Licensing IP International S.à.r.l. v. Stefan Wiegard / Webcapital GmbH
Claim Number: FA2003001886923
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Stefan Wiegard / Webcapital GmbH (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <yiuporn.com>, <yoiporn.com>, <yoiuporn.com>, <yoouporn.com>, <youpirn.com>, <youpoirn.com>, <youporb.com>, <youporen.com>, <yyouporn.com>, <youp0rn.com>, <wyouporn.com>, and <xyouporn.com>, registered with PSI-USA, Inc. dba Domain Robot.
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, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <yiuporn.com>, <yoiporn.com>, <yoiuporn.com>, <yoouporn.com>, <youpirn.com>, <youpoirn.com>, <youporb.com>, <youporen.com>, <yyouporn.com>, <youp0rn.com>, <wyouporn.com>, and <xyouporn.com> domain names are registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the names. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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@yiuporn.com, postmaster@yoiporn.com, postmaster@yoiuporn.com, postmaster@yoouporn.com, postmaster@youpirn.com, postmaster@youpoirn.com, postmaster@youporb.com, postmaster@youporen.com, postmaster@yyouporn.com, postmaster@youp0rn.com, postmaster@wyouporn.com, postmaster@xyouporn.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 1, 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 names 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 <yiuporn.com>, <yoiporn.com>, <yoiuporn.com>, <yoouporn.com>, <youpirn.com>, <youpoirn.com>, <youporb.com>, <youporen.com>, <yyouporn.com>, <youp0rn.com>, <wyouporn.com>, and <xyouporn.com> domain names are confusingly similar to Complainant’s marks as Respondent merely misspells Complainant’s mark by either adding or replacing letters and adding the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the disputed domain names 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 disputed domain names in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by diverting Internet users to parked webpages hosting competing hyperlinks. 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 adduced evidence that shows it has also established common law trademark rights to YOUPORN.
4. The disputed domain names were registered on the following dates:
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<yiuporn.com> |
November 21, 2006 |
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<yoiporn.com> |
November 21, 2006 |
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<yoiuporn.com> |
November 21, 2006 |
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<yoouporn.com> |
November 21, 2006 |
|
<youpirn.com> |
November 21, 2006 |
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<youpoirn.com> |
November 21, 2006 |
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<youporb.com> |
November 21, 2006 |
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<youporen.com> |
November 21, 2006 |
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<yyouporn.com> |
November 21, 2006 |
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<youp0rn.com> |
April 6, 2007 |
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<wyouporn.com> |
May 1, 2007 |
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<xyouporn.com> |
October 1, 2007 |
5. Respondent subsequently acquired the disputed domain names.
6. Respondent has used the domain names 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 submits that it 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. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group,You 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).”). In that regard it should also be said that the evidence is that Complainant has rights in a series of other trademarks for YOUPORN, registered with other national and international authorities. Therefore, the Panel finds that the Complainant has rights in the YOUPORN mark under Policy ¶ 4(a)(i).
Complainant has also adduced a quantity of evidence supported by persuasive submissions that show it has acquired common law trademark rights to YOUPORN and that it acquired them, as the Complainant submitted, “prior to the acquisition of the Domain Names by the Respondent.”
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s YOUPORN mark. Complainant argues Respondent’s disputed domain names are confusingly similar to Complainant’s marks as Respondent merely misspells Complainant’s mark by either adding or replacing letters and adding the “.com” gTLD. Making slight spelling alterations to a recognizable mark may not sufficiently distinguish a disputed domain name from a 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.”); see also Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”). Here, Complainant argues the <yiuporn.com>, <yoiporn.com>, <youpirn.com> and <youporb.com> have the letters “o”, “u” and “n” replaced with the letters “I” and “b”, the <yoiuporn.com>, <yoouporn.com>, <youpoirn.com>, <youporb.com>, <youporen.com>, <yyouporn.com>, <youp0rn.com>, <wyouporn.com>, and <xyouporn.com> have letters added to them, and all disputed domain names have the “.com” gTLD added. Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s marks 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 names 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 names, making minor spelling alterations which do not negate the confusing similarity between the domain names and the trademark;
(b) The respective domain names were registered on the dates specified above and the Respondent subsequently acquired them;
(c) Respondent has used the domain names 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 disputed domain names as Respondent is not commonly known by the disputed domain names 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 “Stefan Wiegard / Webcapital GmbH” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain names. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain names 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 names 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 a 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 provided screenshots of the disputed domain names’ resolving webpages, which show competing hyperlinks to competing services. See Compl. Annexes 10. Therefore, the Panel finds Respondent fails to use the disputed domain names 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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and used the disputed domain names in bad faith. Specifically, it is submitted that Respondent is attempting to disrupt Complainant’s business by directing Internet users to parked webpages that are hosting competing hyperlinks. Registering a disputed domain name for the purpose of hosting competing hyperlinks may be evidence of bad faith under Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). Here, Complainant provided screenshots of the disputed domain names’ resolving webpages which show parked webpages that are hosting hyperlinks to competing services. See Compl. Annex. 10. Therefore, the Panel finds Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
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 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, Complainant provided screenshots of the disputed domain names’ resolving webpages which show parked webpages that are hosting hyperlinks to competing services. See Compl. Annex. 10. Therefore, the Panel finds Respondent registered and used the disputed domain names 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 errors into a disputed domain name that takes advantage of Internet users’ 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 disputed domain names include common mistakes 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 disputed domain names 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 disputed domain names. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions generally 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 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 contention, Complainant points to its trademark registrations and worldwide fame along with the fact that Respondent is typosquatting. As such, the Panel determines 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).
