Licensing IP International S.à.r.l. v. Ariel Pereira
Claim Number: FA2107001954237
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Ariel Pereira (“Respondent”), Argentina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youoorn.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2021; the Forum received payment on July 7, 2021.
On July 8, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <youoorn.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 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@youoorn.com. 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 Ho Hyun Nahm, Esq. 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
i) Over the years, and through efforts and acquisitions, Complainant and its corporate affiliates have gained a strong position in the online adult entertainment market. Complainant has rights in the YOUPORN mark (a device mark) through Complainant’s registration of the mark with the World Intellectual Property Office (“WIPO”) (e.g. Reg. No. 935,114, registered August 3, 2007); and the YOUPORN mark (a word mark) through Complainant’s registration of the mark with the IP Australia (e.g., Reg. No. 122,986, registered March 14, 2008). The disputed domain name is confusingly similar to Complainant’s YOUPORN mark as it is merely an intentional misspelling of “YOUPORN” – the letter “P” is replaced with the letter “O.”
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the YOUPORN mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name in connection with competitive hyperlinks.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by diverting Internet users away from Complainant’s website to Respondent’s landing page containing competitive hyperlinks. Respondent also engaged in typosquatting. Furthermore, Respondent had actual knowledge of Complainant’s rights to the YOUPORN mark prior to registering the disputed domain name, evidenced by the famous nature of Complainant’s mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on December 1, 2006.
2. Complainant has established rights in the YOUPORN mark (a device mark) through Complainant’s registration of the mark with the World Intellectual Property Office (“WIPO”) (e.g. Reg. No. 935,114, registered August 3, 2007); and the YOUPORN mark (a word mark) through Complainant’s registration of the mark with the IP Australia (e.g., Reg. No. 122,986, registered March 14, 2008).
3. The registration of the disputed domain name predates Complainant’s first claimed rights in the YOUPORN mark.
4. The date of first use of Complainant’s mark (August 31, 2006) predates the registration of the disputed domain name.
5. The textual component of Complainant’s mark has become a popular search term in the Google search engine worldwide just a few months after the date of first use of Complainant’s mark, and just a few days before the disputed domain name was created for its ‘typosquatting value.’
6. Respondent uses the disputed domain name to direct Internet users to landing pages with pay-per-click advertisements services that compete with those performed through Complainant’s website.
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 asserts rights in the YOUPORN mark through Complainant’s registration of the mark with the WIPO (e.g. Reg. No. 935,114, registered August 3, 2007); and the YOUPORN mark (a word mark) through Complainant’s registration of the mark with the IP Australia (e.g., Reg. No. 122,986, registered March 14, 2008).Registration of a mark with the WIPO or a national registration of a mark is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See ECCO SKO A/S v. Bobrov Danila, FA 1770718 (Forum Mar. 12, 2018) (“Complainant has rights in the ECCO mark based on a series of trademark registrations via the Madrid Protocol through the World Intellectual Property Organization (“WIPO”)); see also Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration with the WIPO (e.g. Reg. No. 935,114, registered August 3, 2007); and with the IP Australia (e.g., Reg. No. 122,986, registered March 14, 2008). Therefore, the Panel finds Complainant has demonstrated rights in the YOUPORN mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is confusingly similar to Complainant’s YOUPORN mark as it is merely an intentional misspelling of “YOUPORN” – the letter “P” is replaced with the letter “O.” Intentionally misspelling a mark while adding a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶ 4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the YOUPORN mark. When a response is lacking, relevant 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 name. 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 name lists the registrant as “Ariel Pereira,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the YOUPORN mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name in connection with competitive hyperlinks. Using a disputed domain name in connection with competitive hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot showing Respondent uses the disputed domain name in association with the parked domain monetization services Voodoo.com, Inc. (doing business as Voodoo.com) to direct Internet users to landing pages with pay-per-click advertisements services that compete with those performed through Complainant’s website. Therefore, the Panel finds 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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.
The Panel notes that the registration of the disputed domain name predates Complainant’s first claimed rights in Complainant’s mark. In the event that the registration of a domain name predates complainant’s first claimed rights in its mark, complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use.
However, the Panel notes that i) the date of first use of Complainant’s mark (August 31, 2006) predates the registration of the disputed domain name; and ii) the textual component of the YOUPORN trademark has become a popular search term in the Google search engine worldwide just a few months after the date of first use of Complainant’s mark, and just a few days before the disputed domain name was created for its ‘typoquatting value.’ Therefore, the Panel finds that the registration of the disputed domain name and its acquisition by Respondent constitutes bad faith registration and use of the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith as Respondent uses the disputed domain name to disrupt Complainant’s business by diverting Internet users away from Complainant’s website to Respondent’s landing page containing competitive hyperlinks. Using a disputed domain name in connection with competitive hyperlinks can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). The Panel recalls Complainant provides screenshots showing Respondent uses the disputed domain name to direct Internet users to landing pages with pay-per-click advertisements services that compete with those performed through Complainant’s website. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends Respondent registered and uses the disputed domain name in bad faith as Respondent engaged in typosquatting. The purposeful misspelling of a mark constitutes typosquatting and can demonstrate bad faith per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Complainant argues Respondent engaged in typosquatting by replacing the letter ‘P’ with the letter ‘O’ which are adjacent on most used keyboard layouts, in particular QWERTY and AZERTY. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per 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 <youoorn.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 9, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page