Licensing IP International S.à.r.l. v. Alexey Skrypnik
Claim Number: FA2111001973011
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Alexey Skrypnik (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <downloadfrompornhub.com> and <pornhub-downloader.com>, registered with Name.com, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2021; the Forum received payment on November 11, 2021.
On November 15, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <downloadfrompornhub.com> and <pornhub-downloader.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 November 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@downloadfrompornhub.com, postmaster@pornhub-downloader.com.
Also on November 18, 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 December 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain names <downloadfrompornhub.com> and <pornhub-downloader.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the PORNHUB mark established through its ownership of the portfolio of trademark and service mark registrations described below and extensive use of mark in providing goods and services on its website at <www.pornhub.com>.
Complainant claims that in the year 2019 alone 42 billion visits were made to the <www.pornhub.com> website, which was 8.5 billion more than the previous year); that the average number of daily visitors was 115 million, which was 23 million more than the previous year, equivalent to approximately 80,000 visits and 220,000 video views every minute. Complainant adds that it employs a workforce of more than 1,000 full-time employees, with 6 offices worldwide.
Complainant alleges that the disputed domain names are each confusingly similar to its PORNHUB mark which it argues is their dominant feature.
Complainant adds that it’s PORNHUB mark is clearly recognizable in the disputed domain name.
Complainant argues that the addition of the generic or descriptive terms “download from” and “downloader” do not reduce the confusing similarity of the disputed domain names with the PORNHUB mark and, if anything, reinforces it, because these terms would be considered merely as a reference to downloads available Complainant’s website at <www.pornhub.com>.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names and submits that while the overall burden of proof in proceedings under the Policy rests on the complainants, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name in suit may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating such rights or legitimate interests. If a respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
Complainant argues that Respondent is not commonly known by the disputed domain names as shown by the registration details on the disclosed WhoIs.
Furthermore, the website to which the disputed domain names resolve have no identifying information about Respondent.
Complainant asserts that it never requested, allowed or authorized Respondent to register or hold the disputed domain names, or to use Complainant’s distinctive and well-known trademarks, tradenames, domain names, any other identification element relating to Complainant, or imitation thereof.
Complainant contends that where a domain name consists of a trademark plus an additional term at the second or top-level, panels established under the Policy have largely held that such composition cannot constitute fair use, and argues that in the present case, the same reasoning holds true for the additional terms “download from” and “downloader”. Complainant adds that Respondent’s use of the disputed domain name cannot be considered “fair” as it falsely suggests affiliation with Complainant as the trademark owner.
Complainant further argues that Respondent cannot show that he is using or has made demonstrable preparations to use, the disputed domain names, or a name corresponding to the disputed domain names, in connection with a bona fide offering of goods or services before any notice to him of the dispute.
Referring to evidence adduced in the annexes to the Complaint, Complainant submits that the disputed domain names are demonstrably being used to redirect Internet users to a website providing, or leading to, content and services similar or identical to, and competing with, content and services provided or advertised via Complainant’s <www.pornhub.com> website.
The annexes to the Complaint show copies of the HTML source code for the website to which the disputed domain names resolve. Complainant submits that most of the hyperlinks in the code are misleading, because they do not lead to subpages related to the hyperlinked words on Respondent’s website, but rather are programmed to lead visitors to a different camming and cybersex website unrelated to Complainant’s marks, featuring nudity and sexual activities.
Complainant has also provided a RedirectCheck report and dated screenshots of the website to which the disputed domain names resolve and the linked, unrelated website to support this allegation.
Complainant adds that Respondent is using the disputed domain names to engage in illegitimate domain monetization by means that include web traffic diversion and advertisement in association with the website to which the disputed domain names resolve.
Complainant further refers to the screen captures of the website to which the disputed domain names resolve and of its website at <www.pornhub.com> and argues that Respondent’s website imitates the color scheme of Complainant’s website. Complainant contends that Respondent’s website is designed and operated primarily for the purposes of enabling Internet users to make unauthorized reproductions of copyrighted content accessible from Complainant’s website, with no other apparent uses or purposes than when it is used for such purposes.
Complainant argues that such use cannot be described as fair or legitimate.
Complainant then alleges that the disputed domain names were registered and are being used in bad faith. Complainant refers to traffic statistics and argues that the evidence shows that it’s PORNHUB mark has achieved a significant degree of public recognition in practically all parts of the world where high-speed Internet is available.
Complainant contends that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor.
Complainant argues that the website to which the disputed domain names resolve, acts as a means of circumventing the policies, practices and control preventing and prohibiting downloads from Complainant’s <www.pornhub.com> website by users pursuant to the Terms of Service, a copy of which is presented in an annex to the Complaint.
Complainant alleges that the evidence described above, shows that Respondent is using the disputed domain names to provide Internet users visiting his counterfeit website with the ability to bypass the policies, practices and controls that Complainant has put on its website at <www.pornhub.com>.
Complainant further argues that the disputed domain names are demonstrably being used to redirect Internet users to Respondent’s website with content and offering services similar or identical to, and competing with, content and services provided or advertised on Complainant’s <www.pornhub.com> website.