Finally, 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 names using the YOUPORN mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
It is of course apparent that the disputed domain names were first registered on dates prior to the dates on which the range of the Complainant’s trademarks were registered. This fact inevitably has consequences for the issue of bad faith registration and use. That is so because it is generally accepted that for a finding of bad faith the complainant must have acquired its trademark rights prior to the date in which the disputed domain name was registered.
Alert to that issue, Complainant has adduced a quantity of evidence and advanced some helpful submissions. Having regard to that evidence and those submissions, the Panel is able to find in accordance with general principle and on the evidence adduced by the Complainant that the Respondent registered and used the disputed domain names in bad faith.
The consideration of this issue has been influenced by several areas of inquiry leading to that conclusion. The first is the history of changes in the ownership of the domain names which tend to show that the changes of ownership to the Respondent who is the current domain name holder occurred after August 2, 2007, the date of registration of the earliest of the Complainant’s marks. The time for considering the Respondent’s conduct is therefore in the case of each domain name a time subsequent to the date of the trademark registration.
Secondly, the Complainant’s common law trademark rights were established by its predecessors in title before the domain names were registered and those rights inured to the Complainant and can be relied on by it in this proceeding. In that regard , the evidence is that secondary meaning in YOUPORN was quickly acquired internationally, particularly in Germany, because of the YOUPORN internet service in this field which rapidly took over from the former DVD and specialty pay television distribution of the type of services provided by Complainant.
Putting its considerable evidence together, the Complainant invites the Panel to find as follows:
“(i) that the YOUPORN trademark, based on the sudden high degree of actual public recognition (particularly in Germany) by media, consumers and the industry (and considering other factors mentioned in section 1.3 of WIPO Jurisprudential Overview 3.0 about what a complainant needs to show to successfully assert unregistered or common law trademark rights, such as the type and scope of market activities and the nature of the services, as video downloads and streaming have been made available free of charge to Internet users when and since YOUPORN.com became publicly accessible), had gained secondary meaning prior to the acquisition of the Domain Names by the Respondent, (ii) that the Complainant is the successor in title for the Complainant's Marks such that it is entitled to rely on the effect of the use of and rights in those marks for the period prior to the purchase by the Complainant of the rights in those marks, and (iii) that regardless of this issue, the facts of the case may establish that the Respondent’s intent in registering the Domain Names was to unfairly capitalize on the Complainant’s trademark rights, which were nascent and as yet unregistered when the YOUPORN trademark benefited from significant media attention (especially in Germany) as a result of an article published in the German newspaper Bild. Indeed, pursuant to section 3.8.2 of WIPO Jurisprudential Overview 3.0, bad faith can be found even where a domain name is registered before a complainant acquired trademark rights, for instance when domain names are registered in anticipation of trademark rights in certain limited circumstances where the facts of the case (as in this case) establish that the respondent’s intent in registering a domain name was to unfairly capitalize on nascent (typically as yet unregistered) trademark rights, included when such registration is further to significant media attention.”
As said above, the Complainant’s case on these issues has been supported by a large amount of historical information to which the Panel has given attention.
On that basis, the Panel is prepared to make the findings requested and hence to find that the Respondent registered and used the disputed domain names in bad faith.
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 <yiuporn.com>, <yoiporn.com>, <yoiuporn.com>, <yoouporn.com>, <youpirn.com>, <youpoirn.com>, <youporb.com>, <youporen.com>, <yyouporn.com>, <youp0rn.com>, <wyouporn.com>, and <xyouporn.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 2, 2020
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