Licensing IP International S.à.r.l. v. Pavel Smirnov
Claim Number: FA2107001954064
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 NAMES
The domain names at issue are <bigpornhub.pro> and <getpornhub.pro>, registered with Danesco Trading Ltd.
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.
Sandra J. Franklin 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, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <bigpornhub.pro> and <getpornhub.pro> domain names are registered with Danesco Trading Ltd. and that Respondent is the current registrant of the names. 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 postmaster@bigpornhub.pro, postmaster@getpornhub.pro. 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 Sandra J. Franklin 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
1. Respondent’s <bigpornhub.pro> and <getpornhub.pro> domain names are confusingly similar to Complainant’s PORNHUB mark.
2. Respondent does not have any rights or legitimate interests in the <bigpornhub.pro> and <getpornhub.pro> domain names.
3. Respondent registered and uses the <bigpornhub.pro> and <getpornhub.pro> domain names in bad faith.
B. Respondent did not file a Response.
Complainant provides user-generated adult video portals. Complainant maintains registrations for the PORNHUB mark with numerous authorities around the world including the United States Patent and Trademark Office, the United Kingdom, and the European Union (“EUIPO”) (e.g. Reg. No. 010166973, Registered on May 11, 2012).
Respondent registered the <bigpornhub.pro> and <getpornhub.pro> domain names on October 10, 2019, and uses them to compete with Complainant.
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 Panel finds that Complainant has rights in the PORNHUB mark through its registration with multiple authorities including the European Union. See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <bigpornhub.pro> and <getpornhub.pro> domain names use Complainant’s PORNHUB mark and simply add generic words and the “.pro” gTLD. These changes are insufficient to distinguish a domain name from a mark it incorporates. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s PORNHUB mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent does not have any rights or legitimate interests in the <bigpornhub.pro> and <getpornhub.pro> domain names because Respondent is not commonly known by the domain name. Respondent is not authorized to use Complainant’s PORNHUB mark. The WHOIS information lists “Pavel Smirnov” as the registrant of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Complainant also argues that Respondent is not using the <bigpornhub.pro> and <getpornhub.pro> domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use because Respondent uses the domain names to offer services in competition with Complainant. Using a domain name to offer services that compete directly with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (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 Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). Complainant demonstrates that the disputed domain names resolve to a website that displays adult-oriented content in competition with Complainant. Therefore, the Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <bigpornhub.pro> and <getpornhub.pro> domain names in bad faith, as Respondent displays a pattern of bad faith as shown by registering other infringing domain names. A respondent’s registration of various domain names incorporating registered marks evinces bad faith under Policy ¶ 4(b)(ii). See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites). Complainant provides evidence of 1025 domain names associated with Respondent’s email address, including at least one other domain name incorporating one of Complainant’s marks. The Panel therefore finds bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent registered and uses the <bigpornhub.pro> and <getpornhub.pro> domain names in bad faith because Respondent disrupts Complainant’s business for its own commercial gain by diverting Internet traffic to competing webpages. Using a disputed domain name to offer goods or services that compete with a complainant may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).
Complainant contends that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the PORNHUB mark. Complainant’s demonstrates that its PORNHUB mark is widely associated with adult-oriented content. Therefore, the Panel finds that Respondent knew of Complainant’s rights in the PORNHUB mark, and thus registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”).
The Panel finds that Complainant has satisfied 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 <bigpornhub.pro> and <getpornhub.pro> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 6, 2021
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