Licensing IP International S.à.r.l. v. Priit Eiber
Claim Number: FA2001001881317
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Priit Eiber (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <porhub.com>, 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.
Adam Taylor as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2020; the Forum received payment on January 30, 2020.
On January 31, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <porhub.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 February 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 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@porhub.com. Also on February 10, 2020, 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.
A timely Response was received and determined to be complete on March 2, 2020.
On March 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Adam Taylor 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Respondent’s <porhub.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark by omitting a letter and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <porhub.com> 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 merely diverting Internet users seeking Complainant to unaffiliated and competing websites.
Respondent registered and used the <porhub.com> domain name in bad faith. Specifically, 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. Furthermore, Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to competing websites. Respondent’s activities constitute typosquatting. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the well-known PORNHUB mark at the time of registration of the <porhub.com> domain name.
B. Respondent
The major domain name marketplaces offer thousands of domain names for sale that are similar to Complainant’s mark, but Complainant is not focusing on these.
Respondent registered the <porhub.com> domain name for investment purposes only. Since registration, Respondent has redirected 100% of Google/SEO traffic to <pornhub.com> to avoid any bad faith issues or other problems with Complainant’s mark. Respondent has not used any “Pornhub” style, design or feature on the website at the disputed domain name.
After receiving notice of this dispute, Respondent removed the content of the website at the disputed domain name. Therefore the <porhub.com> domain name is not being used in bad faith or in competition with Complainant.
Complainant operates numerous websites featuring adult oriented content. In 2018, Complainant’ s main website at <pornhub.com> attracted some 33.5 billion visits worldwide with a daily average of approximately 92 million visitors.
Complainant has registered the PORNHUB mark in various countries including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012). See Compl. Annex 3.
Respondent purchased the <porhub.com> domain name on March 18, 2019 for $65,550 USD.
Respondent has used <porhub.com> to redirect to Complainant’s own website as well as to link or redirect to third party adult oriented websites unrelated to Complainant.
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.
Complainant claims rights in the PORNHUB mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,220,491, registered Oct. 9, 2012). See Compl. Annex 3. 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 Panel finds that the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <porhub.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark by omitting a letter and adds the “.com” gTLD. Small changes to a mark, such as the removal or a letter and the adding a gTLD, may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Here, Complainant notes that Respondent merely removes the letter “N” from Complainant’s PORNHUB mark and adds the “.com” gTLD. Therefore, the Panel finds that Respondent’s <porhub.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Accordingly, Complainant has sustained its burden under the first factor of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <porhub.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed 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 Panel notes that the WHOIS of record identifies the Respondent as “Priit Eiber” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <porhub.com> domain name under Policy ¶ 4(c)(ii) as Respondent is not commonly known by the disputed domain name.
Next, Complainant argues that Respondent fails to use the <porhub.com> 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 disputed domain name to divert Internet users to nonaffiliated and competing third party websites. Using a disputed domain name to redirect to divert Internet users seeking a complainant goods or services to third party websites 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 Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Here, Complainant has provided screenshots of the various third party websites to which the website at the disputed domain name was linked or redirected, each containing adult oriented material that compete with Complainant’s services. See Compl. Annex 10. Therefore, the Panel finds that the Respondent has used the <porhub.com> 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).
Accordingly, Complainant has sustained its burden under the second factor of the Policy.
Complainant argues that Respondent registered and used the <porhub.com> domain name in bad faith. Specifically, 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. Registering a disputed domain name for the purpose of diverting Internet users seeking a complainant’s services to websites offering competing service may be evidence of bad faith under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, Complainant has provided screenshots of the various third party websites that the disputed domain name linked or redirected to, each containing adult oriented material that compete with Complainant’s services. See Compl. Annex 10. Therefore, the Panel finds that Respondent registered and used the <porhub.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant argues Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to competing websites. Registering a disputed domain name to redirect Internet users to competing service for commercial gain may be evidence of bad faith under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”). Here, as mentioned above, Complainant has provided screenshots of various third party websites that the disputed domain name redirects or links to that contain adult oriented material that compete with Complainant’s services, and which Complainant asserts provide some financial gain to Respondent. See Compl. Annex 10. Therefore, the Panel finds that Respondent registered and used the <porhub.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Furthermore, Complainant argues Respondent is typosquatting and this act is further evidence of Respondent’s bad faith registration and use. Introducing a common spelling error into a disputed domain name that takes advantage of Internet user’s inadvertent typographical errors when entering a domain name may be evidence of bad faith 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.”). Here Complainant argues that Respondent takes advantage of common spelling errors by removing the letter “n” from Complainant’s mark and legitimate domain name. The Panel also notes that Respondent has not put forward any legitimate explanation for its selection of the <porhub.com> domain name, simply claiming that it was “for investment purposes only”. Furthermore, the Respondent has previously been found to have engaged in typosquatting activity vis-à-vis the Complainant’s mark. See, e.g., Licensing IP International S.à.r.l. v. Priit Eiber, FA1881314 (Forum Mar. 6, 2020) (finding that the Respondent had registered and used the domain name <pornhyb.com> in bad faith). Therefore, the Panel finds that Respondent registered and used the <porhub.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registering the <porhub.com> domain name. The Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel may choose to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 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 along with the fact that Respondent is typosquatting. Furthermore, the Panel notes that Respondent effectively admitted knowledge of Complainant by stating that, since registration of the disputed domain name, it redirected the website at the disputed domain name to Complainant’s website. As such, the Panel determines that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, the Panel observes that neither of the following assertions by Respondent are sufficient to avert a finding of bad faith in this case.
First, Respondent’s allegation, even if true, that Complainant has not taken action in relation to many other domain names constituting variations of Complainant’s mark that are allegedly for sale on domain name marketplaces does not of itself justify the Respondent registering and using the <porhub.com> domain name in bad faith.
Second, while Respondent contends that it stopped showing any content on the website <porhub.com> as soon as it received the complaint, such fact, even if accepted, does not preclude a finding of the requisite bad faith. The same argument by the Respondent was rejected in Licensing IP International S.à.r.l. v. Priit Eiber, supra, (“… to allow a respondent to avoid a determination of bad faith registration and use based on actions taken after a complaint is filed would permit respondents to manipulate the system and provide no assurance that the challenged act would not re-commence at a point in the future.”)
Accordingly, Complainant has sustained its burden under the third factor of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <porhub.com> domain name be TRANSFERRED from Respondent to Complainant.
Adam Taylor, Panelist
Dated: March 24, 2020
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