DECISION

 

Licensing IP International S.à.r.l. v. Yoshida Hideyuki

Claim Number: FA2506002163158

 

PARTIES

Complainant is Licensing IP International S.à.r.l. ("Complainant"), represented by Jules Gaudin of ROBIC LLP, Canada. Respondent is Yoshida Hideyuki ("Respondent"), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <phpremium.com> ('the Domain Name'), registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 27, 2025; Forum received payment on June 27, 2025.

 

On July 1, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <phpremium.com> 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 July 7, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2025 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@phpremium.com. Also on July 7, 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 registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On July 29, 2025 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the trade mark PORNHUB registered, inter alia, in the EU for online entertainment services since 2012 and the trade mark PORNHUB PREMIUM registered, inter alia, in the EU for adult entertainment services and goods including clothing since 2017. Its PORNHUB name is often contracted to PH by consumers, third parties and also by the Complainant itself when providing discrete delivery of its products and providing entries for customer's credit card statements. The Complainant's business is successful and its trade marks and the PH abbreviation of its marks are well known amongst customers for adult entertainment services and products and in this field.

 

The Domain Name registered in 2024 is confusingly similar to the Complainant's mark, abbreviating it to PH PREMIUM and adding the gTLD .com neither of which distinguish the Domain Name from the Complainant's mark.

 

The Respondent is not commonly known by the Domain Name and has not been authorised by the Complainant to use its mark.

 

The Domain Name which carries a high risk of affiliation with the Complainant resolves to a website offering the Complainant's copyright content including material usually only available by paid subscription without authorisation as well as competing adult entertainment services. The site also links to a third-party adult chat site for affiliate commission revenue and is configured to serve adware through third party ad delivery domains associated with malware. These uses of the Domain Name are not legitimate or bona fide. They are registration and use in bad faith confusing Internet users for commercial gain and disrupting the business of a competitor with actual knowledge of the rights of the Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark PORNHUB registered, inter alia, in the EU for online entertainment services since 2012 and the trade mark PORNHUB PREMIUM registered, inter alia, in the EU for adult entertainment services and goods including clothing since 2017. The Complainant's marks are well known in its field. Its PORNHUB name is contracted to PH by the Complainant when providing discrete delivery of its products or entries for customer's credit card statements.

 

The Domain Name registered in 2024 resolves to a website offering the Complainant's copyright content including material usually only available by paid subscription without authorisation as well as competing adult entertainment services. The site also links to a third party adult chat site for affiliate commission revenue and is configured to serve adware through third party ad delivery domains associated with malware.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Domain Name consists of PH PREMIUM (an abbreviation of the Complainant's prior registered mark PORNHUB PREMIUM and reflecting the abbreviation of the Complainant's PORNHUB mark to PH on its parcels for discrete delivery and on customer's credit card statements) and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent uses a recognizable abbreviation of a complainant's mark. See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i)). The Panel agrees that the abbreviation of the Complainant's PORNHUB PREMIUM mark to PH PREMIUM does not prevent confusing similarity between the Domain Name and the Complainant's PH PREMIUM mark which is still recognizable in the Domain Name.

 

The gTLD .com does not serve to distinguish a domain name from a complainant's mark. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant's PORNHUB PREMIUM mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of an abbreviation of its PORNHUB PREMIUM mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial and so is not legitimate non-commercial fair use.

 

The web site attached to the Domain Name offered competing services to the Complainant and links to a competing adult entertainment site without making it clear that there was no connection with the Complainant. The Panel finds this use is confusing. As such it did not amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin, FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services).  

 

The website also offered the Complainant's copyright content without authorization being copyright infringement which also demonstrates bad faith. See Google Inc. v. Domain Admin, FA 1605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant's trademark indicates Respondent's bad faith).

 

The Domain Name was also configured to serve adware through third-party services known to be associated with the distribution of malware. Use to offer suspected malware is also not a bona fide offering of goods or services or a legitimate non-commercial or fair use. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) ("Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).").

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the panelist the use made of the Domain Name in relation to the Respondent's site is confusing and disruptive in that visitors to the site might reasonably have believed it was connected to or approved by the Complainant as it used the confusingly similar Domain Name which carries a significant risk of affiliation with the Complainant to compete with the Complainant.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site under Policy 4(b)(iv) likely to disrupt the business of the Complainant under Policy 4(b)(iii). See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).

 

The Respondent's site also bears the Complainant's copyright material without authorisation being copyright infringement which also demonstrates bad faith. See Google Inc. v. Domain Admin, FA 1605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant's trademark indicates Respondent's bad faith).

 

Further, the site attached to the Domain Name appears to be configured to offer adware using third-party services known to distribute malware. Offering malware via a domain name containing a complainant's mark is also bad faith under the Policy. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum June 9, 2015) (Respondent's use of the contested domain names to distribute malware and other malicious downloads further illustrated its bad faith).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paragraphs 4(b)(iii) and 4(b)(iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <phpremium.com> Domain Name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: July 29, 2025