DECISION

 

Licensing IP International S.à.r.l. v. Pavel Smirnov

Claim Number: FA2107001953889

 

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada.  Respondent is Pavel Smirnov (“Respondent”), Russian Federation.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pornmovieshub.pro>, registered with Danesco Trading Ltd..

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

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 <pornmovieshub.pro> 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 13, 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@pornmovieshub.pro.  Also on July 13, 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 James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the PORNHUB trademark and service mark established though its ownership of its international portfolio of trademark and service mark registrations described below and at common law through its extensive use of the mark in its business providing adult content on its website and related merchandise and services.

 

In support of its claim to long and extensive use, Complainant has provided copies of archived screen captures of its website dating back to March 2008 and asserts that in 2019, Complainant transferred 6597 petabytes of data, which was about 18,073 terabytes per day, and 209 gigabytes per second!

 

Complainant submits that the disputed domain name is confusingly similar to its PORNHUB mark arguing that the term “PORNHUB” is the dominant feature, and clearly recognizable within the disputed domain name.

 

Complainant contends that the addition of the generic or descriptive term “movies”, even as it is inserted between the two terms “PORN” and “HUB” does not reduce the confusingly similarity with the PORNHUB mark. Complainant argues that if anything, the term reinforces the similarity, given that it relates to the services associated with the Complainant’s mark. The term “movies” is likely to be understood merely as a reference to the video content made available on Complainant’s website.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent cannot argue on the basis that his use of, or demonstrable preparations to use, the disputed domain name (or a name corresponding to the disputed domain name) was in connection with a bona fide offering of goods or services before any notice to him of the dispute.

 

Complainant refers to a screen capture of the website to which the disputed domain name resolves, submitted in an annex to the Complaint. The screen capture shows that the disputed domain name resolves to a website that provides content similar to and competing with Complainant’s website.

 

Complainant argues that it illustrates that Respondent registered the disputed domain name and misuses it to parasitize the value of the goodwill attaching to the Complainant’s mark through illegitimate domain monetization means including web traffic diversion and advertisement.

 

Complainant further alleges that Respondent has not been commonly known by the disputed domain name given that the only names by which Respondent appears to have been commonly known are those found as the registrant’s name and organization in the WHOIS record of the disputed domain name, namely “Pavel Smirnov”.

 

Furthermore, Complainant argues that the websites linked to the disputed domain name contain no information to identify the registrant or the website operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or privacy policy” usually found on websites.

 

Complainant asserts that it never requested, allowed or authorized Respondent to register or hold the disputed domain name or to use the Complainants’ mark, or any other of Complainant’s trademarks, tradenames, domain names or any other identification element of the Complainant or imitation thereof.

 

Lastly in this regard, Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s marks at issue, because the evidence demonstrates that the Respondent acquired the disputed domain name and misuses it for commercial, illegitimate and/or unfair purposes taking advantage of Complainant’s mark, web address and reputation in order to attract and divert Internet traffic to Respondent’s website.

 

Complainant further alleges that the disputed domain name was registered and is being used in bad faith arguing that Complainant’s mark was well known prior to the registration of the disputed domain name and furthermore, given the constituent elements of the disputed domain name and the website to which it resolves, it is clear that the registrant was well aware of the Complainant’s mark when the disputed domain name was registered.

 

Complainant adds that Respondent cannot credibly claim to have been unaware of Complainant’s mark or that the PORNHUB mark is generic or merely descriptive and submits that the registration of the disputed domain name targeted Complainant’s rights.

 

Complainant argues that the website to which the disputed domain name resolves provides content and services of the same nature as those provided by Complainant via the <pornhub.com> website and derives undue and unfair advantages from the value of the reputation and goodwill attaching to the Complainant’s marks and the traffic related to services associated thereto.

 

Referring to a screen capture of the website to which the disputed domain name resolves, Complainant adds that this abusive scheme includes advertisements in the form of banners appearing at the upper or lower right corners of webpages and which are displayed when visitors are browsing through the website to which the disputed domain name resolves.

