Licensing IP International S.à.r.l. v. Khanh Pham Minh
Claim Number: FA2107001954388
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Khanh Pham Minh (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubdownloader.net> (“Domain Name”), registered with NameSilo, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 9, 2021; the Forum received payment on July 9, 2021.
On July 9, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <pornhubdownloader.net> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 23, 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 email@example.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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant, Licensing IP International S.à.r.l., operates one of the world’s largest adult entertainment platforms at the website www.pornhub.com. Complainant has rights in the PORNHUB mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 4,220,491, registered Oct. 9, 2012). Respondent’s <pornhubdownloader.net> domain name is confusingly similar to Complainant’s mark because it incorporates the PORNHUB mark in its entirety and merely adds the term “downloader” and the “.net” generic top-level domain (“gTLD”)
Respondent registered and uses the <pornhubdownloader.net> domain name in bad faith. Respondent registered the Domain Name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the PORNHUB mark.
Respondent failed to submit a Response in this proceeding however on July 13, 2021 sent the following e-mail, the relevant portion being reproduced below, to the Forum.
I contact you by my Licensing IP International S.à.r.l. v. Khanh Pham Minh - FA2107001954388. I can not respond in adrforum - technical problem, so I send an email to you. Sorry for my bad English. I'm not a native English speaker, so I don't understand your emails clearly. So I violated the trademark, and what should I do? Remove my website or do what? Do I need a lawyer to handle this? I would love to handle this in a simple way. Many thanks.
Complainant holds trademark rights for the PORNHUB mark. The Domain Name is confusingly similar to Complainant’s PORNHUB mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 formal 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 PORNHUB mark through its registration of the mark with the USPTO (e.g., Reg. 4,220,491, registered Oct. 9, 2012). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <pornhubdownloader.net> domain name is confusingly similar to Complainant’s PORNHUB mark because it wholly incorporates Complainant’s PORNHUB mark while adding the descriptive term “downloader” and the “.net” gTLD to form the Domain Name. These changes are insufficient to distinguish the Domain Name from the PORNHUB mark under Policy ¶ 4(a)(i). See Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the PORNHUB mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Khanh Pham Minh” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website which is a website that purports to allow visitors to download videos hosted on Complainant’s Pornhub site to the user’s device. This action is in breach of Complainant’s terms of service and may facilitate copyright infringement. The use of a domain name containing the PORNHUB Mark to resolve to a website that, for commercial gain, assists and encourages individuals to breach Complainant’s terms of service and facilitate copyright infringement is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also Snap Inc. v. Michael Smith, FA 1894441 (Forum May 27, 2020) (finding respondent’s use of <baesnaps.com> to resolve to an adult oriented website cannot constitute a bona fide use of the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii)
The Panel finds on the balance of probabilities that, at the date of registration of the Domain Name, January 1, 2020, Respondent had actual knowledge of Complainant’s PORNHUB mark as the Respondent’s Website makes references to Complainant’s services (and includes a screenshot of Complainant’s website). Indeed its purported business model relies on the exploitation of Complainant’s Pornhub service. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s PORNHUB Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website linking allowing downloads from Complainant’s website which is in breach of Complainant’s terms of service and potentially facilitates copyright infringement. Use of a disputed domain name to encourage and assist users in breaching a targeted website’s terms of service may be evidence of bad faith per Policy ¶ 4(a)(iii). See Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith).
The Panel finds 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 <pornhubdownloader.net> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 31, 2021
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