Licensing IP International S.ŕ.r.l. v. Suren Akopian
Claim Number: FA2107001954236
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Suren Akopian (“Respondent”), Armenia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pornhuib.com> and <poonhub.com>, registered with NetTuner Corp. dba Webmasters.com.
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 8, 2021; the Forum received payment on July 8, 2021.
On September 2, 2021, NetTuner Corp. dba Webmasters.com confirmed by e-mail to the Forum that the <pornhuib.com> and <poonhub.com> domain names are registered with NetTuner Corp. dba Webmasters.com and that Respondent is the current registrant of the names. NetTuner Corp. dba Webmasters.com has verified that Respondent is bound by the NetTuner Corp. dba Webmasters.com 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 September 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@pornhuib.com, postmaster@poonhub.com. Also on September 8, 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 October 4, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Licensing IP International S.ŕ.r.l., provides adult-entertainment services. Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491 registered Oct. 9 2012). See Compl. Appendix 3. Respondent’s <pornhuib.com> and <poonhub.com> domain names are virtually identical and confusingly similar to Complainant’s mark because they incorporate the PORNHUB mark in its entirety and merely adds the letter “i” or changes the letter “r” for the letter ”o” in the mark, and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <pornhuib.com> and <poonhub.com> domain names. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the PORNHUB mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names are used to offer competing goods and services.
Respondent registered and uses the <pornhuib.com> and <poonhub.com> domain names in bad faith. Respondent engages in a pattern of bad faith registration. Additionally, Respondent registered the disputed domain names in order to disrupt Complainant’s business and divert customers for commercial gain by offering competing services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Luxembourg company that provides adult-entertainment services.
2. Complainant has established its trademark rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491 registered Oct. 9 2012).
3. The evidence shows that Complainant also has common law or unregistered trademark rights in the PORNHUB mark going back to at least March 11, 2007.
4. Respondent registered the <pornhuib.com> and <poonhub.com> domain names on January 3, 2012 and March 12, 2008 respectively.
5. Respondent has caused the domain names to be used to offer competing goods and services.
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 based upon the registration of the mark with the USPTO (e.g., Reg. No. 4,220,491 registered Oct. 9 2012). See Compl. Appendix 3. Registration of a mark with the USPTO is a valid showing of rights in a mark. 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).”). Since Complainant provides evidence of registration of the PORNHUB mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s PORNHUB mark. Complainant argues Respondent’s <pornhuib.com> and <poonhub.com> domain names are virtually identical and confusingly similar to Complainant’s PORNHUB mark as it contains the PORNHUB mark in its entirety, merely adding the letter “i” or substituting the letter “r” for the letter “o” in the mark, and adding the “.com” gTLD. The subsitution or addition of a single letter in a disputed domain name and the addition of a gTLD fails to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”) See also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per 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 names 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 entirety in its domain names, merely adding the letter “i” or substituting the letter “r” for the letter “o” in the mark, which does not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <pornhuib.com> and <poonhub.com> domain names on January 3, 2012 and March 12, 2008 respectively;
(c) Respondent has caused the domain names to be used to offer competing goods and services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <pornhuib.com> and <poonhub.com> domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the PORNHUB mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Suren Akopian,” and there is no other evidence to suggest that Respondent was authorized to use the PORNHUB mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the <pornhuib.com> and <poonhub.com> domain names redirect to another site offering competing goods and services. Where the respondent uses a disputed domain name to redirect users to another site offering competing goods and services, it is open to the Panel to find that the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)) Here, Complainant offers screenshots of the disputed domain names which resolves to a page that offers competing goods and services. See Compl. Appendix 10. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <pornhuib.com> and <poonhub.com> domain names in bad faith because Respondent engages in a pattern of bad faith registration and use. Previous UDRP rulings against a respondent indicate that a respondent engages in a pattern of bad faith and suggests bad faith in the present case. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant submits that Respondent is the same Respondent in a previous UDRP case involving Complainant’s mark. See Licensing IP International S.ŕ.r.l. v. Suren Akopian, FA 2008001909814 (Forum Sept. 25, 2020). Therefore, as the Panel agrees with Complainant, it finds bad faith.
Secondly, Complainant argues that Respondent uses the disputed domain names to disrupt Complainant’s business and attempt to attract Internet users to its competing websites for commercial gain. Use of a disputed domain name to offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(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 AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); see additionally Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). As previously noted, Complainant offers screenshots of the disputed domain names resolving to a page that offers competing goods and services. See Compl. Appendix 10. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
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 <pornhuib.com> and <poonhub.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 5, 2021
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