 

Complainant argues that such advertisements appear to originate from a behind-the-scene online advertising network using alternative URL, tied to the website and promote services seemingly targeted for the visitors. Complainant complains that it derives no revenue from these advertisements and cannot control their nature and quality.

 

Complainant alleges that Respondent and the company providing said background links are sharing a financial benefit from the bad faith use of the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant operates a website with adult content providing online services and merchandise using the mark PORNHUB for which it owns a portfolio of trademark and service mark registrations in including:

·         EUTM PORNHUB, registration number 010166973, registered on May 11, 2012 for services in classes 38, 41 and 42;

·         United States service mark PORNHUB, registration number 4220491, registered on the  Principal Register on October 9, 2012 for services in international class 38;

·         Japanese service mark PORNHUB, registration number 5593933, REGISTERED ON June 28, 2013 for services in class 41;

·         Argentina service mark PORNHUB, registration number 2634016, registered on February 25, 2014 for services in class 41;

·         Mexico service mark PORNHUB, registration number 1440934, registered on  March 21, 2014 for services in class 41;

·         Brazil service mark PORNHUB, registration number 840380518, registered on November 17, 2017 for services in class 41;

·         Canada service mark PORNHUB (device), registration number TMA936808, registered on May 4, 2016 for services in classes 38 and 41;

·         United States trademark and service mark PORNHUB (stylized drawing), registration number 5156883, registered on the Principal Register for goods and services in international classes10, 25, 38,41 and 42;

·         United Kingdom trademark and service mark PORNHUB (device) registration number UK 3190261, registered on March 10, 2017 for goods and services in classes 5, 9, 18, 21, 35 and 41;

·         United Kingdom trademark and service mark PORNHUB registration number UK 3190264, registered on March 10, 2017 for goods and services in classes 5, 9, 10, 21, 25, 35 and 41;

·         United Kingdom trademark and service mark PORNHUB (device) registration number UK 3190266, registered on March 10, 2017 for goods and services in classes 5, 9, 18, 21, 35 and 41;

·         EUTM PORNHUB (figurative), registration number 015910731, registered on April 26, 2017 for goods and services in classes 5, 9, 18, 21, 35 and 41;

·         EUTM PORNHUB, registration number 015910681, registered on June 15, 2017 for goods and services in classes 5, 9, 10, 18, 21, 25, 35, 41;

·         EUTM PORNHUB (figurative), registration number 015910748, registered on June 15, 2017 for goods and services in classes 5, 9, 10, 18, 21, 35, 41;

·         United States trademark and service mark PORN HUB,  registration number 5530898, registered on the Principal Register on July 31, 2018 for goods and services in international classes 5, 9, 10, 18, 21, 25, 35 and 41;

·         United States trademark and service mark PORN HUB (stylized drawing),  registration number 5561669, registered on the Principal Register on September 11, 2018 for goods and services in international classes 9,18, 21 and 35;

·         Japan trademark registration PORNHUB, registration number 6085445, registered on September 28, 2018 for goods in class 10;

·         Swiss registered service mark PORNHUB (device), registered on October 9, 2018 for services in class 41;

·         United States trademark and service mark PORNHUB,  registration number 5586801 registered on the Principal Register on October 16, 2018, for goods and services in international classes 5, 9, 18, 21, 25, 35 and 41.

 

Complainant’s business is carried on via its website to which its domain name <pornhub.com> resolves.

 

The disputed domain name <pornmovieshub.pro> was registered on September 1, 2019 and is being used as the address of a website that provides adult content that competes directly with Complainant’s website at <pornhub.com> and is monetized to generate revenue for Respondent.

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification details of the registration of the disputed domain name. Respondent availed of a privacy service to conceal his identity on the published WhoIs and the Registrar has confirmed that Respondent is the registrant of the disputed domain name.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant has adduced uncontested convincing evidence of its rights in the PORNHUB trademark and service mark established though its ownership of its portfolio of registrations described above and substantial international use of the mark in relation to the provision of adult content on its website and related merchandise and services.

