DECISION
Licensing IP International S.à.r.l. v. Andriy Kravchenko / Christakis Konnaris / Andreas Ellinas
Claim Number: FA2502002142821
PARTIES
Complainant is Licensing IP International S.à.r.l. ("Complainant"), represented by Jules Gaudin of ROBIC, LLP, Canada. Respondent is Andriy Kravchenko / Christakis Konnaris / Andreas Ellinas ("Respondent"), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pornhubzoo.com>, <zoo-pornhub.com>, <youporn-zoo.com>, <zoo-youporn.com>, <redtube-zoo.com>, <zoo-redtube.com>, <zoothumbzilla.com>, <thumbzillazoo.com>, <zoo-tube8.com>, <tube8zoo.com>, <xtubezoo.com>, <zooxtube.com>, <xxxtubezoo.com>, <zooredtube.com> and <zooyouporn.com> ("the Domain Names"), registered with Namesilo, Llc and Cloudflare, Inc.
PANEL
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 28, 2025. Forum received payment on February 28, 2025.
On March 2, 3 and 10, 2025, Namesilo, Llc and Cloudflare, Inc. confirmed by e-mail to Forum that the Domain Names are registered with Namesilo, Llc and Cloudflare, Inc. and that Respondent is the current registrant of the names. Namesilo, Llc and Cloudflare, Inc. have verified that Respondent is bound by the Namesilo, Llc and Cloudflare, Inc. registration agreements 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 March 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@pornhubzoo.com, postmaster@zoo-pornhub.com, postmaster@youporn-zoo.com, postmaster@zoo-youporn.com, postmaster@redtube-zoo.com, postmaster@zoo-redtube.com, postmaster@zoothumbzilla.com, postmaster@thumbzillazoo.com, postmaster@zoo-tube8.com, postmaster@tube8zoo.com, postmaster@xtubezoo.com, postmaster@zooxtube.com, postmaster@xxxtubezoo.com, postmaster@zooredtube.com, and postmaster@zooyouporn.com. Also on March 17, 2025, 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 registrations as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder". Paragraph 1(d) of the Forum's Supplemental Rules defines "The Holder of a Domain Name Registration" as "the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement" and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant has shown that the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases.
Hence this decision refers to Andriy Kravchenko / Christakis Konnaris / Andreas Ellinas as "Respondent".
PARTIES' CONTENTIONS
A. Complainant
Complainant, Licensing IP International S.à.r.l., is a global media and adult entertainment company, with rights in the registered marks PORNHUB, YOUPORN, REDTUBE, THUMBZILLA, TUBE8 and XTUBE, including with the United States Patent and Trademark Office ("USPTO") and the European Intellectual Property Office ("EUIPO").
Each of the Domain Names is identical or confusingly similar to a trademark in which Complainant has rights.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not a licensee of Complainant and has never been authorized to register or hold the Domain Names, nor to use any of Complainant's marks. There is no evidence to suggest that Respondent is commonly known by any of the Domain Names. Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent registered the Domain Names and misuses them to parasitize the value of the goodwill attaching to Complainant's marks through illegitimate domain monetization means, including web traffic diversion and advertisement in association with websites that usurp Complainant's marks. One of the domain names resolves to Complainant's website, others resolve to websites featuring animal porn videos, while others are inactive.
Respondent registered the Domain Names in bad faith with actual knowledge of Complainant's rights in its famous PORNHUB, YOUPORN, REDTUBE, THUMBZILLA, TUBE8 and XTUBE marks and uses them with bad faith intent to unfairly capitalize on Complainant's trademark rights and to create confusion with Complainant's marks for Respondent's commercial gain. Each of the circumstances under Policy ¶ 4(b) is present here.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
DISCUSSION
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."
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii)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 as 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').
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the PORNHUB, YOUPORN, REDTUBE, THUMBZILLA, TUBE8 and XTUBE marks through numerous registrations, including with the USPTO (e.g., PORNHUB, Reg. No. 4,220,491 registered on October 9, 2012; YOUPORN, Reg. No. 3,534,702 registered on November 18, 2008; REDTUBE, Reg. No. 3,843,119 registered on August 31, 2010; THUMBZILLA, Reg. No. 2,494,090 registered on October 2, 2001 and TUBE8, Reg. No. 4,220,492 registered on October 9, 2012) and with the EUIPO (e.g., XTUBE, Reg. No. 010167047 registered on January 10, 2012).
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0 "), section 1.7.
The Panel finds each of Respondent's <pornhubzoo.com>, <zoo-pornhub.com>, <youporn-zoo.com>, <zoo-youporn.com>, <redtube-zoo.com>, <zoo-redtube.com>, <zoothumbzilla.com>, <thumbzillazoo.com>, <zoo-tube8.com>, <tube8zoo.com>, <xtubezoo.com>, <zooxtube.com>, <xxxtubezoo.com>, <zooredtube.com>, and <zooyouporn.com> Domain Names to be confusingly similar to Complainant's corresponding PORNHUB, YOUPORN, REDTUBE, THUMBZILLA, TUBE8 and XTUBE marks, only differing by the addition in each case of the word "zoo"; in some cases a hyphen; and, in the case of <xxxtubezoo.com>, the letters "xx". None of these differences is sufficient to distinguish any of the Domain Names from Complainant's corresponding mark. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the Domain Names for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the Domain Names; or
(ii) Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
It is unnecessary to consider Policy ¶ 4(b)(i)-(iii) since the circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's famous PORNHUB, YOUPORN, REDTUBE, THUMBZILLA, TUBE8 and XTUBE marks when Respondent registered the Domain Names and that Respondent has used the <zoo-pornhub.com>, <zoo-tube8.com>, <tube8zoo.com>, <xtubezoo.com>, <xxxtubezoo.com>, <zooredtube.com> and <zooyouporn.com> domain names intentionally to attempt to attract, for commercial gain, Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant's marks as to the source of Respondent's websites and of the services promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
As to the <pornhubzoo.com>, <youporn-zoo.com>, <zoo-youporn.com>, <redtube-zoo.com>, <zoo-redtube.com>, <zoothumbzilla.com>, <thumbzillazoo.com> and <zooxtube.com> domain names, which do not resolve to active websites, the Panel finds that they were clearly registered in bad faith since they were registered on the same day as the <zoo-pornhub.com>, <zoo-tube8.com>, <tube8zoo.com> and <xtubezoo.com> domain names. As in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, given the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, the Panel finds there is no conceivable active use that could be made of those domain names that would not amount to an infringement of Complainant's rights in its marks. Accordingly, the Panel finds that Respondent's hitherto passive use of those domain names demonstrates registration and use in bad faith.
Complainant has established this element.
DECISION
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 <pornhubzoo.com>, <zoo-pornhub.com>, <youporn-zoo.com>, <zoo-youporn.com>, <redtube-zoo.com>, <zoo-redtube.com>, <zoothumbzilla.com>, <thumbzillazoo.com>, <zoo-tube8.com>, <tube8zoo.com>, <xtubezoo.com>, <zooxtube.com>, <xxxtubezoo.com>, <zooredtube.com> and <zooyouporn.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 10, 2025
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