Licensing IP International S.à.r.l. v. Sergei Sericov
Claim Number: FA2107001953888
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Sergei Sericov (“Respondent”), Republic of Moldova.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhqhub.com>, registered with Danesco Trading Ltd.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2021; the Forum received payment on July 6, 2021.
On July 7, 2021, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <pornhqhub.com> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name. Danesco Trading Ltd. has verified that Respondent is bound by the Danesco Trading 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 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 firstname.lastname@example.org. 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 Richard Hill 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.
Complainant states that, over the years, and through efforts and acquisitions, it and its corporate affiliates have gained a strong position in the online adult entertainment market, where Internet traffic, including its channeling and control, represents a crucial aspect. One of the keys for Complainant to succeed is its business model. Complainant has contributed to the advent of user-generated adult video portals that aggregate content from a variety of sources, where users can watch, like, share, comment and upload their own videos. Given that several websites operated under Complainant’s brands are free of charge, it causes a very important volume of web traffic (i) to such free of charge websites, as well as (ii) to Complainant’s advertisers and subscription-based websites where the free of charge websites lead to. For instance, as reported in a blog post dated December 11, 2019, entitled “2019 Year in Review”, in respect of Complainant’s flagship brand PORNHUB, in the year 2019 alone (i) 42 billion visits were made to the <pornhub.com> website (which is 8.5 billion more than the previous year); (ii) the average of daily visitors was 115 million (which is 23 million more than the previous year); (iii) more than 39 billion searches were conducted during the year by users worldwide (which is 8.7 billion more than the previous year), which is the equivalent of approximately 80,000 visits, 78,000 searches, and 220,000 video views every minute. Complainant's marks and its <pornhub.com> website have become famous over the years on a worldwide scale and in its sector as shown for example by (i) Alexa global ranking of websites as of February 25, 2017, for various websites associated with trademarks of Complainant including <pornhub.com> at rank #40, (ii) press articles and a Wikipedia article on “PORNHUB”, (iii) a media kit preceded by statistics and a list of the latest press releases and (iv) pictures of a billboard in Times Square in the United States showing an ad to promote the PORNHUB brand resulting from a contest to find a safe-to-watch ad. With a workforce of more than 1,000 full-time employees in one of its 6 offices worldwide, Complainant is positioned as a leader in web design, IT, web development and search engine optimization (“SEO”) (focused on the adult entertainment market) and seeks, as its mission, to “deliver a world-class portfolio of entertainment experiences and IT solutions to a global customer base, utilizing [its] expertise to drive innovation and build new solutions exceeding customer expectations”. Complainant has maintained registration in the PORNHUB mark with numerous authorities around the world including in the European Union, United Kingdom, and United States since 2012.
Complainant alleges that the disputed domain name is identical or confusingly similar to its PORNHUB mark because it incorporates the mark in its entirety, merely adding in term “hq” (which can stand for “high quality”) in the middle, and the “.com” generic top-level domain (“gTLD”). The Panel should not consider the creation date of the disputed domain name (May 10, 2017), but rather May 30, 2019, this being the oldest date for an available historical WHOIS record on which the same WHOIS data regarding the registrant’s name and/or registrant’s organization is displayed compared to the current WHOIS record. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name nor has Respondent been authorized to use Complainant’s PORNHUB mark. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent diverts users away from Complainant’s website by providing and advertising content of similar nature to that provided by Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith because Respondent is using it to offer competing services. Respondent acted with actual knowledge of Complainant’s rights in the PORNHUB mark. Complainant cites UDRP precedents to support its position.
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark PORNHUB and uses it to market adult entertainment.
Complainant’s rights in its mark date back to at least 2012.
The disputed domain name was registered well after 2012.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website offers competing services and advertising.
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 disputed domain name incorporates Complainant’s PORNHUB mark it its entirety, merely adding in the term “hq” (which can stand for “high quality” or “headquarters”) in the middle and affixing the “.com” gTLD. A domain name may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of additional terms. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <pornhqhub.com> domain name is confusingly similar to Complainant’s PORNHUB mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: evidence of a respondent not being commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found where the identifying WHOIS information is not related to 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). Here, the WHOIS information lists “Sergei Sericov” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to offer competing services. Use of a domain name that diverts users away from a complainant’s website by offering similar services in competition with a complainant may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for 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).”). Therefore, the Panel finds that Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent is using the disputed domain name to compete with Complainant for its own commercial gain. Use of a domain name that disrupts a complainant’s business for a respondent’s own commercial gain through the offering of competing services may be indicative of a domain name registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See 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).”); see also LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 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 <pornhqhub.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 5, 2021
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