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StayHomeHub.com : #PornHub won UDRP using “common law” mark angle

Exactly one year ago, the Covid-19 pandemic sent people staying at home and away from social activities, at a global scale.

The unprecedented effects of the pandemic still continue to affect our day to day interaction.

PornHub, a porn industry behemoth, took wind of the opportunity to reach out to its fanbase and loyal users, telling them to stay at home and help flatten the curve. In doing so, PornHub used the term and assorted hashtag #StayHomeHub.

The self-styled campaign became viral, according to this tweet.

That same day, someone registered the domain name StayHomeHub.com.

It took a full year for PornHub to file a UDRP against the domain. In doing so, PornHub flaunted its famous mark, PORNHUB, and asserted that it has common law rights to the STAYHOMEHUB mark as well.

But why use a common law mark approach?

In April 2020 PornHub filed for the registration of the word mark STAYHOMEHUB and its design mark equivalent. The applications were filed with an intend to use clause and both marks appear to be in suspended status currently. It makes sense that PornHub used the common law mark angle in its UDRP filing against StayHomeHub.com.

The sole panelist at the National Arbitration Forum delivered a finding favoring the Complainant and ordering the domain StayHomeHub.com to be transferred.

Licensing IP International S.à.r.l. v. Marion Qungeli / Khalifa24

Claim Number: FA2102001932792

PARTIES

Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Marion Qungeli / Khalifa24 (“Respondent”), Albania.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stayhomehub.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.

The Honourable Neil Anthony Brown QC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 19, 2021; the Forum received payment on February 19, 2021.

On February 22, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <stayhomehub.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 March 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2021 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@stayhomehub.com. Also on March 2, 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.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On March 25, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.

PARTIES’ CONTENTIONS

A. Complainant

Complainant made the following contentions.

Complainant provides adult entertainment through its flagship brand PORNHUB and its corresponding website. Complainant has common law rights in the STAYHOMEHUB mark based on the use of the mark in commerce. Respondent’s <stayhomehub.com> domain name is identical or confusingly similar to Complainant’s STAYHOMEHUB mark as it includes the STAYHOMEHUB mark in its entirety, merely adding the “.com” generic top-level domain (“gTLD”).

Respondent lacks rights or legitimate interests in the <stayhomehub.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STAYHOMEHUB mark. Additionally, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services as Respondent registered the disputed domain to capitalize opportunistically on Complainant’s STAYHOMEHUB mark and divert consumers.

Respondent registered and uses the <stayhomehub.com> domain name in bad faith. Respondent offers to sell the disputed domain name to Complainant. Additionally, Respondent uses the domain to disrupt Complainant’s business and attract users for commercial gain by redirecting consumers to competing websites.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. Complainant is a Luxembourg company that is a prominent provider of adult entertainment services.

2. The evidence shows that Complainant has established its common law rights in the STAYHOMEHUB mark based on the extensive use of the mark in commerce and at least from March 23, 2020.

3. Respondent registered the <stayhomehub.com> domain name on March 24, 2020.

4. The evidence shows that Respondent registered the disputed domain opportunistically to capitalize on Complainant’s STAYHOMEHUB mark and to divert consumers to its website.

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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the STAYHOMEHUB mark based upon common law rights. Under Policy ¶ 4(a)(i), even if a complainant’s trademark registration and trademark application filing do not predate the registration of a disputed domain name, as in the present case, a complainant can still establish common law rights in the mark. See Plain Green, LLC v. Andy Tang, FA 1722962 (Forum May 22, 2017) (finding that complainant had established that its rights in the PLAIN GREEN mark predated respondent’s registration of the disputed domain name, despite the fact that complainant’s trademark application was filed two month after respondent registered the name). Therefore, it is open to the Panel to find that Complainant need not provide evidence of a trademark registration or trademark application filing date prior to the registration of the disputed domain name if it can establish common law rights to the mark.

