Licensing IP International S.à.r.l. v. Domain Administrator / NameFind LLC
Claim Number: FA2103001935839
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Domain Administrator / NameFind LLC (“Respondent”), represented by Gerald M. Levine of Levine Samuel, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhur.com>, registered with Go China Domains, 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.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2021; the Forum received payment on March 9, 2021.
On March 10, 2021, Go China Domains, LLC confirmed by e-mail to the Forum that the <pornhur.com> domain name is registered with Go China Domains, LLC and that Respondent is the current registrant of the name. Go China Domains, LLC has verified that Respondent is bound by the Go China Domains, 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 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2021 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@pornhur.com. Also on March 10, 2021, 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 March 30, 2021.
On April 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff 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
1- Complainant runs multiple adult content websites.
2- Complainant has rights in the PORNHUB mark through its registrations with various trademark offices throughout the world, including the European Union Intellectual Property Office (“EUIPO”) and the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,399,833, registered May 11, 2012; Reg. No. 4,220,491, registered Oct. 9, 2012). See Compl. Ex. 3.
3- Respondent’s <pornhur.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, replaces the “b” with the letter “r”, and adds the “.com” generic top-level domain (“gTLD”). Moreover, “pornhur.com” is an obvious or intentional misspelling of “PORNHUB” (and of PORNHUB.com) with a high degree of resemblance with “PORNHUB”. The confusing similarity is even greater given the extent to which the Complainant's Marks have become well-known.
4- Complainant argues that Respondent’s date of acquiring the disputed domain name (in 2016) should be used, instead of the original creation date in 2011. This argument is addressed in the brief under Policy ¶ 4(a)(iii).
5- Respondent lacks rights and legitimate interests in the <pornhur.com> domain name.
6- Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its PORNHUB mark in the disputed domain name.
7- Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts competing pay-per-click links on the disputed domain name’s resolving website.
8- Respondent registered and uses the <pornhur.com> domain name in bad faith.
9- Respondent disrupts Complainant’s business for commercial gain by hosting competing pay-per-click links on the disputed domain name’s resolving website. Additionally, Respondent typosquats with the disputed domain name.
9- Respondent’s acquisition and use of the Domain Name for monetization purposes is in bad faith under UDRP ¶ 4(b)(iv).
B. Respondent
1- Respondent agrees to to transfer the <pornhur.com> domain name.
2- Respondent argues it would have been more than willing to transfer the domain name without UDRP Proceedings being commenced, and expresses its wish to resolve the matter and transfer the name without any further review of the dispute at issue here.
3- Respondent argues that it is not the type of Respondent engaged in the business of registering and holding infringing domain names.
For the reasons set forth below, the Panel will not make any findings of fact.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent consents to transfer the <pornhur.com> domain name to Complainant. However, after the initiation of this proceeding, GoChina placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <pornhur.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
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 the present case, the parties have both asked for the domain name to be transferred to the Complainant. Since the requests of the parties in this case are identical, the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain name.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Giving the special circumstances in this case and the fact that Respondent does not contest Complainant’s remedy, the Panel concludes that relief shall be GRANTED.
Given the common request of the Parties, it is Ordered that the <pornhur.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: April 14, 2021
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