensing IP International S.ŕ.r.l. v. Itech Me
Claim Number: FA2107001953887
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Itech Me (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <poenjub.com>, <jppornhub.com>, and <rtpornhub.com>, (‘the Domain Names’) registered with NameCheap, Inc.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2021; the Forum received payment on July 6, 2021.
On July 6, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <poenjub.com>, <jppornhub.com>, and <rtpornhub.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 July 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@poenjub.com, postmaster@jppornhub.com, postmaster@rtpornhub.com. Also on July 12, 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 August 5, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the registered trade mark PORNHUB, registered, inter alia in the EU and used since May 2007. It owns <PORNHUB.com>.
<poenjub.com> was registered on 27 June 2017 and <jppornhub.com> and <rtpornhub.com> were both registered on August 2, 2018.
The Domain Names are confusingly similar to the Complainant’s trademarks. <poenjub.com> substitutes a letter ‘e’ for the letter ‘r’ and a letter ‘j’ for the letter ‘h’, the substituted letters being adjacent to the original letters of the PORNHUB mark on the QWERTY keyboard. <jppornhub.com>, and <rtpornhub.com>, incorporate the Complainant’s trade mark merely adding ‘jp’ which indicates Japan and ‘rt’ which indicates Russia. (The Russian-specific version of <PORNHUB.com> is using <rt.PORNHUB.com> in its URL, while the Japanese-specific version of <PORNHUB.com> is using <jp.PORNHUB.com> in its URL). Adding “.com” does not prevent confusing similarity between the Domain Names and the Complainant’s mark. As typosquatting registrations the Domain Names are designed by their nature to be confusingly similar to the Complainant’s mark.
The Respondent has no rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant.
The Domain Names have been used for competing adult entertainment services which is not a bona fide offering of goods or services or a noncommercial legitimate or fair use. It is bad faith registration and use, being confusing and disruptive.
Typosquatting is bad faith per se and indicates actual knowledge of the Complainant’s well known mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the registered trade mark PORNHUB, registered, inter alia in the EU and used since May 2007.
The Domain Names each registered at least ten years after the Complainant’s trade mark was first used have been used for competing adult entertainment services.
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”).
The Domain Names consist of signs confusingly similar to the Complainant's PORNHUB mark (which is registered in the EU for adult entertainment services with first use recorded as May 2007) and the gTLD “.com”.
Poenhum.com substitutes a letter ‘e’ for the letter ‘r’ and a ‘j’ for the letter ‘h’, the new substituted letters being adjacent on the QWERTY keyboard to the original letters of the Complainant’s mark which have been replaced. <jppornhub.com>, and <rtpornhub.com> incorporate the Complainant’s trade mark in its entirety and each add a geographical abbreviations, either ‘jp’ indicating Japan or ‘rt’ indicating Russia and gTLD “.com”. The Russian-specific version of the Complainant’s web site <PORNHUB.com> is using <rt.PORNHUB.com> in its URL, while the Japanese-specific version of <PORNHUB.com> is using <jp.PORNHUB.com> in its URL.
The Panel agrees that misspellings of a Complainant’s mark in a domain name or adding generic geographical abbreviations to that mark in a domain name do not prevent confusing similarity between that domain name and the Complainant's trade mark pursuant to the Policy. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). As such substituting a letter ‘e’ for the letter ‘r’ and the letter ‘j’ for the letter ‘h’ or omitting the dot between descriptive geographical indications and the Complainant’s mark to catch traffic intended for the Complainant’s Japanese and Russian sites does not prevent the respective Domain Names being confusingly similar to the Complainant’s trade mark under the Policy.
The gTLD “.com” does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
It is clear from the evidence that the Respondent has used the site attached to the Domain Names for competing adult entertainment services which are not connected with the Complainant. The usage of the Complainant’s PORNHUB mark which has a reputation for adult entertainment services in relation to similar services not connected with the Complainant is not fair as the sites do not make it clear that there is no commercial connection with the Complainant. As such it cannot amount to the bona fide offering of services or a noncommercial legitimate or fair use. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
The Domain Names also appear to be typosquatting registrations. Typosquatting is also an indication of a lack of rights or a legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade mark in this way. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Names seek to take advantage of the situation where Internet users may make a typing error. Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inference [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
Further, in the opinion of the panelist the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe it is connected to or approved by the Complainant as they offer competing adult entertainment services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of those web sites or services on them likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See Allianz of AM. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
As such, the panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <poenjub.com>, <jppornhub.com>, and <rtpornhub.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 6, 2021
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