Licensing IP International S.à.r.l. v. Nanci Nette
Claim Number: FA2211002021617
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Nanci Nette (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubdownload.website>, registered with NameCheap, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to Forum electronically on November 24, 2022; Forum received payment on November 24, 2022.
On November 25, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <pornhubdownload.website> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 December 5, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@pornhubdownload.website. Also on December 5, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 registered the PORNHUB mark with multiple international trademark agencies. Respondent’s <pornhubdownload.website> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and adds the generic or descriptive term “download” and the “.website” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <pornhubdownload.website> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PORNHUB mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to allow Internet users to download Complainant’s content against Complainant’s policies.
Respondent registered and uses the <pornhubdownload.website> domain name in bad faith. Respondent diverts Internet users otherwise seeking Complainant to pay-per-click links. Respondent uses the disputed domain name to allow Internet users to download Complainant’s content against Complainant’s policies. Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant registered the PORNHUB mark with multiple international trademark agencies. Respondent’s <pornhubdownload.website> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <pornhubdownload.website> domain name on April 1, 2021.
Respondent has no rights or legitimate interests in the <pornhubdownload.website> domain name. Respondent uses the disputed domain name to allow Internet users to download Complainant’s content against Complainant’s policies.
Respondent registered and uses the <pornhubdownload.website> 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 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 rights in the PORNHUB mark under Policy ¶ 4(a)(i) based upon registration with multiple international trademark agencies. Registration of a mark with multiple governmental agencies sufficiently establishes a registrant’s rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s <pornhubdownload.website> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and adds the generic or descriptive term “download” and the “.website” gTLD.
Respondent has no rights or legitimate interests in the <pornhubdownload.website> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the PORNHUB mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See 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). A privacy service was used by Respondent but was lifted as a result of the commencement of this proceeding. As a result, the WHOIS information of record identifies Respondent as “Nanci Nette.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, Respondent is not commonly known by the <pornhubdownload.website> domain name under Policy ¶ 4(c)(ii).
Respondent fails to use the disputed domain name in connection with a bona fide offer of goods and services or for a noncommercial or otherwise legitimate fair use. Instead, Respondent enables Internet users to download Complainant’s content against Complainant’s policies. Use of a disputed domain name to make available unauthorized access to a complainant’s goods does not represent a bona fide offer of goods and services or for a noncommercial or otherwise legitimate 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.”). Here, Complainant provides screenshot evidence of the resolving website for the disputed domain name, which purports to make available Complainant’s content for download.
Respondent registered and uses the <pornhubdownload.website> domain name in bad faith under Policy ¶ 4(b)(iii) because the resolving webpage displays links to Complainant’s competitors. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Here, Complainant provides screenshot evidence of Respondent’s use of the disputed domain name to host competing hyperlinks.
Respondent commercially benefits by offering advertisements on the resolving webpage for the <pornhubdownload.website> domain name. Commercially benefitting by offering advertisements can show bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum April 7, 2015) (Respondent’s inclusion of advertisements likely getting click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv)). Here, Complainant provides screenshot evidence of Respondent’s use of the disputed domain name to host competing pay-per-click links.
Further, Respondent uses the disputed domain to allow Internet users to download Complainant’s materials against Complainant’s policies. Using a domain name to make available unauthorized access to a complainant’s goods shows bad faith. See Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (Forum Apr. 30, 2017) (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). Here, Complainant provides screenshot evidence of the resolving website for the disputed domain name, which purports to make available Complainant’s content for download.
Next, Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark prior to registration of the disputed domain name. Actual knowledge is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhubdownload.website> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 7, 2023
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