Typo-domains can be huge money makers when parked with PPC providers. In the case of Pomhub.com, the domain was registered in 2007 and was parked with adult content and PPC ads, originally at Sedo.
The visual confusion between Pomhub and Pornhub, the adult content monolith, led its owners, Licensing IP International S.à.r.l., to file a UDRP.
Although Pomhub.com was registered in 2007 predating the PORNHUB mark by 5 years, the infringing domain’s fate followed that of other similar cases. Final decision: Transfer the domain Pomhub.com to the Complainant.
Licensing IP International S.à.r.l. v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA2107001954060
Complainant is Licensing IP International S.à.r.l. (“Complainant”), represented by ROBIC, LLP, Canada. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2021; the Forum received payment on July 6, 2021.
On July 7, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the
On July 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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 email@example.com. Also on July 12, 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 August 4, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant 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).
3. Respondents has no rights or legitimate interests in the
4. 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 an unaffiliated and competing website.
5. Respondent registered and uses the
6. Also, Respondent has an established pattern of bad faith registrations due to an extensive history of prior UDRP cases against Respondent that resulted in the transfer of the domain names in question.
7. 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.
8. Furthermore, Respondent is attempting to attract Internet users for commercial gain by diverting Internet users to competing websites.
9. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the PORNHUB mark at the time of registration of the
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PORNHUB mark. Respondent’s domain name is confusingly similar to Complainant’s PORNHUB mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the
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
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. 9, 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 Complainant has rights in the PORNHUB mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the
Complainant argues that Respondent has no rights or legitimate interests in the
Next, Complainant argues that Respondent fails to use the
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues Respondent registered and used the
Complainant contends Respondent has an established pattern of bad faith registrations due to an extensive history of prior UDRP cases against Respondent that resulted in the transfer of the domain names in question. A pattern of bad faith may be established when a respondent has been party to prior UDRP cases that resulted in the transfer of the at-issue domain name. See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(ii)”). Complainant provides a list of prior cases that involved Respondent, all of which resulted in the transfer of the domain name. Therefore, the Panel holds that Respondent registered and used the
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the PORNHUB mark at the time of registering the
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the
Bruce E. Meyerson, Panelist
Dated: August 10, 2021
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Original article: 14 years of PPC earnings ended with a #UDRP :DomainGang
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