Licensing IP International S.à.r.l. v. Andrei Ivanov
Claim Number: FA2110001970572
Complainant is Licensing IP International S.à.r.l. (“Complainant”), Luxembourg, represented by ROBIC, LLP, Canada. Respondent is Andrei Ivanov (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubdownload.pro> (the “disputed domain name”), registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2021; the Forum received payment on October 26, 2021.
On October 26, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <pornhubdownload.pro> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@pornhubdownload.pro. Also on November 2, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates several of the world’s largest adult entertainment platforms at the website “www.pornhub.com”, and has rights in the PORNHUB trademark through its registration of the mark with numerous trademark agencies around the world, one of which is the United States Patent and Trademark Office (“USPTO”), Reg. No. 4,220,491, registered on Oct. 9, 2012; and another is the European Union Office of Harmonisation in the Internal Market (“OHIM”), Reg. No. 10,166,973, registered on May 11, 2012 (hereinafter collectively referred to as the “PORNHUB Mark”).
Complainant contends that the disputed domain name is identical or confusingly similar to the PORNHUB Mark as it incorporates the mark in its entirety and adds the word “download”, along with the “.pro” generic top-level domain (“gTLD”), that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademark rights in the PORNHUB Mark in the United States and the European Union. The disputed domain name is confusingly similar to Complainant’s PORNHUB Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in respect of the disputed domain name and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that Complainant has registered trademark rights in the PORNHUB Mark through its registrations with various trademark agencies worldwide (e.g. OHIM Reg. 10,166,973, registered on May 11, 2012; USPTO Reg. 4,220,491, registered on Oct. 9, 2012). Registration with multiple trademark agencies or offices is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
The Panel further finds that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s PORNHUB Mark as it wholly incorporates the mark in its entirety and adds the descriptive word “download”, followed by the “.pro” gTLD. The Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s PORNHUB Mark as the disputed domain name incorporates the entirety of the PORNHUB Mark, adding the dictionary or descriptive term “download”, followed by the “.pro” gTLD. Adding a dictionary or descriptive term and a gTLD to a complainant’s mark does not distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in its well-known PORNHUB Mark at the time of registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark). Here, the PORNHUB Mark has achieved a significant degree of public recognition in many parts of the world. Such actual knowledge based on the fame of the trademark constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Second, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Respondent created a likelihood of confusion with Complainant and its PORNHUB Mark by registering a disputed domain name that incorporates in its entirety Complainant’s PORNHUB Mark, merely adding the term “download” and the “.pro” gTLD.
Third, the Panel finds that Respondent registered and is using the <pornhubdownload.pro> disputed domain name to disrupt Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to offer Complainant’s goods or services illegally and without authorization is generally evidence of bad faith disruption for commercial gain.
In this proceeding, Complainant submits screenshots of the disputed domain name’s resolving website, which features Complainant’s videos and a mechanism to download Complainant’s content without authorization, indicative of bad faith.
Finally, the Panel finds that Respondent engaged in bad faith registration and use by engaging in a pattern of cybersquatting. Per Policy ¶ 4(b)(ii), evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting, demonstrating bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010). Here, Complainant provides a screenshot showing that a reverse WhoIs search reveals that the Respondent holds and/or held numerous domain names corresponding to third-party trademarks, as well as several other domain names confusingly similar to Complainant’s PORNHUB Mark in addition to the disputed domain name, such conduct demonstrating Respondent’s bad faith registration and use.
Further, Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of the disputed domain names containing the trademarks of the complainants).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornhubdownload.pro> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 6, 2021
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