 

The disputed domain name consists of the elements “porn”, “movies” and “hub” together with the gTLD extension <.pro>.

 

Complainant’s mark consists of the terms “porn” and “hub”.

 

The word “hub” is the only distinctive element per se in Complainant’s word mark as the term “porn” is descriptive of the pornography services provided by Complainant.

 

The descriptive term “movies” also lacks any distinctive character.

 

The gTLD <.pro> has no distinguishing character as it would be perceived by Internet users as a necessary technical element for a domain name.

 

Notwithstanding that the terms “porn” and “hub” are not contiguous, the overall impression created by the disputed domain name is a reference to Complainant’s  PORNHUB mark.

 

This Panel finds therefore that the disputed domain name is confusingly similar to the PORNHUB mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie uncontested case that Respondent has no rights or legitimate interests in the disputed domain name submitting that

·         Respondent cannot argue on the basis that his use of, or demonstrable preparations to use, the disputed domain name (or a name corresponding to the disputed domain name) was in connection with a bona fide offering of goods or services before any notice to him of the dispute;

·         the screen capture of the website to which the disputed domain name resolves, submitted in an annex to the Complaint demonstrates that Respondent registered the disputed domain name and misuses it to take parasitic advantage of the value of the goodwill attaching to the Complainant’s mark through illegitimate domain monetization means including web traffic diversion and advertisement;

·         Respondent is not commonly known by the disputed domain name;

·         the only names by which Respondent appears to have been commonly known are those found as the registrant name and organization in the WHOIS record of the disputed domain name, namely “Pavel Smirnov”;

·         the websites linked to the disputed domain name contain no information to identify the registrant or the website operator either in a footer, or on a page such as “about us”, “contact us”, “terms of use” or privacy policy” usually found on websites;

·         Complainant never requested, allowed or authorized Respondent to register or hold the disputed domain name or to use the Complainants’ mark, or any other of Complainant’s trademarks, tradenames, domain names or any other identification element of the Complainant or imitation thereof;

·         Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s marks at issue, again given that there is sufficient evidence to demonstrate that the Respondent acquired the disputed domain name and misuses it for commercial, illegitimate and/or unfair purposes.

 

It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain names at issue, the burden of production shifts to the respondent to prove such rights or interests.

 

Respondent has failed to discharge that burden of production and therefore this Panel must find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has made out a convincing, uncontested case that the disputed domain name was registered in bad faith arguing that Complainant’s mark was well known prior to the registration of the disputed domain name on September 1, 2019 as evidenced by the earliest registration of the PORNHUB mark, relied upon by Complainant in 2012 and screen captures of archived content of Complainant’s website going back to 2008. Also the uncontested evidence shows an enormous volume of traffic through Complainant’s <www.pornhub.com> website in 2019.  

 

Given the nature of the business and the distinctive character of the combination of the words “porn” and “hub” in the disputed domain name, it is improbable that the registrant of the disputed domain name was  unaware of Complainant’s PORNHUB mark and website when the disputed domain name was chosen and registered.

 

The addition of the word “movies” in the disputed domain name references the type of content that is available for download on Complainant’s website.

 

This Panel finds therefore that on the balance of probabilities the disputed domain name was registered with Complainant’s mark in mind with the intention of creating confusion among Internet users and taking predatory advantage of the reputation of Complainant’s website, domain name and PORNHUB mark.

 

The uncontested evidence also proves on the balance of probabilities that the disputed domain name is being used in bad faith as the address of a website that competes directly with Complainant’s website. The evidence further indicates that Respondent is generating revenue from visitors by presenting banner advertisements with links to  monetized content.

 

The evidence shows that Respondent is using the disputed domain name in bad faith by creating confusion among Internet users, taking advantage of Complainant’s PORNHUB mark in the disputed domain name to attract and misdirect traffic intended for Complainant to Respondent’s website for monetary gain.

 

This Panel finds therefore that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site.

 

As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <pornmovieshub.pro> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James Bridgeman SC

Panelist

Dated:  August 9, 2021

 

 

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