WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Licensing IP International S.A.R.L. v. Wei wuang

Case No. D2019-1765

1. The Parties

The Complainant is Licensing IP International S.A.R.L., Luxembourg, represented by SafeNames Ltd., United Kingdom.

The Respondent is Wei wuang, China.

2. The Domain Name And Registrar

The disputed domain name <pornhubvpn.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2019, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2019. The Respondent did not submit any response until that date. Accordingly, the Center notified the Respondent’s default on August 16, 2019.

The Center appointed Christian Schalk as the sole panelist in this matter on August 30, 2019. 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.

The Respondent replied to the Complainant’s contentions only after the due date for Response, on August 29, 2019. According to paragraph 10 of the Rules, the Panel shall ensure that each party is given a fair opportunity to present its case (paragraph 10(b) of the Rules), that the administrative proceeding takes place with due expedition (paragraph 10(c) of the Rules) and that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence (paragraph 10 (d) of the Rules). In this case, the Respondent has not provided any reasons why he was not able to provide his response within the timelines set by the Center. On the other hand, the Response was filed just before the case file was handed over to the Panel and therefore, taking the Respondent’s response into consideration will not impact the due expedition of the proceedings. Therefore, the Panel decides that the Respondent’s response will be taken into consideration.

4. Factual Background

The Complainant is a Luxembourg based company, which operates different adult online tube sites and products under brands such as PORNHUB. According to the Complainant, its PORNHUB brand is established worldwide and is considered as the largest adult entertainment operator. The Complainant’s “www.pornhub.com” website has been launched in March 2007 and receives over 110 million visitors per day. This website has a global ranking on Alexa of 27 out of the top 500 sites. The Complainant has carried out considerably investments in marketing and advertising of his PORNHUB brand, which is illustrated by billboards in Time Square in New York and in Sunset Boulevard in Hollywood, in popular magazines and in product placements in Hollywood film productions. In May 2018, the Complainant launched its own Virtual Private Network (“VPN”) service under the brand VPN HUB.

The Complainant owns several registered trademarks, for instance,

- European Union Trademark Registration No. 010166973 PORNHUB, registration date May 11, 2012, covering services in International classes 38, 41 and 42;

- United States Trademark Registration No. 4220491 PORNHUB, registration date October 9, 2012, covering services in International classes 38, 41 and 42;

- United States Trademark Registration No. 5562994 VPNHUB, registration date September 11, 2018, covering goods in International class 9; and

- International Trademark Registration No. 1399833 PORNHUB, registration date October 18, 2017, covering services in International classes 38, 41 and 42.

The Respondent registered the disputed domain name on July 17, 2018. The website, to which the disputed domain name resolves features pornographic content. The Complainant’s logo is prominently displayed in the center-left of the website.

On April 4, 2019, the Complainant sent a cease and desist letter to the Respondent to which the Respondent did not reply.

5. Parties’ Contentions

A. Complainant

The Complainant states that his trademark rights in the term “PORNHUB” have been confirmed already by a UDRP Panel in Licensing IP International S.À.R.L. c. Jesus Navarro Saracibar, WIPO Case No. DMX2016-0003.

The Complainant states further that the disputed domain name is confusingly similar to its PORNHUB trademark. The Complainant explains in this context that the disputed domain name incorporates its PORNHUB trademark in its entirety, with the addition of the term “VPN” for “Virtual Private Network”. The Complainant argues in this context also that the addition of the term “VPN” after his PORNHUB brand reinforces the confusing similarity as the Complainant’s official “www.vpnhub.com” website helps users to connect securely and safely all around the world, using their favorite websites, such as the Complainant’s “www.pornhub.com” website.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent does not have any trademark rights in this term. The Complainant continues that the Respondent displays mainly images with pornographic content on the website to which the disputed domain name resolves. In addition, this website features also the Complainant’s exact VPN HUB trademark logo on the main page at the top of the website. The Complainant states further that the Respondent used the disputed domain name only to redirect Internet users to its own website and to create confusion among them as to whether the disputed domain name is associated with the Complainant. Therefore, the Complainant believes that such behavior cannot constitute an offering of services in good faith and cites in this context Bright Imperial Ltd. v. Cleiton da Silva Pardim, WIPO Case No. D2013-1548 to support his arguments.

The Complainant asserts the fact that the Respondent did not reply to the Complainant’s cease and desist letter shows further that the Respondent lacks a legitimate interest in the disputed domain name. The Complainant argues also that there is no plausible reason for the registration of the disputed domain name by the Respondent since the Respondent is not known, nor has it ever been known as “PORNHUB” or even “VPN HUB”. The Complainant believes that merely registering the disputed domain name is not sufficient to establish rights or legitimate interests in such a domain name and cites in this context Vestel Electronik Savani ve Ticaret A S v. Mehmet Kahveci, WIPO Case No. D2000-1244. The Complainant argues also that the Respondent has never been authorized by the Complainant to register and use the disputed domain name. According to the Complainant, the Respondent is also not making any legitimate noncommercial or fair use of the disputed domain name since the disputed domain name resolves to the Respondent’s own website and therefore, there is a likelihood of commercial gain, as unsuspecting Internet users could be subject to some advertisements and redirection to competing websites, whenever they click on various images and thus, the Respondent would directly or indirectly make a commercial gain out of the disputed domain name.