Complainant argues that potential consumers are likely to be confused into believing that Respondent’s website is somehow affiliated with, or sponsored by, Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established and maintains a website with adult content and provides related goods and services using the PORNHUB mark, for which it owns a large portfolio of trademark registrations earliest of which are
· European Trade Mark PORNHUB, registration number 010166973, registered on May 11, 2012, the services and classes 38,41,42;
· United States Registered Service Mark PORNHUB , registration number 85388929 , registered on the Principal Register on October 9, 2012, for services in international class 38; and
· United States Registered Trademark and Service Mark, PORNHUB (design with stylized characters) registration number 5156883, registered on the Principal Register on March 7, 2017 for goods and services in international classes 10. 25, 38, 41, and 42, which Complainant uses as a logo.
The disputed domain name <downloadfrompornhub.com> was registered on June 9, 2021 and the disputed domain name <pornhub-downloader.com> was registered on May 13, 2020, and each resolve to a website with adult content that contains further links to an unrelated website that also provides adult content.
There is no information available about Respondent except for that which is provided in the Amended Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for verification of the details of the registration of the disputed domain names in the course of this proceeding.
Respondent availed of a privacy service to conceal his identity on the published WHOIS for the disputed domain names, and his details were disclosed by the Registrar in response to said requests by the Forum.
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 has adduced convincing, uncontested evidence that it has rights in the PORNHUB mark established through its ownership of the portfolio of trademark and service mark registrations described above and its extensive use of the mark in providing goods and services on its website at <www.pornhub.com> which had 42 billion visits in 2019 alone.
The disputed domain name <downloadfrompornhub.com> consists of Complainant’s PORNHUB mark preceded by the words “download” and “from”.
The disputed domain name <pornhub-downloader.com>, consists of Complainant’s PORNHUB mark followed by a hyphen and the word “downloader”.
In each case Complainant’s PORNHUB mark is the dominant and only distinctive element. None of the elements “download”, “from” or “downloader” have any distinctive character. Also, in context, the generic Top-Level Domain (“gTLD”) <.com> extension has no distinguishing character in either of the disputed domain names.
This Panel finds therefore that each of the disputed domain names is confusingly similar to the PORNHUB mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an undisputed prima facie case that Respondent has no rights or legitimate interests in the disputed domain names arguing that
· Respondent is not commonly known by the disputed domain names as shown by the name used by Respondent when registering the disputed domain names;
· the website to which the disputed domain names resolve has no identifying information about Respondent;
· Complainant, as owner of the PORNHUB mark has never requested, allowed or authorized the Respondent to register or hold the disputed domain names, or to use Complainant’s PORNHUB mark, its tradenames, domain names, any other identification element relating to Complainant, or imitation thereof;
· Respondent cannot show that he is using or has made demonstrable preparations to use, the disputed domain names (or a name corresponding to the disputed domain names) in connection with a bona fide offering of goods or services before any notice to him of the dispute;
· the evidence adduced in the annexes to the Complaint, show that the disputed domain names are demonstrably being used to redirect Internet users to a website providing or leading to content and services similar or identical to, and competing with, the content and services provided or advertised via the <www.pornhub.com> website;
· the annexes also show HTML source code for the website to which the disputed domain names resolve is misleading, because the links do not lead to subpages related to the hyperlinked words on Respondent’s website, but are programmed to lead visitors to a camming and cybersex website that is unrelated to Complainant’s marks, featuring nudity and sexual activities and this allegation is supported by a RedirectCheck report and dated screenshots of the website to which the disputed domain names resolve and the linked, unrelated website;
· Respondent is using the disputed domain names to engage in illegitimate domain name monetization by means that including web traffic diversion and advertisement in association with the website to which the disputed domain names resolve;
· such use of the disputed domain names usurps Complainant's marks and imitates the color scheme of its website at <www.pornhub.com>, designed and operated primarily for the purposes of enabling Internet users to make unauthorized reproductions of copyrighted content accessible from Complainant’s website, with no other apparent uses or purposes than when it is used for such purposes;
· such use cannot be described as fair or legitimate as it falsely suggests affiliation with Complainant as the trademark owner.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue, the burden of production shifts to the respondent to prove the existence of such rights or interests.
Complainant has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The evidence shows that the PORNHUB mark has achieved a reputation with a high level of international recognition. It is a distinctive, coined term and it is most implausible that the disputed domain names were chosen and registered without knowledge of Complainant, its website and the fame of its PORNHUB mark.
It is clear therefore that the registrant, or registrants, registered the disputed domain names with Complainant’s mark in mind, seeing the opportunity to take predatory advantage of Complainant’s reputation and goodwill. The use to which the disputed domain names have been put to attract and divert Internet traffic to Respondent’s website supports this conclusion.
This Panel finds therefore that on the balance of probabilities, the disputed domain names were registered in bad faith.
Having considered the evidence, this Panel further finds that the evidence adduced in the annexes to the Complaint, show that the disputed domain names are being used in bad faith, to redirect Internet traffic in search of adult content to a website that is owned and maintained by Respondent, and furthermore the links on Respondent’s website lead Internet users to another website, also with adult content.
Respondent is therefore taking advantage of the reputation of the PORNHUB mark in the disputed domain names to mislead Internet users and monetize this activity.
This Panel finds therefore that on the balance of probabilities, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users and misdirect them to Respondent’s website, with links to another on-line location, by creating a likelihood of confusion with Complainant's PORNHUB mark as to the source, sponsorship, affiliation, or endorsement of the services provided by Respondent and the owner of the other online location.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <downloadfrompornhub.com> and <pornhub-downloader.com> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 15, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page