WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Manwin Licensing International S.à.r.l. v. CUIYC Internet Services, Inc.
Case No. DCC2012-0003
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 CUIYC Internet Services, Inc. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <porn-hub.cc> is registered with PSI-USA, Inc. dba Domain Robot.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2012. On March 19, 2012, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot transmitted a request for registrar verification in connection with the disputed domain name. On March 19, 2012, PSI-USA, Inc. dba Domain Robot 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 March 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2012.
The Center appointed Antony Gold as the sole panelist in this matter on April 19, 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, Manwin Licensing International S.à.r.l., is a corporation existing under the laws of Luxembourg.
The Complainant is the registered owner of the domain name <pornhub.com>. The Complainant describes itself as one of the foremost providers of online adult entertainment services and its website “www.pornhub.com” as one of the premier adult-orientated, user-generated content websites. The Complainant states that, according to one particular web metrics company, its website is ranked as the 58th most popular website in the United States and the 77th most popular worldwide, with very large numbers of monthly visits - over 450,000,000 in November 2011 alone. The Complainant says that it has spent substantial sums on advertising the website although no details are disclosed. It also says that it has received “extensive international media coverage”. Copies of articles are provided by the Complainant in support of this contention, some of which do indicate that, in the field of adult content, the Complainant’s website is very well known.
The Complainant states that it has continuously used the name “Pornhub” on its website since 2007 and that it has filed an application for the United States (U.S.) service mark PORNHUB, serial number 85388929. The application was made on August 3, 2011, for international classes 38 and 41 in respect of adult entertainment services.
The Complainant states that it became aware of the disputed domain name <porn-hub.cc> on or about November 15, 2011. The disputed domain name was registered by the Respondent on December 23, 2010.
The Complainant’s website features a black background, with primarily orange text. Further, the word “Pornhub” is displayed in the top left-hand corner of the screen, with “Porn” in white, and “hub” on an orange background. The Complainant states that the Respondent’s website “www.porn-hub.cc” mimics the design and layout of the Complainant’s website and the form in which the word “Pornhub” is presented. The Complainant has provided screen prints of both websites and the only readily discernible difference is that, on the Respondent’s website, the letters “.cc” appears after the word “Pornhub” and there is a very small hyphen between “Porn” and “hub”.
The Panel does not have any information about the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that:
(i) the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights;
In support of its contention that the disputed domain name is confusingly similar to the PORNHUB mark, the Complainant refers to, amongst other decisions, InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075 in which the panel stated that “The addition of a hyphen and .com are not distinguishing features”. The Complainant asserts that the disputed domain name incorporates the Complainant’s mark in its entirety and is therefore identical or confusingly similar to the Complainant’s common law service mark.
The Complainant does not have any registered trade mark for PORNHUB. However, in support of its contention that it has enforceable unregistered rights in PORNHUB, the Complainant refers to, amongst other decisions, Dreamstar Cash S.L. v. Brad Klarkson, WIPO Case No. D2007-1943 in which the panel stated that “[t]here is no doubt that unregistered trade mark or service mark rights may qualify as ‘rights’ in a trade mark or service mark, for the purposes of paragraph 4(a)(i) of the Policy”. It also refers to Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 where the panel stated that “To establish common law trade mark, the Complainant must show that the name has achieved sufficient secondary meaning or association with the Complainant”.
In support of its assertion that its service mark has achieved “sufficient secondary meaning or association with the Complainant”, the Complainant states that it has owned and operated its website “www.pornhub.com” since 2007 and that, in addition to receiving extensive international media coverage, it has expended “millions of dollars” on advertising and receives hundreds of millions of visitors from around the world.
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name;
The Complainant asserts that the burden is on the Respondent to establish that it has rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name as it has not been commonly known by the disputed domain name and the Complainant has never authorised the Respondent to register the disputed domain name <porn-hub.cc> or any domain name containing the phrase “Pornhub”. The Complainant further states that it has never licensed the Respondent to use the word “Pornhub” or any variation of it.
The Complainant also asserts that the Respondent has not used, or made preparations to use, the
<porn-hub.cc> disputed domain name in connection with any bona fide offering of goods or services. It says, further, that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges that the reason the Respondent is using the disputed domain name is to confuse those seeking the Complainant’s website into visiting the Respondent’s website. The Complainant asserts that the Respondent has done so in order to appropriate and piggyback on the goodwill of the Complainant’s website and well-known service mark, so as to generate income.
The Complainant draws attention to the decision in F. Hoffman-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422 in this respect (albeit, this decision is more relevant to bad faith – see below).
(iii) the disputed domain name was registered and is being used in bad faith.
The Complainant draws attention to paragraphs 4(b)(iii) and (iv) of the Policy and the circumstances listed there which are to be considered as evidence of registration and use of a domain name in bad faith.
The Complainant states that the Respondent’s use of its service mark disrupts its business, as potential customers of the Complainant, and visitors to its website, are diverted to the Respondent’s website. The Complainant draws attention to Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited,
WIPO Case No. D2002-0478 in which the panel indicated that registration and use of a domain name in order to
re-direct Internet users to websites of competing organisations may constitute bad faith use and registration.
