Licensing IP International S.à.r.l. v. Domain Admin / Global Access
Claim Number: FA2206002000178
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Domain Admin / Global Access (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubs.com>, registered with Sea Wasp, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2022; the Forum received payment on June 14, 2022.
On June 15, 2022, Sea Wasp, LLC confirmed by e-mail to the Forum that the <pornhubs.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, 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 June 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@pornhubs.com. Also on June 22, 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.
On July 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in the PORNHUB mark and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant does business in the online adult entertainment market by reference, inter alia, to the PORNHUB trademark which is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,220,491 registered on October 9, 2012;
2. the disputed domain name was registered on February 21, 2006 and its use is described later;
3. the domain name is for sale; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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 based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Proof of registration of the trademark with a national trademark authority is adequate proof of trademark rights. Here Complainant provides evidence of its USPTO registration for PORNHUB and so the Panel finds that Complainant has trademark rights.
For the purposes of comparison, the gTLD “.com” can be disregarded. The domain name is a trivial misspelling of the trademark. The compared terms are almost identical, visually, phonetically and conceptually, and the Panel finds the domain name to be confusingly similar to the trademark (see, for example, PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) holding <pathadvantages.com> confusingly similar to the PATHADVANTAGE trademark because the domain name merely added the letter ‘s’ to the complainant’s mark; Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”)).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Without in any way detracting from that finding, the Panel notes that the domain name was registered before Complainant’s USPTO trademark registration or any other of its trademark registrations put into evidence, and before Complainant’s unregistered rights began to accrue (by its own evidence, 2011). However, the relative timing of those registrations has long been regarded by UDRP panelists as pertinent, not to paragraph 4(a)(i), but to the other limbs of the Policy. Accordingly, this matter is considered below.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information shielded the domain name holder but in consequence of these proceedings the name of the underlying registrant (Respondent) was disclosed. Neither provides any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The disputed domain name is currently for sale and does not resolve to an active website. In the past it has, amongst other things, redirected Internet users to Complainant’s website. Such use does not constitute a legitimate interest or give rights and the Panel finds that Complainant has made a prima facie case (see, for example, Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”)).
The Panel finds that the onus shifts to Respondent to establish a legitimate interest in the domain name. Albeit that there is no Response a question arises as to whether Respondent may have rights or a legitimate interest in the domain name since it was created in 2006, whereas the earliest of Complainant’s registrations dates from 2012. There is no need to determine Complainant’s unregistered trademark claim since it dates from no earlier than 2011.
The Complaint anticipates this issue, submitting (correctly) that “the Panel should not consider [the domain name’s] creation date, but rather the date the Respondent itself actually acquired it”. Further, it states that:
“[i]n cases where the domain name registration is masked by a privacy or proxy service and the complainant credibly alleges that a relevant change in registration has occurred, it would be incumbent on the respondent to provide satisfactory evidence of an unbroken chain of registration … In the present case, the Panel should not consider the current creation date but rather after May 2018…”
The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory (see, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). The evidence accompanying the Complaint supports the assertions that by May 2018 the disputed domain name had been acquired by a corporate entity other than the original registrant and that the questions of rights or legitimate interests should be measured against the use from that time forward. Not only had Complainant established trademarks rights (and on the evidence, a public reputation) by that time but the evidence makes it plain that Respondent had targeted Complainant’s business by way of the redirection.
The Panel finds on the balance of the evidence that Complainant has made a prima facie case which has not been met by either a Response or by circumstantial evidence. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
On the evidence, the Panel finds bad faith under subparagraph (i) above. The evidence is that the domain name is for sale for USD 9,995. In terms of the Policy, the panel finds that Respondent acquired the domain name primarily for the purpose of selling it to Complainant for consideration in excess of Respondent’s out-of-pocket costs related to the domain name. Albeit that subparagraph (i) uses the phrase “documented out-of-pocket costs” and there is, in this case, no documentary proof of those costs, the Panel observes that it is essentially impossible for Complainant to provide such proof and the Panel makes the commonsense inference that USD 9,995 exceeds the acquisitional cost.
The Panel finds that Complainant has satisfied the third and final aspect of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhubs.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 27, 2022
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