Licensing IP International S.à.r.l. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2201001980382
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubdeutsch.com>, registered with Media Elite Holdings Limited.
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 January 13, 2022; the Forum received payment on January 13, 2022.
On January 17, 2022, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <pornhubdeutsch.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 January 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2022 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@pornhubdeutsch.com. Also on January 18, 2022, 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 February 14, 2022, 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) Complainant, Licensing IP International S.à.r.l., operates within the online adult entertainment market. Complainant maintains registration in its PORNHUB mark with multiple authorities including authorities in Canada, European Union, and United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 85388929, registered on October 9, 2012). The disputed domain name is identical or confusingly similar to Complainant’s PORNHUB mark because it wholly incorporates Complainant’s PORNHUB mark while adding the generic or descriptive term “deutsch” and the “.com” generic top-level domain (“gTLD”) to form a domain name.
ii) Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s PORNHUB mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain name to host pay-per-click hyperlinks.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent makes a general offer to sell the domain name. Respondent disrupts Complainant’s business as an attraction for commercial gain by hosting pay-per-click hyperlinks.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on July 8, 2016.
2. Complainant maintains registration in its PORNHUB mark with multiple authorities including authorities in Canada, European Union, and United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 85388929, registered on October 9, 2012).
3. The disputed domain name’s webpage shows that the domain name is being offered for sale for $500.
4. The disputed domain name’s resolving website shows links that appear to be related to content on Complainant’s own 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 PORNHUB mark through its registration with multiple authorities. Registration of a mark with multiple authorities is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”) (e.g., Reg. No. 85388929, registered on October 9, 2012). Complainant provides copies of its records with multiple authorities including Canada, European Union, and the USPTO. Therefore, the Panel finds that Complainant has established rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues that the <pornhubdeutsch.com> domain name is identical or confusingly similar to Complainant’s PORNHUB mark because it wholly incorporates Complainant’s mark while adding the generic or descriptive term “deutsch” and the “.com” gTLD to form a domain name. A domain name may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of a gTLD and generic or descriptive terms. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds that the disputed domain name is confusingly similar under 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 argues Respondent does not have any rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s PORNHUB mark. Where a Respondent does not provide evidence to the contrary, a respondent may be found to not be commonly known by a domain name, under Policy ¶ 4(c)(ii), where the identifying WHOIS information is unrelated to a domain name and where a respondent is not authorized to use a complainant’s mark. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information lists the registrant as “Domain Administrator / Fundacion Privacy Services LTD”. Complainant asserts that it has never requested, allowed, or authorized Respondent to use Complainant’s PORNHUB mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain name to host pay-per-click hyperlinks. Use of a domain name to host pay-per-click hyperlinks may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides a screenshot of the resolving website which shows links that appear to be related to content that users would expect to find on Complainant’s own website. Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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.
Complainant argues Respondent registered and uses the disputed domain name in bad faith because Respondent makes a general offer to sell the domain name. A general offer of sale of a domain name may be indicative of bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). Complainant provides screenshots of the webpage which shows that the domain name is being offered for sale for $500. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant argues Respondent registered and uses the disputed domain name in bad faith because Respondent operates a pay-per-click website featuring links related to Complainant. A respondent may be found to have registered and use a domain name in bad faith, under Policy ¶¶ 4(b)(iii) and (iv), where a respondent operates a website hosting pay-per-click hyperlinks. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The disputed domain name’s resolving website features links that advertise content that users would find on Complainant’s own website. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhubdeutsch.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 21, 2022
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