The next question that arises is whether Complainant has made out a case for establishing common law rights in the mark. Complainant submits it has common law rights in the STAYHOMEHUB mark due to its use of the mark as part of a promotional campaign to offer free access to the subscription-based version of Complainant’s adult entertainment platform dating back to March 23, 2020. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”); see also Williams v. WhoisGuard Protected, FA 1043246 (Forum Sept. 11, 2007) (finding that a complainant had sufficiently established common law rights where the popularity of complainant’s website identical to complainant’s trademark had allowed complainant to generate substantial revenue from advertisements featured on the site); see additionally Goepfert v. Rogers, FA 861124 (Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”). Here, Complainant submits that it launched an advertising campaign using the STAYHOMEHUB mark, which included replacing the PORNHUB mark on Complainant’s websites with the STAYHOMEHUB mark, redirecting users searching for the “pornhub.com” website to the “pornhub.com/stayhomehub” webpage, and the use of the STAYHOMEHUB mark on Complainant’s social media pages. See Compl. Appendixes 10, 13 & 14. Additionally, Complainant provides evidence of significant web traffic increases on its websites and media recognition of the marketing campaign using the STAYHOMEHUB mark starting on March 23, 2020. See Compl. Appendices 11 & 12. Therefore, the Panel finds that Complainant has sufficiently demonstrated common law rights in the STAYHOMEHUB mark per Policy ¶ 4(a)(i) from at least March 23, 2020.

The next question that arises is whether Complainant has established that the <stayhomehub.com> domain name is identical or confusingly similar to Complainant’s STAYHOMEHUB mark. That case has been made out as the domain name includes the STAYHOMEHUB trademark in its entirety, merely adding the “.com” gTLD. The addition of a gTLD to a mark fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds the disputed domain name is identical to the STAYHOMEHUB mark per Policy ¶ 4(a)(i).

Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take Complainant’s STAYHOMEHUB trademark and to use it in its domain name;

(b) Respondent registered the <stayhomehub.com> domain name on March 24, 2020;

(c) The evidence shows that Respondent registered the disputed domain opportunistically to capitalize on Complainant’s STAYHOMEHUB mark and to divert consumers to its website;

(d) Respondent has engaged in these activities without the consent or approval of Complainant;

(e) Complainant contends that Respondent lacks rights or legitimate interests in the <stayhomehub.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the STAYHOMEHUB mark. When no response is submitted, 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 Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark can prove that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information provided by the registrar lists the registrant as “Marion Qungeli / Khalifa24.” See Amend. Compl. Appendix 2. Likewise, no other evidence suggests that Respondent was authorized to use the STAYHOMEHUB mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);

(f) Complainant argues that Respondent fails to use the <stayhomehub.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent opportunistically registered the disputed domain name in order to capitalize on Complainant’s STAYHOMEHUB mark unfairly and divert consumers. The use of a disputed domain name to trade off a complainant’s mark and divert consumers does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant argues that Respondent registered the disputed domain name the day after the Complainant announced the launch of its STAYHOMEHUB internet campaign in order to capitalize on the recognition and goodwill in Complainant’s mark by diverting consumers seeking Complainant’s website to third-party websites offering competing adult entertainment services. See Compl. Appendix 13. Therefore, the Panel finds that Respondent does not 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).

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

First, Complainant argues Respondent registered and uses the <stayhomehub.com> domain name in bad faith as Respondent offers to sell the domain to Complainant. An offer to sell a disputed domain name may demonstrate bad faith per Policy ¶ 4(b)(i) if the respondent intended to make such an offer when registering the domain name. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also Deutsche Bank AG v. Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was registered in bad faith because of the short time frame between the respondent’s registration and the unsolicited offer of sale to the complainant). Here Complainant provides evidence that Respondent offered to sell the disputed domain name to Complainant roughly two weeks after it was registered. See Amend. Compl. Appendix 2. Complainant contends that Respondent must have registered the disputed domain name with the intent to sell it to Complainant because the domain name was registered one day after Complainant announced the STAYHOMEHUB marketing campaign. See Compl. Appendices 2, 10 & 14.The Panel agrees. Thus, the Panel finds bad faith per Policy ¶ 4(b)(i).

Secondly, Complainant argues Respondent registered and uses the <stayhomehub.com> domain name in bad faith as Respondent uses the disputed domain name to disrupt Complainant’s business and attract consumers for commercial gain by redirecting internet users to third-party websites that offer competing services and possibly disseminate malware. Disrupting a complainant’s business and attracting users for commercial gain by using a confusingly similar domain name to redirect internet users to a competing website demonstrates bad faith per Policy ¶¶ 4(b)(iii) and (iv). 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).”); see also 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)). Here, Complainant provides screenshots showing the disputed domain name resolves to webpages offering competing adult entertainment services and that require users to click on various “push” notifications which are likely malware. See Compl. Appendices 13 & 16. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the STAYHOMEHUB mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

Complainant has thus made out the third of the three elements that it must establish.

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 <stayhomehub.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honourable Neil Anthony Brown QC

Panelist

Dated: April 5, 2021


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