WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Manwin Licensing International S.à.r.l v. Aleksey Elin, n/a
Case No. D2012-0127
1. The Parties
The Complainant is Manwin Licensing International S.à.r.l of Luxembourg, Luxembourg, represented by Mitchell, Silberberg & Knupp, LLP, United States of America.
The Respondent is Aleksey Elin, n/a of Blagoveschensk, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <pornhubarchive.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2012. On January 25, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2012.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 27, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a major provider of online and video adult entertainment services. It has operated under the trademark PORNHUB since 2007 through its website at “www.pornhub.com”. It has a pending United States trademark application for the word mark PORNHUB filed on August 3, 2011. The Complainant claims to be one of the foremost providers of online adult entertainment services in the United States and worldwide. It claims to have grown from 6 million monthly visits to its website to over 450 million monthly visits in November 2011. The homepage of the website at its domain name features a number of thumbnail images against a black background with primarily orange text.
The disputed domain name was registered on October 28, 2010. The website at the disputed domain name offers online adult videos. It comprises a number of thumbnail images against a black background with orange text and is very similar to, though not identical with, the Complainant's homepage.
5. Parties’ Contentions
The Complainant contends that it owns and controls the common law service mark PORNHUB which has acquired a secondary meaning as an indicator of an exclusive association with the Complainant's business.
- The Complainant's PORNHUB trademark and the services provided by its <pornhub.com> website are known and accessed worldwide.
- The disputed domain name wholly incorporates the Complainant's mark and the addition of the generic non-distinctive term "archive" does not reduce the confusing similarity between the Complainant's mark and the disputed domain name.
- The Complainant has not licensed or authorized the Respondent to use its trademark or to register the disputed domain.
- The Respondent has not been commonly known by the disputed domain name.
- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, nor is it using the disputed domain name in connection with the bona fide offering of goods or services. The Respondent's use of the disputed domain name is to attract Internet users to its website by causing confusion with the Complainant's mark.
- The Respondent's website is not connected with the Complainant and contains no archive material from the Complainant's website.
- It is well settled that registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith use and registration.
- Citing Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478, even if Internet users recognize that they have not arrived at the Complainant's website it is sufficient that the Respondent intended, by causing initial confusion, to draw Internet users to its website.
- The Respondent profits from this confusion by payments from advertisers when users click on the featured videos on the website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has a pending United States trademark application which is dated later than the date of creation of the disputed domain name. However, the Complainant has shown ample evidence that it has had very substantial use and publicity for its unregistered PORNHUB trademark both in the United States and internationally. The Panel finds that the Complainant has established unregistered or common law trademark rights in the trademark PORNHUB and that the disputed domain name is confusingly to the Complainant's trademark. The addition of the generic word "archive" does not serve to distinguish the domain name and is likely to lead Internet users to conclude that the disputed domain name will lead to an archive site for the Complainant's videos.
B. Rights or Legitimate Interests
The Complainant has adduced substantial evidence that by October 2010 the Complainant, its trademark and the services which it offered were well and widely known internationally. There is a high probability therefore that at the time of registering the disputed domain name the Respondent was aware of the Complainant's website and of its rights in its trademark. In this Panel’s view, the only use which has been made of the disputed domain name by the Respondent is to direct to a website bearing substantial similarity to the Complainant's website, and offering services in competition with those of the Complainant. That use indicates a deliberate attempt by the Respondent to trade off the Complainant's reputation. Such use does not constitute a bona fide offering of goods or services, and there is no indication of any other basis upon which the Respondent might be entitled to claim rights or legitimate interests in the disputed domain name. The Respondent has had an opportunity to respond to the Complainant's contentions and has failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In the light of the Complainant's international reputation and the international nature of the industry in which the Complainant and the Respondent operate, in this Panel’s view, it is reasonable to assume that the Respondent had the Complainant and its website in mind when it registered the disputed domain name, and that it did so with the intention of using it to attract to his own website at the disputed domain name, Internet users familiar with or seeking to access the Complainant's website. That assumption is further confirmed by the fact that the Respondent has proceeded to use the disputed domain name in precisely that way.
The Respondent's conduct falls squarely within the circumstance enumerated in paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pornhubarchive.com> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: March 6, 2012