The Complainant states that the Respondent must have been aware of the Complainant’s website and that the disputed domain name was registered in bad faith so as to attract Internet users to the Respondent’s competing website under the false impression that it is sponsored, affiliated or endorsed by the Complainant. The Complainant refers to Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648 in which the panel stated, in finding bad faith “the domain name is obviously connected with the Complainant, its products and services. Therefore, the Panel finds that its use by someone with no connection with the Complainant supports a finding of opportunistic bad faith”.
The Complainant also refers to Harry Winston Inc. and Harry Winston, S.A. v. Harry Pluviose, WIPO Case No. D2010-0210 in support of its statement that the Respondent further acted in bad faith as it deliberately chose a domain name to cause initial interest confusion with the Complainant’s mark, so as to ensure that a greater number of people would be drawn to its, the Respondent’s website.
The Complainant goes on to claim that the Respondent must be profiting from the confusion of visitors to the Respondent’s website as it features videos displayed with advertising. The Complainant refers to
F. Hoffman-La Roche AG v. Transure Enterprise Ltd.,
WIPO Case No. D2008-0422 in this respect.
The Complainant finally states that that the use of the Complainant’s mark by the Respondent for a website that directly competes with that of the Complainant is a further indication of the Respondent acting in bad faith. The Complainant refers the Panel to National City Corporation v. MH Networks, LLC, WIPO Case No. D2004-0128 in respect of this assertion.
For all these reasons the Complainant says that the Respondent’s registration and use of the disputed domain name <porn-hub.cc> is in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Policy provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
For the purpose of assessing whether the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights, in this case a comparison must be made between the disputed domain name (<porn-hub.cc>) and the Complainant’s domain name (<pornhub.com>) as well as with the Complainant’s mark PORNHUB. It is widely accepted by UDRP panels that the “.com” suffix – and, by analogy, the “.cc” suffix - is disregarded for the purpose of making such a comparison.
In this case, the distinctive element of the disputed domain name is clearly the name “pornhub” which is identical to the Complainant’s common law service mark, PORNHUB. The disputed domain name incorporates the Complainant’s mark in its entirety and the addition of a hyphen between the words “porn” and “hub” does not prevent the disputed domain name from being confusingly similar to the common law service mark.
Whilst the Complainant has, fairly recently, filed an application for the U.S. service mark PORNHUB the pending trade mark application does not equate to a right which is enforceable, against third parties, as at the time this Complaint was filed. It would have been helpful for the Complainant to have made some attempts to substantiate its assertions about its advertising spend. However, the press articles which mention its website coupled with the details supplied about traffic to its website establish in this Panel’s view that it has goodwill and reputation in the unregistered service mark PORNHUB and in its website “www.pornhub.com” and therefore can be said to have common law rights in that name.
As a result, the Panel concludes that paragraph 4(a)(i) of the Policy is satisfied. The Complainant has common law rights in the service mark PORNHUB and the disputed domain name is confusingly similar to that mark.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complaint but there is nothing in the material submitted by the Complainant to suggest that the Respondent is known by the name “Pornhub”. Further, there is no evidence to suggest that the Respondent is authorised and/or entitled to use the PORNHUB mark and the Respondent has not availed itself of the opportunity to suggest otherwise. Accordingly, the Panel finds that the Respondent has no rights in the disputed domain name.
Further, the Panel does not consider that the Respondent has legitimate interests in the disputed domain name as it is not using it in connection with a bona fide offering of good or services. In the absence of any response from the Respondent, the Panel accepts that the disputed domain name has been registered by the Respondent solely to benefit from the Complainant’s goodwill and reputation in its website. The Panel considers that the Respondent’s close copying of the Complainant’s logo and the design and layout of its website is further evidence of the Respondent not using the disputed domain name in connection with a bona fide offering of goods or services.
As a result, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive examples of bad faith registration and use, any of which, if found by the Panel to be present, shall be evidence of registration and use of the disputed domain name in bad faith.
Of particular relevance in this instance is paragraph 4(b)(iv) which states that where the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, it shall be taken as evidence of the registration and use of the disputed domain name in bad faith.
As already discussed above, the Panel considers that the Respondent’s use of the disputed domain name creates a likelihood of confusion with the Complainant’s domain name and common law service mark PORNHUB. In the absence of any evidence by the Respondent, the Panel agrees with the Complainant that the Respondent’s primary use of the disputed domain name is to confuse and mislead potential customers of, and visitors to, the Complainant’s website. The use by the Respondent’s website of a style, layout and logo which is almost identical to that of the Complainant’s website is plainly for commercial gain.
Accordingly, the Panel agrees with the Complainant’s contention that the Respondent is using the disputed domain name in the manner as described in paragraph 4(b)(iv) of the Policy and that the disputed domain name has been both registered and 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 <porn-hub.cc> be transferred to the Complainant.
Antony Gold
Sole Panelist
Dated: May 1, 2012