Licensing IP International S.à.r.l. v. Itech Me
Claim Number: FA2012001923919
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Itech Me (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <compornhub.com>, registered with Above.com Pty Ltd..
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 December 4, 2020; the Forum received payment on December 4, 2020.
On December 8, 2020, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <compornhub.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 December 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 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@compornhub.com. Also on December 17, 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 January 11, 2021, 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
Over the years, and through efforts and acquisitions, the Complainant and its corporate affiliates have gained a strong position in the online adult entertainment market. Complainant has rights in the PORNHUB mark through Complainant’s registration of the mark with the USPTO and the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 10,166,973, registered May 11, 2012). Respondent’s <compornhub.com> is identical or confusingly similar to Complainant’s PORNHUB mark as it merely consists of a duplication of the “.com” top-level domain (TLD) in front of Complainant’s mark.
Respondent lacks rights or legitimate interests in the <compornhub.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the PORNHUB mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent registered it to misleadingly divert consumers away from Complainant’s website to Respondent’s own competing website.
Respondent registered and uses the <compornhub.com> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website. Furthermore, Respondent had actual knowledge of Complainant’s rights to the PORNHUB mark prior to registering the disputed domain name, evidenced by the famous nature of Complainant’s mark.
Finally, Complainant argues that the Panel should not consider the current creation date of the Domain Name (namely December 10, 2007), but rather between October 26, 2018 and December 8, 2018, such period being the one during which last change of the registrant’s name and organization occurred before the Whois data was replaced, at least since February 5, 2019, by the expression “redacted for privacy”.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for the PORNHUB mark with numerous trademark entities, including the United States Patent and Trademark Office (“USPTO”)(e.g. 4,220,491 registered on October 9, 2012, showing a First Use Date of March 11, 2007).
Complainant has common law rights in the PORNHUB mark through its continuous use in commerce since March 11, 2007.
The <compornhub.com> domain name was originally registered on December 10, 2007, and Respondent acquired it sometime on or after October 26, 2018. Respondent uses the disputed name to compete with Complainant.
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 Complainant’s registration of the mark with the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. No. 10,166,973, registered May 11, 2012). Registration of a mark with the EUIPO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (“Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the PORNHUB mark per Policy ¶ 4(a)(i).
Complainant also claims to have common law rights in the PORNHUB mark through its continuous use in commerce. Common law rights may be established for purposes of Policy ¶ 4(a)(i) by demonstrating secondary meaning, including longstanding use of the mark. See Marquette Golf Club mark v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”) Complainant provides media articles, and the Google Trends report to demonstrate secondary meaning and common law rights in the PORNHUB mark. Therefore, the Panel finds that Complainant has established common law rights in the PORNHUB mark.
Complainant argues Respondent’s <compornhub.com> is identical or confusingly similar to Complainant’s PORNHUB mark as it merely consists of a duplication of the “.com” top-level domain (TLD) in front of Complainant’s mark. The addition of the word “com” and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732459 (Forum June 30, 2017) (“Further, the addition of “com” is particularly unhelpful in creating a distinction between a domain name and a mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights or legitimate interests in the <compornhub.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the PORNHUB mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is 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); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the 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 WHOIS information for the disputed domain name lists the registrant as “Itech Me,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the PORNHUB mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <compornhub.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to misleadingly divert consumers away from Complainant’s website to Respondent’s own competing website. Using a confusingly similar domain name to divert internet users to a respondent’s competing website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant argues that the disputed domain name diverts web traffic away from the <PORNHUB.com> website and brings Internet users to <dirty.games>, a website leading visitors to, and providing, sex simulator games. Complainant argues that such games are competing with content and services of the same or similar nature provided or advertised via the <PORNHUB.com> website. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant has thus also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <compornhub.com> domain name in bad faith as Respondent uses the disputed domain name to disrupt Complainant’s business by diverting internet uses away from Complainant’s website to Respondent’s competing website. Using a confusingly similar domain name to a divert internet users to a respondent’s competing website can demonstrate bad faith per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant provides screenshots of Respondent’s resolving website, arguing that the website provides content and services of the same nature that Complainant provides. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Finally, Complainant contends that Respondent registered the <compornhub.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the PORNHUB mark prior to registration of the disputed domain name based on the famous nature of the mark. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Here, Complainant argues that Complainant’s mark has achieved a significant degree of public recognition in practically all parts of the world where high-speed Internet is available. Complainant provides Google Analytics and Alexa rankings reports that show Complainant’s website receives millions of views per day and is frequently searched for. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith per 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 <compornhub.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 25, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page