Licensing IP International S.à.r.l. v. Darryl Richards
Claim Number: FA2006001900939
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Darryl Richards (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornnhub.com> (“the Domain Name”), registered with Gandi SAS.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2020. The Forum received payment on June 18, 2020.
On June 19, 2020, Gandi SAS confirmed by e-mail to the Forum that the <pornnhub.com> Domain Name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@pornnhub.com. Also on June 24, 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 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
The Domain Name is confusingly similar to Complainant’s mark, as it features an intentional misspelling of the PORNHUB mark along with the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name and Complainant has not authorized Respondent to use the PORNHUB mark. Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate or noncommercial fair use. Rather, Respondent uses it to divert Internet users away from Complainant’s website to its own website for commercial gain.
Respondent registered and uses the Domain Name in bad faith. Respondent’s primary use is to disrupt Complainant’s business by diverting Internet users to a competing website for financial gain. Respondent’s act of typosquatting is further evidence of bad faith and Respondent must have been aware of Complainant’s rights in the PORNHUB mark at the time Respondent acquired the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 the 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 has shown that it has rights in the PORNHUB mark through registration of the mark with multiple trademark agencies, including the USTPO (e.g., Reg. No. 4,220,491, registered on September 10, 2012).
The Panel finds that Respondent’s <pornnhub.com> Domain Name is confusingly similar to Complainant’s mark, as it comprises a misspelling of the PORNHUB mark along with the addition of the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Name was first registered, in the name Super Privacy Service LTD c/o Dynadot, on October 23, 2007, prior to Complainant’s first registration of its PORNHUB trademark. The Domain Name currently resolves to a website with adult content.
Complainant submits that, in determining the date when Respondent acquired and became registrant of the Domain Name, the Panel should not consider the October 2007 date, but rather a date between November 21, 2018, and December 6, 2018, when various changes occurred which signal a contemporaneous change of registrant during that period, namely changes of registrar, name server and IP address, concomitant with a change of use from a landing page with advertising links to a website with adult content (Complaint Appendix 2).
In the absence of any Response, the Panel accepts this submission and finds that Respondent became the registrant of the Domain Name long after Complainant had registered the PORNHUB mark and had established a significant reputation in it. The Domain Name is a typosquatted version of Complainant’s mark.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect
of the Domain Name.
In light of the circumstances set out in relation to the previous element, the Panel finds that Respondent was well aware of Complainant’s PORNHUB mark when registering the Domain Name and did so with intent for commercial gain to misleadingly divert Complainant’s customers.
Further, typosquatting is independent evidence of bad faith registration and use of a domain name per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015).
The Panel finds that Respondent registered and is using the Domain Name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pornnhub.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 24, 2020
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