Licensing IP International S.à.r.l. v. Jurgen Neeme
Claim Number: FA2006001898824
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Jurgen Neeme (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhub.pink>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2020; the Forum received payment on June 3, 2020.
On June 5, 2020, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <pornhub.pink> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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.pink. Also on June 15, 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 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 operates numerous websites featuring adult-oriented content. Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012). Respondent’s <pornhub.pink> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the “.pink” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondents has no rights or legitimate interests in the <pornhub.pink> 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.
Respondent registered and used the <pornhub.pink> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name that targets a well-known mark for an amount in excess of out-of-pocket costs. Next, Respondent has an established pattern of bad faith registrations. Respondent is also passively holding the <pornhub.pink> domain name. Finally, Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent failed to submit a response in this proceeding. The Panel notes that the <pornhub.pink> domain name was registered on April 19, 2020.
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”).
Identical and/or Confusingly Similar
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. 09, 2012 and elsewhere. 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 the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <pornhub.pink> domain name is identical or confusingly similar to Complainant’s mark as Respondent merely adds the “.pink” generic top-level domain (“gTLD”) to Complainant’s mark. Fully incorporating a complainant mark, with the only addition being a gTLD, is deemed identical under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶4(a)(i).”). Therefore, the Panel finds Respondent’s <pornhub.pink> domain name to be identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <pornhub.pink> 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. 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, FA1626022 (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 interests 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 “Jurgen Neeme” 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.pink> 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.pink> 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. Attempting to sell a domain name may be evidence of a respondent’s lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Here, Complainant provides screenshots of the <pornhub.pink> domain name’s resolving webpage, which is empty of content, and screenshots of a domain name reseller site, showing the <pornhub.pink> domain name is listed for $4,930. Therefore, the Panel finds that Respondent fails to use the <pornhub.pink> 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).
Thus, Complainant has satisfied Policy ¶¶ 4(a)(ii).
Next, Complainant argues Respondent has an established pattern of bad faith registrations as Respondent has prior UDRP decisions against it. A pattern of bad faith registrations may be established when a respondent has been party to past domain disputes that resulted in the transfer and/or are currently involved in numerous domain name disputes under Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore, the Panel finds bad faith under the provision.”). Here, Complainant provides evidence of another domain name dispute with Respondent (Licensing IP International v. Jurgen Neeme, FA 1897549 (June 22, 2020), ordering transfer of the domain names <pornhub.direct> and <pornhub.xyz>), as well as the decisions of prior domain disputes Respondent has been party to. Therefore, the Panel finds that Respondent registered and used the <pornhub.pink> domain name in bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent is inactively holding the <pornhub.pink> domain name, which is indicative of Respondent’s bad faith. Registering a disputed domain name only to then hold it inactive may be evidence of bad faith under Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (FORUM Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Here, the Panel is reminded of Complainant’s screenshots of the <pornhub.pink> domain name’s resolving webpage, which is only has an error message. Therefore, the Panel finds that Respondent registered and used the <pornhub.pink> domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registering the <pornhub.pink> domain name. To support this assertion, Complainant points to its trademark registrations and worldwide fame along with the fact that Respondent fully incorporate Complainant’s mark and offers the domain name for sale. As such, the Panel determines that Respondent had actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Therefore, Complainant has also satisfied 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.pink> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 24, 2020
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