Licensing IP International S.à.r.l. v. Manu Lasir
Claim Number: FA2107001954062
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Manu Lasir (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhub.bz>, registered with PSI-USA, Inc. dba Domain Robot.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2021; the Forum received payment on July 6, 2021.
On July 8, 2021, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <pornhub.bz> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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@pornhub.bz. 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 The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Licensing IP International S.à.r.l., operates one of the world’s largest adult entertainment websites. Complainant has rights in the PORNHUB mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 4,220,491, registered Oct. 9, 2012). See Compl. Ex. 3. Respondent’s <pornhub.bz> domain name is identical or confusingly similar to Complainant’s PORNHUB mark, including the entirety of Complainant’s mark and only differing by the addition of the “.bz” country code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <pornhub.bz> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the PORNHUB mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer products highly similar to those Complainant offers, directly competing with Complainant’s business.
Respondent registered and uses the <pornhub.bz> domain name in bad faith. Respondent uses the disputed domain name to offer products which are highly similar to those offered by Complainant, disrupting Complainant’s business and likely leading to commercial gain for Respondent. Complainant also contends that the disputed domain name may qualify as typosquatting. Respondent’s use of a privacy service when registering the disputed domain name also demonstrates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Luxembourg company engaged in the provision of adult entertainment services on the internet.
2. Complainant has established its trademark rights in the PORNHUB mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 4,220,491, registered Oct. 9, 2012).
3. Respondent registered the disputed domain name on April 8, 2019.
4. Respondent has used the disputed domain name to offer products very similar to those Complainant offers, directly competing with Complainant’s business, showing Respondent has no rights or legitimate interests in the domain name and that Respondent registered and has used it in bad faith.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PORNHUB mark through its registration with the USPTO. Registration of a mark 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). See Compl. Ex. 3. The Panel therefore finds Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PORNHUB mark. Complainant argues that Respondent’s <pornhub.bz> domain name is identical or confusingly similar to Complainant’s PORNHUB mark, only differing by the addition of the “.bz” ccTLD which is the country code extension for Belize. Addition of a ccTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wicked Weasel Pty Ltd v. Kulich / GS, FA 1604785 (Forum Apr. 23, 2015) (finding, “The addition of a ccTLD to a registered trademark is not sufficient to overcome a finding of confusing similarity under a Policy ¶4(a)(i) analysis.”); see also ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). The internet user would assume that the domain name was an official domain name leading to an official website that related to the activities of Complainant in Belize. Thus, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s PORNHUB mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”).
(a) Respondent has chosen to take Complainant’s PORNHUB trademark and to use it in its domain name;
(b) Respondent registered the disputed domain name on April 8, 2019;
(c) Respondent has used the disputed domain name to offer products very similar to those Complainant offers, directly competing with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <pornhub.bz> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the PORNHUB mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by an infringing domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information for the disputed domain name identifies “Manu Lasir” as the registrant of the disputed domain. See Amend. Compl. Ex. 2. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent fails to use the <pornhub.bz> domain name for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use, but instead uses the domain name to operate a website which competes directly with Complainant’s business. Use of an infringing domain name to offer competing goods or services to those offered by a trademark holder does not qualify as either a bona fide offer or noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). Screenshots of the disputed domain name provide evidence that Respondent uses the disputed domain name to compete directly with Complainant’s business. See Compl. Ex. 10. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <pornhub.bz> domain name in bad faith as Respondent uses it to offer content highly similar to that offered by Complainant. Previous Panels have held that use of an infringing domain name to offer competing goods or services may display bad faith disruption of Complainant’s business and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See 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)); 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, screenshots of the disputed domain name demonstrate that Respondent offers adult entertainment material similar to those displayed on Complainant’s legitimate website. See Compl. Exs. 9 & 10. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends that Respondent’s <pornhub.bz> domain name constitutes typosquatting. Typosquatting, or intentionally introducing typographical errors to increase traffic to a website, may qualify as bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Here, the disputed domain name is identical to Complainant’s PORNHUB mark, only differing by the addition of the “.bz” gTLD. As the Panel agrees that the disputed domain name constitutes typosquatting, it finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant also contends that Respondent’s use of a privacy service when registering the <pornhub.bz> domain name provides further evidence of bad faith. Previous Panels have held that use of a privacy service when registering a commercial domain name may provide evidence of bad faith under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The WHOIS information for the disputed domain name demonstrates that the registrant of the disputed domain did use a privacy service when registering the disputed domain. See Compl. Ex. 2. As the Panel agrees with Complainant it finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhub.bz> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 23, 2021
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