Licensing IP International S.ŕ.r.l. v. Pierre Springer
Claim Number: FA2303002035836
Complainant is Licensing IP International S.ŕ.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Pierre Springer (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pornhutdeutsch.com>, <pornohutdeutsch.com>, and <pornohutdeutsch.net> (“Domain Names”), registered with Internet Domain Service BS Corp.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on March 15, 2023; Forum received payment on March 15, 2023.
On March 15, 2023, Internet Domain Service BS Corp confirmed by e-mail to Forum that the <pornhutdeutsch.com>, <pornohutdeutsch.com>, and <pornohutdeutsch.net> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 March 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2023 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@pornhutdeutsch.com, postmaster@pornohutdeutsch.com, postmaster@pornohutdeutsch.net. Also on March 16, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Licensing IP International S.ŕ.r.l. is in the online adult entertainment business including operating a website at www.pornhub.com (“Complainant’s Website”). Complainant asserts rights in the PORNHUB mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 4,220,491, registered October 9, 2012). Respondent’s <pornhutdeutsch.com>, <pornohutdeutsch.com>, and <pornohutdeutsch.net> domain names are confusingly similar to Complainant’s PORNHUB mark because they are created by misspelling the mark by adding the letter “o” and changing the letter “b” to “t”, adding the geographic term “deutsch”, and the generic top-level domain (“gTLD”) “.com” or “.net”.
Respondent does not have rights or legitimate interests in the Domain Names. Respondent is not licensed or authorized to use Complainant’s PORNHUB mark and is not commonly known by the Domain Names. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Respondent uses them to misleadingly divert consumers away from Complainant’s Website to Respondent’s own websites, which directly compete with Complainant’s business and pass off as being connected to Complainant through the reproduction of Complainant’s name, device mark and design elements from Complainant’s Website.
Respondent registered and uses the Domain Names in bad faith. Respondent disrupts Complainant’s business as a competitor. Respondent uses the Domain Names to disrupt Complainant’s business by diverting internet uses away from Complainant’s Website to Respondent’s competing websites. Finally, Respondent had actual knowledge of Complainant’s rights to the PORNHUB mark prior to registering the Domain Names evidenced by the fame of Complainant’s mark and the use of the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PORNHUB mark. Each of the Domain Names is confusingly similar to the PORNHUB mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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 rights in the PORNHUB mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,220,491, registered October 9, 2012). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names are confusingly similar to the PORNHUB mark as each of the Domain Names consists of an obvious misspelling of the PORNHUB mark, replacing the “b” with a “t” and in two cases, the addition of the letter “o”. In addition, the Domain Names add the geographic term “deutsch” and either the gTLD “.com” or “.net”. The addition of a geographic term, and a gTLD to a minor misspelling of a mark generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”); see also Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the PORNHUB Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Pierre Springer” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names redirect visitors to websites where Respondent, using the Complainant’s PORNHUB mark and often reproducing the design elements of Complainant’s Website, offers adult videos in direct competition with Complainant. The use of a confusingly similar domain name to divert internet users to a website offering services in competition with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Names, November 4, 2020, Respondent had actual knowledge of Complainant’s PORNHUB mark, which had been in use for 13 years at the time. The Respondent is offering services from the Domain Names that are in direct competition to the Complainant’s services, from websites including two websites with the title “PornHub”, a direct reference to Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith under Policy ¶ 4(b)(iv) to create confusion with Complainant’s PORNHUB Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites offering adult entertainment videos in direct competition with Complainant, and often offered under Complainant’s PORNHUB mark. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel finds Complainant has 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 <pornhutdeutsch.com>, <pornohutdeutsch.com>, and <pornohutdeutsch.net> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 11, 2023
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