Licensing IP International S.à.r.l. v. DVLPMNT MARKETING, INC.
Claim Number: FA1912001873823
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is DVLPMNT MARKETING, INC. (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhu.com>, registered with DNC Holdings, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.
On December 6, 2019, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <pornhu.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2019 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@pornhu.com. Also on December 6, 2019, 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 December 31, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is the operator of numerous adult oriented websites. In respect of Complainant’s flagship brand PORNHUB, in the year 2018 alone (i) 33.5 billion visits were made to the <pornhub.com> website (which is 5 billion more than the previous year); (ii) the average of daily visitors was 92 million visitors (now exceeding 100 million visitors daily); (iii) more than 30 billion searches were conducted by users worldwide on a daily basis (which correspond to an average of over 960 searches per second and over 200,000 videos watched every minute). Complainant has rights in the PORNHUB mark through its registration of the mark in the United States in 2012.
Complainant alleges that the disputed domain name is confusingly similar to its mark as it merely removes the letter “b” and adds the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant to offer competing services.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name to the highest bidder. Next, Respondent has a pattern of bad faith registrations that have resulted in transfer. Additionally, Respondent is attempting to disrupt Complainant’s business and attract Internet user for commercial gain. Furthermore, Respondent is typosquatting. Finally, Respondent had actual or constructive knowledge of Complainant’s right in the PORNHUB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark PORHUB and uses it to market adult entertainment services.
Complainant’s rights in its mark date back to 2012.
Respondent registered the disputed domain name after that date.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website attempts to pass off as Complainant and offers competing services.
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”).
The disputed domain name is a misspelling of Complainant’s mark, merely removing the letter “b” and adding the “.com” gTLD. Slight misspellings, such as the removal of a single letter, may not distinguish a disputed domain name form a complainant’s mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”). Therefore, the Panel finds that the <pornhu.com> domain name is confusingly similar to Complainant’s PORNHUB mark under Policy ¶ 4(a)(i).
Respondent has not been licensed or authorized by Complainant to use its mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed 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 <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS of record identifies Respondent as “DVLPMNT MARKETING, INC.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to attempt to pass off as Complainant and offer competing services. Specifically, Complainant provided screenshots of the resolving website which displays adult content an Internet user may presume is Complainant’s. Use of a disputed domain name to deceive Internet users into believing an affiliation exists between the respondent and a complainant 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 Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent fails to use the disputed 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). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
According to 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), in general, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
The earliest date that Complainant puts forward for its trademark rights is 2012. According to the WHOIS, the disputed domain name was registered in 2005.
According to 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.
Hence the Panel must determine whether or not the current registrant had registered the disputed domain name prior to Complainant acquiring its trademark rights.
Complainant alleges, and provides evidence to show, that Respondent registered the disputed domain name in 2018, it having been previously registered by unrelated parties.
Consequently, the Panel finds that Respondent did not merely renew a previous registration and it finds that Respondent’s registration is a new registration for the purposes of the instant proceedings. That registration took place after the Complainant acquired its trademark rights.
Therefore, the registration may have been made in bad faith in the sense of the Policy.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is attempting to disrupt Complainant’s business and attract Internet user for commercial gain. Registration and use of a disputed domain name that deceives Internets users for commercial gain and to disrupt a complainant’s business can be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe the links on it are connected to or approved by Complainant as they offer competing products under a sign confusingly similar to Complainant’s mark as well as containing links related to Complainant itself. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site or products on it likely to disrupt the business of Complainant.”); see also Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).
Further, Complainant provides evidence showing that Respondent has a pattern of numerous bad faith registrations that have resulted in transfer. This may establish a pattern of bad faith registrations that may be evidence that the currently disputed domain name was registered in bad faith under Policy ¶4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”); see also BASF S.A. v. Domain Administrator, Dvlpmnt Marketing, Inc., D2018-2268 (WIPO Dec. 20, 2019) (finding that “Respondent was the respondent in numerous prior cases, where panels ordered the transfer of the corresponding domain names to the complainants” and listing eleven such cases). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(ii).
Finally, Respondent is typosquatting: the disputed domain name consists of Complainant’s mark minus the letter “b”. The mere introduction a common spelling mistakes into an otherwise recognizable mark may be evidence of bad faith registration under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith on this ground also.
Complainant alleges that Respondent offered the disputed domain name for sale for a price in excess of out-of-pocket costs. While Complainant does provide evidence that the disputed domain name was offered for sale, it does not provide evidence regarding the price at which it was offered. Therefore, the Panel will not discuss this allegation any further.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhu.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 31, 2019
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