14 years of PPC earnings ended with a #UDRP :DomainGang

Licensing IP International S.à.r.l. v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd

Claim Number: FA2107001954060

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

PANEL

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.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 6, 2021; the Forum received payment on July 6, 2021.

On July 7, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2021 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@pomhub.com. Also on July 12, 2021, 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 August 4, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant operates numerous websites featuring adult-oriented content. Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012).

2. Respondent’s [i] domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark by replacing the letters “rn” with the letter “m.”

3. Respondents has no rights or legitimate interests in the domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark.

4. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely diverting Internet users seeking Complainant to an unaffiliated and competing website.

5. Respondent registered and uses the domain name in bad faith. Specifically, Respondent is attempting to sell the domain name in excess of out-of-pocket costs.

6. Also, Respondent has an established pattern of bad faith registrations due to an extensive history of prior UDRP cases against Respondent that resulted in the transfer of the domain names in question.

7. Respondent is attempting to disrupt Complainant’s business by diverting Internet users to third party websites that may present a false impression of affiliation with Complainant.

8. Furthermore, Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to competing websites.

9. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the PORNHUB mark at the time of registration of the domain name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds trademark rights for the PORNHUB mark. Respondent’s domain name is confusingly similar to Complainant’s PORNHUB mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the domain name and that Respondent registered and uses the domain name in bad faith.

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.”

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

Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 9, 2012). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).

Complainant argues Respondent’s domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark by replacing the letters “rn” with the letter “m.” Respondent also includes the “.com” generic top-level domain (gTLD). Introducing spelling mistakes of a mark into a domain name by replacing a letter or letters in the mark with another letter and adding a gTLD does not sufficiently distinguish the domain name from a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). Therefore, the Panel holds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.

Complainant argues that Respondent has no rights or legitimate interests in the domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS of record identifies the Respondent as “Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd” and no information in the record indicates that Respondent is authorized to use Complainant’s mark or is commonly known by the domain name. Therefore, the Panel holds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).

Next, Complainant argues that Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the domain name to divert Internet users to a nonaffiliated and competing website. Using a domain name incorporating the mark of another to divert Internet users seeking a complainant’s goods or services to a competing website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The record contains screenshots of the domain name’s resolving webpage, which has changed over time but generally features competing content or advertisements. Therefore, the Panel holds that Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant argues Respondent registered and used the domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name in excess of out-of-pocket costs. Offering a domain name incorporating the mark of another for sale in excess of the costs of registration may be evidence of bad faith under Policy ¶ 4(b)(i). See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(i).”). Complainant provides screenshots showing the domain name for sale for $25,899. Therefore, the Panel holds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(i).

Complainant contends Respondent has an established pattern of bad faith registrations due to an extensive history of prior UDRP cases against Respondent that resulted in the transfer of the domain names in question. A pattern of bad faith may be established when a respondent has been party to prior UDRP cases that resulted in the transfer of the at-issue domain name. See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(ii)”). Complainant provides a list of prior cases that involved Respondent, all of which resulted in the transfer of the domain name. Therefore, the Panel holds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(ii).

Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registering the domain name. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations and worldwide fame, as well as the attempt by Respondent to create a domain name virtually identical to Complainant’s mark. Thus, the Panel holds that Respondent did have actual knowledge of Complainant’s right in its PORNHUB mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).

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 domain name be TRANSFERRED from Respondent to Complainant.

Bruce E. Meyerson, Panelist

Dated: August 10, 2021