Furthermore the Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant argues that its trademark rights in PORNHUB predate the registration of the disputed domain name and that its trademark rights can be found in public trademark databases. The Complainant states also that popular search engines like Google list the Complainant’s brands and services as first hit. The Complainant concludes therefore, that the Respondent must have knowledge of the Complainant when it registered the disputed domain name since it redirected the disputed domain name soon after its registration to a website where adult content was displayed, with the explicit mention of “PornHub, launching a free VPN service”.

The Complainant argues further also that the Respondent intentionally diverted Internet users to its own website by exploiting the confusing similarity between the disputed domain name and the Complainant’s trademark in order to obtain commercial gain. In this context, the Complainant explains that by redirecting Internet users to the Respondent’s website, the Respondent commercially benefits from it through the advertisements and redirection to third-party websites. The Complainant states in addition that the use of the exact logo including its color combination, which the Complainant has created for its brand VPN HUB misleads the general public who are seeking the Complainant’s services. The Complainant believes that Internet users would mistakenly believe that the Respondent’s website to which the disputed domain name resolves is associated with the Complainant and therefore, the Respondent clearly wants to create an impression of association with the Complainant in order to gain trust from Internet users, and ultimately for financial gain via the advertisements and redirection to various competing websites. The Complainant adds in this context that such behavior may cause also disruption of the Complainant’s business and cites in this context RuggedCom, Inc. v. LANstore, Inc., WIPO Case No. D2005-0760 in order to support its arguments.

B. Respondent

The Respondent replied to the Complainant’s contentions as follows:

“hi, sir, sorry to see email,

1. Porn, hub, vpn is a common vocabulary. It is not the same as the trademark of the public prosecutor;

2. The domain names are not sold, do not have malicious registration;

3. Not profit-making websites.”

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the term “PORNHUB”. This term has been registered by trademark offices of many countries of the world, including China where the Respondent apparently lives.

The disputed domain name is confusingly similar to the Complainant’s trademark rights in PORNHUB. As it has been decided by previous UDRP Panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). The disputed domain name features the word Mark PORN HUB in its entirety.

Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis*, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).

As set out in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the addition of the term “VPN” does not prevent a finding of confusing similarity since “VPN” is a commonly known acronym for “Virtual Private Network”.

Furthermore, the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark PORN HUB in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com” is generally disregarded when determining if there is identity or confusing similarity.

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or legitimate interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

It is the consensus view of UDRP Panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0); Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not provided the Panel with any substantial explanations as to the Respondent’s rights or legitimate interests in the disputed domain name.

The Respondent has directed the disputed domain name to a website where mainly images with pornographic content were displayed and apparently services similar to those of the Complainant are offered. In addition, this website features also the Complainant’s exact VPN HUB trademark logo on the main page at the top of the website. Therefore, the Panel is convinced that the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name (see also Bright Imperial Ltd. v. Cleiton da Silva Pardim, WIPO Case No. D2013-1548).

Furthermore, searches for the term “PORNHUB” in a search engine such as Google revealed the Complainant’s services in a prominent manner. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and the Panel can find no plausible circumstances in which the Respondent could legitimately use the disputed domain name (see also Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071).

For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and used in bad faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when it registered the disputed domain name. The Complainant has a very strong presence in the Internet which is not only shown by a very high amount of visitors of its websites every day and its ranking on Alexa, but also in the real world given its advertisements on billboards in well known places such as Time Square in New York and Sunset Boulevard in Hollywood, in popular magazines, and in product placements in Hollywood film productions. Furthermore, the website to which the disputed domain name resolves offers services similar to those of the Complainant and displays even the Complainant’s PORNHUB trademark and logo. In addition, had the Respondent carried out even a basic search in search engines such as Google or Bing, it would have found a high number of references to the Complainant. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when it registered the disputed domain name.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The disputed domain name resolves to a website where pornographic images are displayed and apparently services similar if not identical to the Complainant’s services are offered. Furthermore, this website features logos and layout elements which are very similar if not identical to ones used by the Complainant on its main website. The Panel is convinced that the Respondent has selected the disputed domain name with the purpose to redirect Internet users seeking for the Complainant’s adult services to the website to which the disputed domain name resolves. Internet users often combine trademarks and descriptive words in their search engine to narrow down their search results. There is even a certain likelihood that such combination could consist of the terms such as “PORN HUB” and “VPN” since Internet users may be aware of the fact that the Complainant offers now also a so-called virtual private network.

Once such Internet users reach the website to which the disputed domain name resolves, they could then easily believe that they are either on the Complainant’s website or that this website is at least somehow related with the Complainant while both are not the case. Such behavior is clear evidence of bad faith. It could also be that when they click on any advertisement featured on the Respondent’s website or on any of the images displayed there, that either the Respondent or a third person gets remunerated for every click on either the advertisement or the images. Therefore, the Panel is convinced that the Respondent’s main purpose was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Furthermore, the Respondent’s behaviour could at least partially disrupt the Complainant’s business since Internet users seeking for the Complainant’s website and who are not aware of the fact that they have reached the Respondent’s website instead, may not return to the Complainant’s website and requests the services offered there. The only reason for this situation is the registration of the disputed domain name by the Respondent.

Furthermore, the Respondent continued its bad faith use of the disputed domain name even after receipt of the Complainant’s cease and desist letter. Such behavior is considered by the Panel as further evidence of bad faith (see in this context also News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; see also Aktiebolaget Electrolux AB v. Domains by Proxy, Inc. / HSD LLC, Thomas Keith, WIPO Case No. D2010-0561).

Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record as provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <pornhubvpn.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: September 15, 2019