Licensing IP International S.à.r.l. v. Pavel Smirnov
Claim Number: FA2107001954065
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 <mostpornhub.pro>, <onlypornhub.pro>, <sweetpornhub.pro>, and <wildpornhub.pro>, 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.
Darryl C. Wilson, 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 <mostpornhub.pro>, <onlypornhub.pro>, <sweetpornhub.pro>, and <wildpornhub.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@mostpornhub.pro, postmaster@onlypornhub.pro, postmaster@sweetpornhub.pro, postmaster@wildpornhub.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 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, Licensing IP International S.a.r.l., operates in the online adult entertainment market. Complainant has rights in the PORNHUB mark based upon registration with numerous trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Sept. 10, 2012). Respondent’s <mostpornhub.pro>, <onlypornhub.pro>, <sweetpornhub.pro>, and <wildpornhub.pro> domain names are confusingly similar to Complainant’s PORNHUB mark since they each incorporate the entirety of the mark, simply adding the terms “most,” “only,” “sweet,” and “wild” as well as the “.pro” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domain names because it is not commonly known by the domain names and Complainant did not authorize Respondent to use the PORNHUB mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent trades off Complainant’s goodwill by diverting Internet traffic to competing webpages featuring advertisements.
Respondent registered and uses the disputed domain names in bad faith. Respondent has displayed a pattern of bad faith as shown by registration of other infringing domain names. Respondent also disrupts Complainant’s business for its own commercial gain by diverting Internet traffic to a competing webpage. Finally, Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Licensing IP International S.à.r.l. (“Complainant”), of Luxembourg City, Luxembourg. Complainant is the owner of domestic and international registrations for the mark PORNHUB which it has continuously used since at least as early as 2007 in connection with its provision of video on demand transmission services, video broadcasting, adult entertainment websites, and related digital transmissions.
Respondent is Pavel Smirnov (“Respondent”), of Moscow, Russian Federation. Respondent’s registrar’s address is listed as Limassol, Cyprus. The Panel notes that the <onlypornhub.pro> domain name was registered on or about November 10, 2019 and the <mostpornhub.pro>, <sweetpornhub.pro>, and <wildpornhub.pro> domain names were registered on or about December 10, 2019.
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”).
Complainant has rights in the PORNHUB mark based upon registration with numerous trademark agencies, including the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 4,220,491, registered Sept. 10, 2012). The Panel here finds that Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mostpornhub.pro>, <onlypornhub.pro>, <sweetpornhub.pro>, and <wildpornhub.pro> domain names are confusingly similar to Complainant’s PORNHUB mark since they each incorporate the entirety of the mark, simply adding the terms “most,” “only,” “sweet,” and “wild” as well as the “.pro” gTLD. Per Policy ¶ 4(a)(i), the addition of a generic or descriptive term and a gTLD to a mark is generally insufficient to negate confusing similarity between a domain name and the mark. 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).”). The Panel here finds that the disputed domain names are identical or confusingly similar to the PORNHUB mark under Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <mostpornhub.pro>, <onlypornhub.pro>, <sweetpornhub.pro>, and <wildpornhub.pro> domain names because Respondent is not commonly known by the domain names and Complainant did not authorize Respondent to use the PORNHUB mark. Lack of authorization to use a mark, along with conflicting WHOIS information, can support a finding that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(a)(ii). 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 “Pavel Smirnov” as the registrant of the disputed domain names and no evidence is presented to indicate that Complainant has ever authorized Respondent’s use of the PORNHUB mark. The Panel here finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead trades off Complainant’s goodwill by diverting Internet traffic to competing webpages featuring advertisements. Use of a disputed domain name in competition with a Complainant is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Additionally, profiting from links or advertisements at a resolving webpage suggests a lack of rights and legitimate interests. See 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). Here, Complainant provides screenshots of the pages resolving at the disputed domains, noting that they provide content and services of the same nature as Complainant along with advertisements. The Panel here finds that Respondent does not use the disputed domain names for a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent disrupts Complainant’s business for its own commercial gain by diverting Internet traffic to competing webpages. Use of a disputed domain name to offer goods and/or services that compete with a complainant may be evidence of bad faith per 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).”). Additionally, hosting advertisements at a disputed domain suggests bad faith per Policy ¶ 4(b)(iv). See 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.”). The Panel recalls again that Complainant provides screenshots of the pages resolving at the disputed domains, noting that they provide content and services of the same nature as Complainant along with advertisements. The Panel here finds bad faith registration and use per Policy ¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark when it registered the disputed domain names. Actual knowledge of a complainant’s rights in a mark evidence bad faith per Policy ¶ 4(a)(iii) and may be shown by the fame of the mark and the use a respondent makes of the mark. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here Complainant notes that its marks have achieved a significant degree of public recognition in practically all parts of the world where Internet is available. Complainant also notes that Respondent’s webpage features content and services similar to that offered by Complainant. The Panel here finds that Respondent had actual knowledge of Complainant’s mark and thus registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <mostpornhub.pro>, <onlypornhub.pro>, <sweetpornhub.pro>, and <wildpornhub.pro> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 19, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page