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Pornhub #domain typo ends in UDRP two years after Sedo sale

Adult content provider, Pornhub, uses its trademarked brand to contest the registration of typo domains via the UDRP process.

In a recent case involving the domain Ponhub.com, the domain was naturally ordered to be transferred away from the registrant, Sedo.com and its domain transfer service.

What had ensued is pretty evident: The buyer of Ponhub.com via Sedo, never completed the acceptance of the domain transfer when the domain sale occurred in 2018. The seller appears to have been Xedoc Holding SA, and there is no sale recorded at NameBio.

Full details on the decision for Ponhub.com follow:

Licensing IP International S.à.r.l. v. Transfer Service / Sedo

Claim Number: FA2006001901958

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Transfer Service / Sedo (“Respondent”), Germany.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ponhub.com>, registered with GoDaddy.com, LLC.

PANEL

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.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.

On June 29, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ponhub.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@ponhub.com. Also on July 2, 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. Respondent did however send an email to the Forum, see below.

On July 27, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PRELIMINARY ISSUE: IDENTITY THEFT

Respondents contends that it is not the Registrant of the disputed domain name, see below. The Forum did not receive any further response from the named Respondent and proceeded with the Panel appointment. The Panel has taken the following rules and precedent into account in making a determination on not redacting Respondent’s identity.

According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.).

However, according to Forum Supplemental Rule 15(b), “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added). Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated;” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.” The Panel notes precedent which holds the registrar-confirmed registrant of a disputed domain (per the WHOIS at commencement of the proceeding) the proper respondent. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014).

In the instant case, there has been no request in the Complaint to redact any portion of the decision, nor has there been a Response or an Additional Submission. Consequently, the Panel finds that it is not warranted to redact Respondent’s name and location from the Panel’s decision,

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that it has gained a strong position in the online adult entertainment market. Over the years, and through efforts and acquisitions, Complainant and its corporate affiliates have gained a strong position in the online adult entertainment market, where Internet traffic, including its channeling and control, represents a crucial aspect. One of the keys for Complainant to succeed is its business model. Complainant has contributed to the advent of user-generated adult video portals that aggregate content from a variety of sources, where users can watch, like, share, comment and upload their own videos. Given that several websites operated under Complainant’s brands are free of charge, it causes a very important volume of web traffic (i) to such free of charge websites, as well as (ii) to Complainant’s advertisers and subscription-based websites where the free of charge websites lead to. For instance, in respect of Complainant’s flagship brand PORNHUB, in the year 2019 alone (i) 42 billion visits were made to the PORNHUB.com website (which is 8.5 billion more than the previous year); (ii) the average of daily visitors was 115 million; (iii) more than 39 billion searches were conducted during the year by users worldwide. Complainant’s rights in the PORNHUB mark dates back to at least Mach 2007 based on use of the mark in commerce. The mark was registered in the European Union in 2012.

Complainant alleges that the disputed domain name domain name is confusingly similar to its mark because it consists of a misspelling of the mark, by omitting the letter “r” within the mark, and merely adds the “.com” generic top-level domain (“gTLD”).

According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s PORNHUB mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to pass off as Complainant and redirect users to websites of Complainant’s competitors.

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith domain name registration. Additionally, Respondent disrupts Complainant’s business by hosting links to Complainant’s competitors. By registering a domain name that incorporates a minor misspelling of Complainant’s PORNHUB mark, Respondent is engaged in typosquatting. Lastly, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the PORNHUB mark.

B. Respondent

Respondent failed to submit a Response in this proceeding. In its email to the Forum, Respondent states that it is not the registrant of the disputed domain name and only briefly took control of the domain name in 2018 to assist the actual registrant accept transfer of the domain from its previous registrant, who had sold the domain via Respondent’s Domain Marketplace.

FINDINGS

Complainant owns the mark PORNHUB and uses it to market adult entertainment services.

Complainant’s rights in its mark date back to at least 2012.

Respondent registered the disputed domain name after that date.

Complainant has not licensed or otherwise authorized Respondent to use its mark.

The disputed domain name redirects to a competitor of Complainant.

DISCUSSION

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

The disputed domain name consists of a misspelling of Complainant’s PORNHUB mark, merely omitting the letter “r” within the mark, and adds the “.com” gTLD. The omission of a single letter and a gTLD may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Thus, the Panel finds that the <ponhub.com> domain name is confusingly similar to Complainant’s PORNHUB mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is not licensed or authorized to use Complainant’s PORNHUB mark and is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H – D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Here, the WHOIS information of record notes “Transfer Service / Sedo” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

Respondent uses the disputed domain name to redirect Internet users to Complainant’s competitors. Using a domain name to redirect users to competing third parties is not a bona fide offering of goods or services or a legitimate noncommercial fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service – whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using 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 under Policy ¶4(c)(iii)”). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

According to 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), in general, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.

The date that Complainant puts forward for its registered trademark rights is 2012. According to the WHOIS, the disputed domain name was registered in 2007.

According to 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith.

Hence the Panel must determine whether or not the current registrant had registered the disputed domain name prior to Complainant acquiring its trademark rights.

Complainant alleges, and provides evidence to show, that Respondent registered the disputed domain name in 2018, it having been previously registered by unrelated parties. Indeed, in its email, Respondent confirms it that took control of the disputed domain name in 2018.

Consequently, the Panel finds that Respondent did not merely renew a previous registration and it finds that Respondent’s registration is a new registration for the purposes of the instant proceedings. That registration took place after the Complainant acquired its trademark rights.

Therefore, the registration may have been made in bad faith in the sense of the Policy.

Respondent has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

Indeed, as already noted, Respondent attempts to disrupt Complainant’s business by redirecting users to competing third-party sites. Use of a domain name to redirect internet users to competitors of a complainant may demonstrate bad faith in use and registration. See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).

Further, Respondent had engaged in typosquatting: the disputed domain name is a mere misspelling of Complainant’s mark since it merely omits the letter “r” within Complainant’s PORNHUB mark. Misspelling of a complainant’s mark in order to commercially benefit from a common typing error made by internet users can be evidence of bad faith per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name”). Consequently, the Panel finds bad faith registration and use per Policy ¶ 4(a)(iii).

Finally, Respondent’s has a engaged in a pattern of bad faith domain name registration: Complainant cites UDRP cases in which panels found that Respondent had registered and used domain names in bad faith in the sense of the Policy. The registration of multiple domain names unrelated to a respondent’s business which infringe on famous marks and websites may be evidence of bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith domain name registration per Policy ¶ 4(b)(ii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <ponhub.com> domain name be TRANSFERRED from Respondent to Complainant.

Richard Hill, Panelist

Dated: July 27, 2020


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