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#Pornhub typosquatter paid a small fortune for #domain but lost the #UDRP

The typosquatter of a Pornhub domain paid a small fortune to acquire it.

The registrant of Ponrhub.com alleges he spent 7,241 EUR in late 2018 to get the domain in the aftermarket – about $7,946 USD.

In the ensuing UDRP filed by Licensing IP International S.à.r.l., the Respondent claims that he forwarded the domain to Pornhub.com to avoid any confusion, therefore he should be ok.

Pretty crazy, having spent a small fortune to acquire a popular adult destination domain typo!

The sole panelist at NAF pointed out the famous mark of PORNHUB refutes any argument of confusion and indicates bad faith use, ordering the Respondent to transfer the domain Ponrhub.com to the Complainant.

The same Respondent lost another Pornhub domain, Pornhub.CO, recently. That one cost him $72k to acquire!

Full details on this decision follow.

Licensing IP International S.à.r.l. v. Priit Eiber

Claim Number: FA2002001882530

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Priit Eiber (“Respondent”), Estonia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ponrhub.com>, registered with NameCheap, Inc..

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.

Dr. Reinhard Schanda as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 8, 2020; the Forum received payment on February 8, 2020.

On February 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <ponrhub.com> 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 February 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 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@ponrhub.com. Also on February 18, 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.

A timely Response was received and determined to be complete on March 9, 2020.

On March 12, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it operates numerous websites featuring adult-oriented content. Complainant has rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012). Respondent’s <ponrhub.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark by either transposing.

Complainant further contends that Respondent has no rights or legitimate interests in the <ponrhub.com> domain name and that Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely diverting Internet users seeking Complainant to unaffiliated and competing websites.

Finally Complainant contends that Respondent has registered and is using the <ponrhub.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by diverting Internet users to third party websites that may present a false impression of affiliation with Complainant. Furthermore, Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to competing websites. Respondent is typosquatting. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the PORNHUB mark at the time of registration.

B. Respondent

Respondent contends that he purchased the <ponrhub.com> domain name on December 28, 2018 for 7241 Euros. To avoid confusion among Internet users, Respondent redirected all SEO/Google traffic would go to Complainant’s legitimate domain name.

In this regard the Panel notes the <ponrhub.com> domain name was registered on February 16, 2014.

Respondent contends that he did not register the disputed domain name in bad faith, as the domain name marketplaces have numerous domain names available that are based on Complainant’s mark. To Respondent’s best knowledge, Complainant has not made any claims against the Registrars for offering these domain names for sale. Additionally, Respondent did not reference the Complainant on the disputed domain name and, upon learning of the dispute, removed all content from the <ponrhub.com> domain name

FINDINGS

The Panel finds that:

(1) The domain name <ponrhub.com> is confusingly similar to Complainants’ common law trademarks.

(2) The Respondent has not established rights or legitimate interests in the domain name <ponrhub.com>.

(3) The Respondent has registered and is using the domain name <ponrhub.com> in bad faith.

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 claims rights in the PORNHUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,491, registered Oct. 09, 2012). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).

Complainant argues Respondent’s <ponrhub.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells Complainant’s mark by either transposing. While not argued by the Complainant, the Panel notes the Respondent includes the “.com” generic top-level domain (gTLD). Introducing spelling mistakes of the mark into a disputed domain name by switching two existing letter within the mark and adding a gTLD may not be sufficiently distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i). See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.). Here, Complainant argues the letters “n” and “r” are merely switched and this change is insufficient to distinguish the disputed domain name from Complainant’s PORNHUB mark. Therefore, the Panel finds Respondent’s <ponrhub.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.

According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

Complainant argues that Respondent has no rights or legitimate interests in the <ponrhub.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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)”). In this regard the Panel notes the WHOIS of record identifies the Respondent as “Priit Eiber” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <ponrhub.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

Next, Complainant argues that Respondent fails to use the <ponrhub.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to divert Internet users to nonaffiliated and competing third party website. Using a disputed domain name to redirect to divert Internet users seeking a complainant goods or services to a third party websites may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Here, Complainant provided screenshots of the various third party websites the disputed domain name would redirect to, each containing adult oriented material that compete with Complainant’s services. Therefore, the Panel finds that Respondent fails to use the <ponrhub.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

Registration and Use in Bad Faith

Complainant argues Respondent registered and used the <ponrhub.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business by diverting Internet users to third party websites that may present a false impression of affiliation with Complainant. Registering a disputed domain name for the purpose of diverting Internet user seeking a complainant’s services to websites offering competing service may be evidence of bad faith under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, Complainant provided screenshots of the various third party websites the disputed domain names would redirect to, each containing adult oriented material that compete with Complainant’s services. Therefore, the Panel finds that Respondent registered and used the <ponrhub.com> domain name in bad faith under Policy ¶ 4(b)(iii).

Next, Complainant argues Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to competing websites. Registering a disputed domain name to redirect Internet users to competing service for commercial gain may be evidence of bad faith under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”). Here, Complainant provided screenshots of the various third party websites the disputed domain names would redirect to that contain adult oriented material that compete with Complainant’s services, which Complainant asserts provide some financial gain to Respondent. Therefore, the Panel finds that Respondent registered and used the <ponrhub.com> domain name in bad faith under Policy ¶ 4(b)(iv).

Furthermore, Complainant argues Respondent is typosquatting and this act is further evidence of Respondent’s bad faith registration and use. Introducing common spelling error into a disputed domain name that take advantage of Internet user’s inadvertent typographical errors when entering a domain name may be evidence of bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Here Complainant argues the transposition of the letter “n” and “r” in the <ponrhub.com> domain name are common mistakes and Respondent is seeking to take advantage of these errors. Therefore, the Panel finds Respondent registered and used the <ponrhub.com> domain name in bad faith under Policy ¶ 4(a)(iii).

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Dr. Reinhard Schanda, Panelist

Dated: March 16, 2020


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