Licensing IP International S.à.r.l. v. Domain Administrator /
Fundacion Privacy Services LTD
Claim Number: FA2003001886922
Complainant is Licensing IP International S.à.r.l. ("Complainant"), represented by ROBIC, LLP, Canada. Respondent is Domain Administrator / Fundacion Privacy Services LTD ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youporm.com>, registered with Media Elite Holdings Limited.
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.
David E. Sorkin 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, Media Elite Holdings Limited confirmed by email to the Forum that the <youporm.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@youporm.com. Also on March 9, 2020, the Written Notice of the Complaint, notifying Respondent of the email 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 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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, a Luxembourg corporation, operates various websites that aggregate adult video content. Complainant's <youporn.com> website was the highest-ranked adult website shortly after its launch in October 2007; as of February 2017 its overall Alexa global ranking was 236. Complainant owns trademark registrations for YOUPORN and variations thereof in jurisdictions around the world dating back to 2007, and also asserts common law rights in the YOUPORN mark.
The disputed domain name <youporm.com> was originally registered in 2006, although Complainant asserts that the disputed domain name was acquired by Respondent at a later date. The domain name registration has been held in the names of various privacy registration services and other entities over the years, making it difficult to ascertain exactly when Respondent became the beneficial owner. Complainant presents a detailed analysis that includes historical whois domain registration data and screenshots of various uses of the domain name, noting multiple occasions on which the domain name likely changed hands, and contends that Respondent likely acquired the domain name in 2018.
The disputed domain name is being used to display or redirect users to pages consisting of pay-per-click links to Complainant's competitors. Complainant alleges that Respondent is not commonly known by the disputed domain name and states that it has not authorized Respondent to use its marks.
Complainant contends on the above grounds that the disputed domain name <youporm.com> is confusingly similar to its YOUPORN mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to produce clear evidence to support its subjective allegations").
The disputed domain name <youporm.com> incorporates Complainant's registered YOUPORN trademark, substituting a letter "M" for the "N" and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Licensing IP International S.à.r.l. v. Privacy.co.com / Savvy Investments, LLC Privacy ID# 1128652, FA 1886919 (Forum Mar. 30, 2020) (finding <yoporn.com> confusingly similar to YOUPORN); Licensing IP International S.à.r.l. v. Priit Eiber, FA 1873816 (Forum Jan. 10, 2020) (finding <pormhub.com> confusingly similar to PORNHUB). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its only apparent use by Respondent has been to display pay-per-click links to websites that compete directly with Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Transamerica Corp. v. Domain Administrator / See PrivacyGuardian.org, FA 1861548 (Forum Oct. 5, 2019) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using a domain name that is confusingly similar to Complainant's mark and domain name in order to attract users seeking Complainant and profit by diverting them to competing websites. Such conduct is indicative of bad faith use under the Policy. See, e.g., Transamerica Corp. v. Domain Administrator / See PrivacyGuardian.org, supra (finding bad faith in similar circumstances).
For purposes of assessing registration in bad faith, the relevant date is the date on which Respondent initially registered or acquired the disputed domain name. See HotCam, Ltd. v. RNIS Telecommunication inc., FA 1273417 (Forum Aug. 24, 2009); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 3.9. Here, that date is unclear as a result of Respondent's use of privacy registration services and failure to respond to the Complaint in this proceeding. The Panel therefore relies upon the evidence and analysis submitted by Complainant, and considers it likely that Respondent acquired the domain name in 2018, long after Complainant's mark and website had achieved widespread public recognition. The Panel further infers that Respondent acquired the domain name with the intent to create and profit from confusion with Complainant. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youporm.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 5, 2020
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