Licensing IP International S.ŕ.r.l. v. Kunal Sharma
Claim Number: FA2004001892168
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Kunal Sharma (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhub.site>, registered with Uniregistrar Corp.
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 April 15, 2020; the Forum received payment on April 15, 2020.
On April 16, 2020, Uniregistrar Corp confirmed by e-mail to the Forum that the <pornhub.site> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 April 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@pornhub.site. Also on April 22, 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 May 12, 2020.
On May 15, 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 <pornhub.site> domain name is identical or confusingly similar to Complainant’s mark as Respondent merely adds the “.site” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondents has no rights or legitimate interests in the <pornhub.site> 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 attempting to sell the disputed domain name in excess of out-of-pocket costs.
Respondent registered and used the <pornhub.site> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name to Complainant. Furthermore, Respondent has an established pattern of bad faith registrations. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the PORNHUB mark at the time of registration.
B. Respondent
Respondent emailed a response stating that it had no objection to transferring the <pornhub.site> domain name to the Complainant “at a [n]egotiated [p]rice”.
Since 2007, Complainant has operated websites featuring adult oriented content under the PORNHUB mark. By November 2007, Complainant’s main website at www.pornhub.com achieved an average of approximately one million daily visits. In 2019, the website attracted some 42 billion visits worldwide with a daily average of approximately 115 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.
The <pornhub.site> domain name was registered on October 02, 2017.
As of March 25, 2020, Respondent used the <pornhub.site> domain name to divert users to a webpage offering that domain name for sale for 60,000 USD.
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 Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <pornhub.site> domain name is identical or confusingly similar to Complainant’s mark as Respondent merely adds the “.site” gTLD to Complainant’s mark. Adding a gTLD to an otherwise unaltered mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds that Respondent’s <pornhub.site> domain name is identical 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 <pornhub.site> 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 “Kunal Sharma” 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 <pornhub.site> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <pornhub.site> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is merely attempting to sell the disputed domain name to Complainant in excess of out of pocket costs. Here, Complainant provides a screenshot of the <pornhub.site> domain name resolving webpage, which diverts users to a page offering the disputed domain name for sale and shows a price of $60,000. See Compl. Ex. 10. While there may be circumstances where it is legitimate to use a domain name for a website offering that domain name for sale, in this case the Panel considers that, as explained below, Respondent specifically registered the disputed domain name for the purpose of sale to Complainant, as trademark owner, at a price substantially in excess of out of pocket costs. Therefore, the Panel finds that Respondent fails to use the <pornhub.site> 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) and (iii).
Accordingly, Complainant has sustained its burden under the second factor of the Policy.
Registration and Use in Bad Faith
Complainant argues Respondent registered and used the <pornhub.site> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name to Complainant. Here, Complainant provides a screenshot of the <pornhub.site> domain name resolving webpage, which diverts users to a page offering the disputed domain name for sale and shows a price of $60,000. See Compl. Ex. 10. The Panel is satisfied that this asking price was motivated by the fame of Complainant’s mark and was intended for Complainant. The Panel notes that Respondent’s response states its willingness to sell the ddd to Complainant “at a [n]egotiated [p]rice” and does not deny that it registered the disputed domain name for sale to Complainant. Therefore, the Panel finds Respondent registered and used the <pornhub.site> domain name in bad faith under Policy ¶ 4(b)(i).
Furthermore, Complainant argues Respondent has an established pattern of bad faith registrations, as Respondent has registered other domain names infringing on famous marks. A pattern of bad faith registrations may be established when evidence is presented that a respondent has registered other domain names that incorporate other famous marks under Policy ¶ 4(b)(ii). See Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists). Here, Complainant provides a list of other domain names associated with Respondent’s email address, many of which use other trademarks that are recognizable and that Respondent unlikely has rights to. See Amend. Compl. Ex. 2b. Therefore, the Panel finds Respondent has an established pattern of bad faith registrations under Policy ¶ 4(b)(ii).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registering the <pornhub.site> domain name. The Panel is entitled to 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 offering the domain name for sale. 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).
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 <pornhub.site> domain name be TRANSFERRED from Respondent to Complainant.
Adam Taylor, Panelist
Dated: May 29, 2020
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