Licensing IP International S.ŕ.r.l. v. Sagiri Nagataki
Claim Number: FA2109001966521
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Sagiri Nagataki (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xnxxpornhub.biz>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2021; the Forum received payment on September 27, 2021.
On September 29, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <xnxxpornhub.biz> 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 October 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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 October 1, 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 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
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”).
Respondent’s <xnxxpornhub.biz> domain name is confusingly similar to Complainant’s PORNHUB mark since incorporates the entirety of the mark, simply adding the term “xnxx” and the “.biz” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <xnxxpornhub.biz> domain name because Complainant is not commonly known by the at-issue domain name. Additionally, Respondent fails to use the 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 to provide content and services of the same nature as Complainant.
Respondent registered and uses the <xnxxpornhub.biz> domain name in bad faith. Respondent disrupts Complainant’s business for its own commercial gain by diverting Internet traffic to a competing webpage. Additionally, Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark when it registered the disputed domain name.
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in PORNHUB.
Respondent is not affiliated with Complainant and is not authorized to use the PORNHUB mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in PORNHUB.
Respondent uses the at-issue domain name to address a website providing content and services of the same nature as Complainant’s offering.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its PORNHUB trademark with the USPTO, as well as the mark’s registration with any of multiple national registrations worldwide demonstrates Complainant’s rights in a mark under 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)).
Respondent’s <xnxxpornhub.biz> domain name contains Complainant’s PORNHUB trademark prefixed with the term “xnxx” (Complainant asserts that “xnxx” is a third party’s brand name). The domain name concludes with the generic top-level domain name “.biz.” The slight differences between Complainant’s trademark and Respondent’s domain name do not distinguish the at-issue domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <xnxxpornhub.biz> domain name is confusingly similar to Complainant’s PORNHUB trademark. 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).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of <xnxxpornhub.biz>.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Sagiri Nagataki” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <xnxxpornhub.biz> domain name. The Panel therefore concludes that Respondent is not commonly known by the <xnxxpornhub.biz> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the <xnxxpornhub.biz> domain name to direct internet users seeking Complainant to a website address by <xnxxpornhub.biz>. That website promotes content and services that compete with Complainant’s offering under its PORNHUB trademark. Respondent likely profits from links and/or advertisements displayed on its <xnxxpornhub.biz> website. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(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); see also, Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the at-issue domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <xnxxpornhub.biz> domain name was registered and used in bad faith. As discussed below, bad faith circumstances are present which persuade the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s uses its confusingly similar at-issue domain name to address a website offering content and services in competition with those services offered by Complainant under Complainant’s PORNHUB trademark. Respondent’s use of the confusingly similar domain name to create the false impression of the domain name and its website’s affiliation with Complainant is disruptive to Complainant’s business and shows Respondent’s bad faith registration and use of <xnxxpornhub.biz> per Policy ¶¶ 4(b)(iii) and (iv). See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also, OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the at-issue 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)); see also, 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.”).
Additionally, Respondent registered <xnxxpornhub.biz> knowing that Complainant had trademark rights in the PORNHUB mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark as well as from Respondent’s use of <xnxxpornhub.biz> as discussed elsewhere herein. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <xnxxpornhub.biz> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xnxxpornhub.biz> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 27, 2021
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