Licensing IP International S.à.r.l. v. Privacy.co.com / Savvy Investments, LLC Privacy ID# 1129323
Claim Number: FA2003001886920
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Privacy.co.com / Savvy Investments, LLC Privacy ID# 1129323 (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youpoen.com>, registered with Sea Wasp, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2020; the Forum received payment on March 4, 2020.
On March 6, 2020, Sea Wasp, LLC confirmed by e-mail to the Forum that the <youpoen.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, LLC 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 March 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@youpoen.com. Also on March 9, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant operates numerous websites featuring adult-oriented content. Complainant has rights in the YOUPORN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,534,702, registered Nov. 18, 2008). See Compl. Annex 3. Respondent’s <youpoen.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark by switching the letter “r” for the letter “e” and adds the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <youpoen.com> domain name as Respondent is not commonly known by the disputed domain names 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 <youpoen.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 is typosquatting. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the YOUPORN mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Luxembourg company that operates numerous websites featuring adult-oriented content.
2. Complainant has established its trademark rights in the YOUPORN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,534,702, registered Nov. 18, 2008).
3. Complainant has also established its common law or unregistered trademark rights in the YOUPORN mark and that they existed from at least October 10, 2006.
4. Respondent acquired the disputed domain name on October 13, 2018.
5. Respondent has caused the website to which the domain name resolves to divert Internet users seeking Complainant to unaffiliated and competing websites.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the YOUPORN mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,534,702, registered Nov. 18, 2008). 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 registered trademark rights in the YOUPORN mark under Policy ¶ 4(a)(i).
Complainant has also submitted that it has an unregistered or common law trademark for YOUPORN and that its predecessor in title acquired it at least from October 10, 2006, that date being the date appearing in its evidence on a screenshot of its website at www.youporn.com where the services on offer were clearly being promoted under the name and brand You Porn. Other evidence has been given of the early success of the website under that name to the extent that it is clear that YOUPORN was used as the source of the services and was recognized as such. It is well established that an unregistered or common Law trademark is adequate for the purpose of supporting a complaint under the UDRRP. The Panel therefore finds that the Complainant has established an unregistered or common law trademark for YOUPORN and that it existed at least from October 10, 2006.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s YOUPORN mark. Complainant argues Respondent’s <youpoen.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark by switching the letter “r” for the letter “e” and adds the “.com” gTLD. Replacing a letter in a mark with a letter that is adjacent to it on a QWERTY keyboard and adding a gTLD may not sufficiently distinguish a disputed domain name form an Complainant’s mark under Policy ¶ 4(a)(i). See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶ 4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Complainant provided diagrams of QWERTY and AZERTY keyboards, showing the letters “e” and “r” are next to each other on either keyboard. See Compl. 8.1.5. Therefore, the Panel finds Respondent’s <youpoen.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s YOUPORN trademark and to use it in its domain name, merely making a minor spelling alteration which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent acquired the disputed domain name on October 13, 2018;
(c) Respondent has caused the website to which the domain name resolves to divert Internet users seeking Complainant to unaffiliated and competing websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <youpoen.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. 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). 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 the WHOIS of record identifies the Respondent as “Privacy.co.com / Savvy Investments, LLC Privacy ID# 1129323” 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 <youpoen.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <youpoen.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 a nonaffiliated and competing third party website. Using a disputed domain name to divert Internet users seeking a complainant’s goods or services to a third party 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 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 provided screenshots of the third party websites the disputed domain name would redirect to, containing adult oriented material that competes with Complainant’s services. See Compl. Annex 9. Therefore, the Panel finds Respondent fails to use the <youpoen.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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and used the <youpoen.com> domain name in bad faith as 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 user seeking a complainant’s services to websites offering competing services 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 provided screenshots of the third party websites to which the disputed domain names would redirect, containing adult oriented material that competes with Complainant’s services. See Compl. Annex 9. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, 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 services 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, Complainant provided screenshots of the third party websites the disputed domain name would redirect to, containing adult oriented material that competes with Complainant’s services. See Compl. Annex 9. Therefore, the Panel finds Respondent fails to make a good faith use of the <youpoen.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues Respondent is typosquatting and this act is further evidence of Respondent’s bad faith registration and use. Introducing common spelling error into a disputed domain name that take 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 the replacement of the letter “r” with the letter “e” in the <youpoen.com> domain name is a common mistake given the layout of the QWERT or AZERTY keyboard and Respondent is seeking to take advantage of these errors. Therefore, the Panel finds Respondent registered and used the <youpoen.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had knowledge of Complainant’s rights in the YOUPORN mark at the time of registering the <youpoen.com> domain name. Arguments of bad faith based on constructive notice are generally not successful as prior UDRP decisions decline 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.”). However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and actual knowledge of a trademark 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 along with the fact that Respondent is typosquatting. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the YOUPORN mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youpoen.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 6, 2020
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