PornHub domains: Rare #UDRP loss in PornGamesHub.com decision

The PornHub trademark is world-famous and Licensing IP International S.à.r.l., operators of the mark, rarely loses a UDRP case.

This time, the culprit was the domain PornGamesHub.com, a portal or “hub” of “porn games.” Note: The web site is full of explicit content.

The Complainant alleged that the domain is too close to the PORNHUB mark; as we can see, their logo design is also similar to that of PornHub.com:

Registered in 2016, PornGamesHub.com lists a Czech individual as its registrant. The domain is at GoDaddy.

A three member panel at the Forum (NAF) handled the UDRP. The Respondent noted, via its legal counsel, that the Complainant’s allegations are not true, and in part:

Respondent has legitimate interests in the porngameshub.com domain because Respondent is commonly known by the disputed domain name. Additionally, Respondent uses the disputed domain name in connection with a bona fide offering of goods and services because the resolving webpage is used for its legitimate business as a hub for adult-oriented games.

Two out of the three panelists agreed that the domain is composed of “generic” keywords and that the Respondent has rights or legitimate interests in the domain.

Final decision, by a 2-1 majority: Deny transfer of the domain PornGamesHub.com to the Complainant.

The domain transfer was denied.

Licensing IP International S.à.r.l. v. Stanislav Balan

Claim Number: FA2111001973009

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Stanislav Balan (“Respondent”), represented by Vladimir Guržij, Czech Republic.

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

John J. Upchurch, Dr. R. Hill and J. Bridgeman comprise the Administrative Panel, the Presiding Panelist being John J. Upchurch.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 11, 2021; the Forum received payment on November 11, 2021.

On November 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the 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 November 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 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@porngameshub.com. Also on November 18, 2021, 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.

A timely Response was received and determined to be complete on January 3, 2022.

On January 11, 2022, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed John J. Upchurch as Presiding Panelist and Dr. R. Hill and J. Bridgeman as Panelists.

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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant, Licensing IP International S.à.r.l., provides adult-oriented material. Complainant has rights in the PORNHUB mark based upon registration with the United States Patent and Trademark Office

(“USPTO”) (e.g., 4,220,491, registered Sept. 10, 2012). See Compl. Annex 3. Respondent’s domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the descriptive word “games” and the “.com” generic top level domain (“gTLD”).

2. Respondent does not have rights or legitimate interests in the domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s PORNHUB mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain to pass itself off as affiliated with Complainant.

3. Respondent has registered and uses the domain name in bad faith because Respondent uses the disputed domain name to create bad faith attraction for commercial gain. In addition, Respondent had constructive and/or actual knowledge of Complainant’s rights in the PORNHUB mark, which is further evidence of its bad faith.

B. Respondent

1. The domain name is not confusingly similar to Complainant’s mark because the name is comprised of generic words which Complainant does not have exclusive rights to in every context.

2. Respondent has legitimate interests in the domain because Respondent is commonly known by the disputed domain name. Additionally, Respondent uses the disputed domain name in connection with a bona fide offering of goods and services because the resolving webpage is used for its legitimate business as a hub for adult-oriented games.

3. Respondent did not register and does not use the domain name in bad faith because Respondent registered the name to reflect the adult-oriented games that it provides, not to disrupt Complainant’s business.

FINDINGS

By majority, with James Bridgeman SC dissenting, this Panel, having considered the submissions of the Parties and having deliberated on same finds as follows:

1. Respondent’s domain name is confusingly similar to Complainant’s PORNHUB mark.

2. Respondent does have rights or legitimate interests in the domain name.

3. The Panel’s finding in favor of Respondent on the element of legitimate interests is dispositive; hence, the Panel declines to rule on the element of bad faith registration and use.

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.

Identical and/or Confusingly Similar

Complainant asserts rights in the PORNHUB mark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides evidence of its registration with the USPTO for the PORNHUB mark (e.g., 4,220,491, registered Sep. 10, 2012). See Compl. Annex 3. Therefore, the Panel may find that Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).

The domain name incorporates Complainant’s PORNHUB mark in its entirety and merely adds the descriptive term “games” and the “.com” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, adding a descriptive word does not create a sufficient distinction. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

Rights or Legitimate Interests

By majority, with James Bridgeman SC dissenting, this Panel, having considered the submissions of the Parties and having deliberated on same finds as follows.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states the following, in pertinent part:

“2.10.1 Panels have recognized that merely registering a domain name comprised of dictionary word or phrase does not by itself automatically confer rights or legitimate interest on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrable intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.

“For example, a hypothetical respondent may well have a legitimate interest in the domain name if it uses the domain name for a website providing information about the fruit or the color orange. … “

In the view of the majority, this case falls squarely in this category: the domain name consists of descriptive terms that are used precisely in connection with their dictionary-related meaning.

Complainant alleges that Respondent is involved in other related activities. Respondent denies that. But, even if we accept Complainant’s allegation, this reinforces Respondent’s claim of legitimate interests.

Accordingly, the Panel finds that Respondent does have rights or legitimate interests in the disputed domain name, and Complainant fails as to this critical element.

Registration and Use in Bad Faith

Given that the Panel’s finding as to the second element is dispositive, the Panel declines to address the third element of the Policy.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.

John J. Upchurch as Presiding Panelist, Dr. R. Hill and J. Bridgeman, as Panelists.

Dated: January 17, 2022

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