Licensing IP International S.ŕ.r.l. v. Arnost Bartin
Claim Number: FA2006001900307
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Arnost Bartin (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhub.onl>, registered with Key-Systems GmbH.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2020; the Forum received payment on June 15, 2020.
On June 17, 2020, Key-Systems GmbH confirmed by e-mail to the Forum that the <pornhub.onl> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 June 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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.onl. Also on June 18, 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 July 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Licensing IP International S.ŕ.r.l, is a corporation involved in the online adult entertainment market. Complainant asserts rights in the trademark PORNHUB through its use in commerce since 2007 and its registration of the mark with multiple trademark agencies, including the European Union Intellectual Property Office (“EUIPO”), the United States Patent and Trademark Office (“USPTO”), and others dating back to 2012. Respondent’s <pornhub.onl> domain name, registered on September 30, 2018, is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely adds the “.onl” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <pornhub.onl> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the PORNHUB mark. Additionally, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent was merely diverting Internet users seeking Complainant to an unaffiliated and competing website. More recently, the <pornhub.onl> domain name resolves to an inactive website and so Respondent now fails to use the domain name at all.
Respondent registered and uses the <pornhub.onl> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by diverting Internet users to a third party website 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 this competing website. More recently, Respondent’s passive holding of the disputed domain name also signals its bad faith. Finally, Respondent must have had actual knowledge of Complainant’s rights in the PORNHUB mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 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”).
Complainant asserts rights in the PORNHUB mark through its registration thereof with multiple trademark agencies such as the EUIPO and the USPTO. Registration of a mark with a national or regional trademark office is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i)”). Complainant provides screenshots from the websites of various national trademark offices evidencing its registration of the PORNHUB mark with such offices. Therefore, the Panel finds that Complainant has rights in its claimed mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <pornhub.onl> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the PORNHUB mark in its entirety and merely adds the “.onl” gTLD. The addition of a gTLD is typically not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”) Here, the TLD “onl” is promoted by its registrar as an abbreviation of the word “online” and that term has a particular meaning in relation to Complainant’s services. As such, this addition does not differentiate the disputed domain name from Complainant’s mark but may actually amplify confusion. The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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.onl> 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. In considering this issue, 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, FA 1626022 (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 record, a copy of which Complainant has submitted into evidence, identifies the Respondent as “Arnost Bartin” and no information in the record indicates that Respondent is known otherwise or that it is authorized to use Complainant’s mark. Therefore, in the absence of any Response or other submission from the Respondent, the Panel finds that Respondent has no rights or legitimate interests in the <pornhub.onl> 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.onl> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent initially used the disputed domain name to divert Internet users to a nonaffiliated and competing third party website. Using a disputed domain name to redirect and divert Internet users seeking a complainant’s 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 provides screenshots of the webpage to which the disputed domain name resolves and it is clear to the Panel that this webpage provides similar services to, and thus competes with Complainant’s own website. More recently, Respondent has disabled the redirection and so now the disputed domain name resolves only to an inactive website. Failure to use a disputed domain name is not a bona fide offering of goods or services and does not indicate a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Here, Complainant supports this argument by providing a screenshot of the disputed domain name’s current resolution and there is no content on the site. Therefore, the Panel finds that Respondent fails to use the <pornhub.onl> 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).
Complainant claims that Respondent must have had actual knowledge of Complainant’s rights in the PORNHUB mark at the time of registration. Actual knowledge of a complainant's rights in an asserted mark prior to registering a disputed domain name may create a solid foundation upon which to build a case for bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Here, Complainant asserts that its PORNHUB mark has “achieved a significant degree of public recognition in practically all parts of the world where high-speed Internet is available”. In support thereof, it submits into evidence documents and reports relating to its history, its website traffic and viewership numbers, as well as news articles covering its business. Based upon this widespread reputation, Complainant asserts that Respondent could not have been unaware of its mark and that there is no possible legitimate use of the infringing domain name. The Respondent has not participated in this case and so does not dispute this assertion or Complainant’s evidence. The Panel finds Complainant’s substantial evidence to be quite adequate in supporting its claim of a global reputation and further that the mark is a rather unique term not present in common parlance. In light of the above, the Panel finds it highly likely that Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent registered and used the <pornhub.onl> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by diverting Internet users to a third party website hosted by one of the Complainant’s competitors. Registering a disputed domain name for the purpose of diverting Internet user 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).”). As noted above, Complainant has provided screenshots of the disputed domain name’s resolving webpage that competes with Complainant and diverts Internet users seeking Complainant’s legitimate website. Therefore, the Panel finds that Respondent registered and used the <pornhub.onl> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that 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, FA 1611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website that 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, in resolving the disputed domain name to a competing website, Complainant alleges that Respondent likely received some financial gain by monetizing this diversion of traffic. The Respondent has not participated in this case and so does not dispute this. Thus, upon a preponderance of the evidence available, the Panel finds that Respondent registered and used the <pornhub.onl> domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent registered and uses the <pornhub.onl> domain name in bad faith based upon the fact that Respondent has disabled and more recently makes no active use of the domain name. Such non-use can be evidence of bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). Although Policy ¶ 4(b) sets out a number of examples of behavior that may evidence bad faith registration and use, they are not exclusive and Panels are free to consider all circumstances of a given situation including the fact that a disputed domain name does not resolve to any website and is not used in any other manner (i.e., “passive” holding of the domain name). See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). As previously mentioned, Complainant supports this argument by providing a screenshot of the most recent resolution of the disputed domain name to a blank website. Thus, the Panel finds this non-use to further support the conclusion that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
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.onl> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 14, 2020
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