Licensing IP International S.à.r.l. v. Pawel Marcelak
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Pawel Marcelak (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornhubdownload.online>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2022; the Forum received payment on January 11, 2022.
On January 12, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <pornhubdownload.online> 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 January 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2022 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.online. Also on January 13, 2022, 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 February 8, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Licensing IP International S.à.r.l., specializes within the online adult entertainment market aggregating content from a variety of sources on its platform.
Complainant maintains registration in the PORNHUB mark with a variety of authorities including Canada, European Union, and the United States Patent and Trademark Office (USPTO).
The <pornhubdownload.online> domain name is identical or confusingly similar to Complainant’s PORNHUB mark because it wholly incorporates Complainant’s mark while adding in the generic or descriptive term “download” and the “.online” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <pornhubdownload.online> domain name because Respondent is not commonly known by the domain name. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent’s website diverts users away from Complainant’s website and enables users to make unauthorized reproductions of copyrighted content otherwise found on Complainant’s website in violation of Complainant’s terms of service.
Respondent registered and uses the <pornhubdownload.online> domain name in bad faith because Respondent disrupts Complainant’s business by allowing users to circumvent Complainant’s terms of service allowing users to download content interrupting Complainant’s revenue streams. Further bad faith registration and use is found through Respondent’s current passive holding of the domain name. Respondent acted with actual knowledge of Complainant’s rights in the PORNHUB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PORNHUB trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the PORNHUB trademark.
Respondent’s domain name addressed a website displaying Complainant’s trademark that enabled users to view and download unauthorized reproductions of copyrighted content otherwise found on Complainant’s website in violation of Complainant’s terms of service. Respondent currently holds the <pornhubdownload.online> domain name passively.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its PORNHUB trademark. Such registration, as well as any of Complainant’s other national registrations worldwide, is sufficient to demonstrate Complainant’s rights in the PORNHUB mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <pornhubdownload.online>domain name contains Complainant’s PORNHUB trademark followed by the generic term “download” with all followed by the top-level domain name, “.online.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <pornhubdownload.online> domain name from the PORNHUB trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <pornhubdownload.online> domain name is confusingly similar to Complainant’s trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue 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 <pornhubdownload.online> identifies the domain name’s registrant is “Pawel Marcelak” and the record before the Panel contains no evidence showing that Respondent is commonly known by the <pornhubdownload.online> domain name. The Panel therefore concludes that Respondent is not commonly known by the <pornhubdownload.online> domain name for the purposes of Policy ¶ 4(c)(ii). See 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, Respondent used <pornhubdownload.online> to allow users of its <pornhubdownload.online> website to access content found on Complainant’s website and to download such content in violation of Complainant’s “Terms of Service.” Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Google LLC v. Host Master / 1337 Services LLC, FA 1935183 (Forum Apr. 5, 2021) (Finding the disputed domain name which “encourages and enables users to violate Complainant's YouTube Terms of Service” did not give rise to rights or legitimate interests.).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights or legitimate interests, Respondent used the confusingly similar <pornhubdownload.online> domain name to address a website offering content from Complainant’s website and allowing the download of such content, all in violation of Complainant’s “Terms of Service.” Using a confusingly similar domain name in such manner is disruptive to Complainant’s business and falsely indicates that there may be a sanctioned relationship between Complainant and Respondent when there is no such relationship. Respondent’s prior use of <pornhubdownload.online> demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii) and otherwise. See Google LLC v. Registration Private / Domains By Proxy, LLC / Domain Registrar / SilentRegister.com, FA1920698 (Forum Dec. 18, 2020) (finding bad faith in a disputed domain name that enabled users to violate the terms of service of the Complainant); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
Respondent currently holds the at-issue domain name passively as browsing to the domain name returns an error message rather than Respondent’s previously active <pornhubdownload.online> website discussed elsewhere herein. Inactive holding of a domain name is an also an indication of bad faith under Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 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.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the PORNHUB mark when it registered <pornhubdownload.online> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s well-known PORNHUB trademark and from Respondent’s use of the domain name to inappropriately offer PORNHUB content. Respondent’s registration and use of <pornhubdownload.online> with knowledge of Complainant’s trademark rights therein further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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.online> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 9, 2022
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