Licensing IP International S.à.r.l. v. Adam Hokke
Claim Number: FA2107001954387
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Adam Hokke (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youfreeporn.org>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 9, 2021; the Forum received payment on July 9, 2021.
On July 10, 2021, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <youfreeporn.org> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name. 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 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@youfreeporn.org. Also on July 19, 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. Respondent did however send an email to the Forum, see below.
On August 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that, over the years, and through efforts and acquisitions, it and its corporate affiliates have gained a strong position in the online adult entertainment market, where Internet traffic, including its channeling and control, represents a crucial aspect. One of the keys for Complainant to succeed is its business model. Complainant has contributed to the advent of user-generated adult video portals that aggregate content from a variety of sources, where users can watch, like, share, comment and upload their own videos. Given that several websites operated under Complainant’s brands are free of charge, it causes a very important volume of web traffic (i) to such free of charge websites, as well as (ii) to Complainant’s advertisers and subscription-based websites where the free of charge websites lead to. For instance, as reported in a blog post dated December 4, 2019, entitled “YouPorn 2019 Year In Retrospect”, over the course of 2019, (i) <youporn.com> received over 5 billion visits, a notable one billion more than in 2018, (ii) users viewed 4 billion more videos than in 2018, tallying up to a total of 18 billion videos viewed and (iii) user searches also increased since 2018 by 1 billion, making for 2 billion user searches total in 2019. This success began very early on since, not long after its launch, the <youporn.com website> was, as of October 2007, the highest-ranked adult website according to Alexa Rank metric1, ranging in the top 100 globally visited websites, all categories/topics combined. In the same year, the site was adding 15 million new users each month. Also, as reported in a book entitled Porn.com, Making Sense of Online Pornography 2, the <youporn.com> website, through which the Complainant’s marks are used, had an Alexa Rank of 35 as of June 2008, meaning that only 34 websites in the entire world-wide web had a better overall visitors/pageviews combination. Complainant has rights in the YOUPORN mark through its registration in the United States in 2008.
Complainant alleges that the disputed domain name is confusingly similar to its YOUPORN mark because it incorporates the mark in its entirety, merely adding the term “free” (which relates to Complainant’s business) and the “.org” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the YOUPORN mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name is used by Respondent to pass off as Complainant to offer competing services. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the YOUPORN mark: the string “You Porn” was used in an HTML element, specifically as anchor text[i], in the source code of the resolving website. Anchor text is the visible clickable link in an HTML hyperlink; search engines analyze anchor text from hyperlinks on web pages, and use words contained in the anchor text to help determine the ranking that the page will receive by search engines. The use of Complainant’s mark in an anchor text in the resolving website will increase its ranking in search engines. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email the Forum, Respondent states [sic]: “Hello, we received your UDRP request to our domain youfreeporn.org. We think this is was mistake, our base keyword is ;free porn’ not ‘youporn’. As i read your pdf you see You Porn in title of anchors, this is was fatality mistake by our technical. We removed this mistake as soon as we see it. Also i see screenshots about our rankings of keyword "youporn" and see that there is small amount of visitors, because our goal is "free porn" key. We sincerely apologize for the oversight of our specialist who mistakenly used the phrase "You Porn" in title texts, currently we removed all of this.”
Complainant owns the mark YOUPORN and uses it to market adult entertainment.
Complainant’s rights in its mark date back to at least 2008.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website offers competing services. The string “You Porn” was used in an HTML element, specifically as anchor text, in the source code of the resolving 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”).
The disputed domain name incorporates Complainant’s YOUPORN mark in its entirety, merely adding the term “free” (which related to Complainant’s business) and the “.org” gTLD. The addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See 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); see also Homer TLC, Inc. v. KAREL KAPTEYN / BEE38, Case No. FA1504001613701 (Forum May 13, 2015) (finding confusing similarity where “Complainant claims the <homeupgradedepot.com> domain name is confusingly similar to its THE HOME DEPOT mark because Respondent has simply dropped the ‘the’ from Complainant’s mark and added the generic term ‘upgrade’ in-between the words of the mark. The disputed domain name also differs from Complainant’s mark by the addition of the generic top-level domain (‘gTLD’) ‘.com.’ Generally speaking, deleting a minor portion of a mark and addition of a generic term are not sufficient to prevent a finding of confusing similarity.”); see also Sleep Bamboo, Inc. v. Onedin Sportswear, Case No. FA1106001392777 (Forum July 20, 2011) (“Respondent’s <sleepcomfortbamboo.com> domain name is confusingly similar to Complainant’s SLEEP BAMBOO mark. The domain name incorporates Complainant’s SLEEP BAMBOO mark entirely and merely alters it by inserting the descriptive word ‘comfort,’ deleting the space between the words of the mark, and adding the generic top-level domain (‘gTLD’) ‘.com.’). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized or licensed to Respondent any rights in the YOUPORN mark. Respondent is not commonly known by the disputed domain names: 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). Here, the WHOIS information for the disputed domain name lists the registrant as “Adam Hokke”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to offer competing services. This does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent alleges that its use of the terms “you” and “porn” was an inadvertent mistake. The Panel is not convinced by this argument, in particular given that the string “You Porn” was used in an HTML element, specifically as anchor text, in the source code of the resolving website. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website offers competing services, and includes advertising links, so there is a commercial gain for Respondent. Registering a disputed domain name for the purpose of diverting Internet user seeking a complainant’s services to a website offering competing service may be evidence of bad faith under Policy ¶ 4(b)(iii), and redirecting Internet users to competing service for commercial gain may be evidence of bad faith under Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: as already noted, the Panel finds that Respondent deliberately included Complainant’s mark in HTML anchor text. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <youfreeporn.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 13, 2021
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