WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Licensing IP International S.A.R.L. v. Hitoshi Matsumoto
Case No. D2018-2709
1. The Parties
Complainant is Licensing IP International S.A.R.L. of Luxembourg, represented by SafeNames Ltd., United Kingdom.
Respondent is Hitoshi Matsumoto of Tokyo, Japan.
2. The Domain Names and Registrar
The disputed domain names <pornhub.red>, <pornmd.xyz>, <redtube.kim>, <xnxxpornhub.space>, <xxxpornhub.pw>, <xxxpornhub.space>, <xxxtube8.space>, <xxxyouporn.space>, <youporn.click>, and <youporn.kim> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2018. On November 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 5, 2018.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on December 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 2, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 11, 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.
4. Factual Background
Complainant, Licensing IP International S.A.R.L., is an adult entertainment operator. Complainant operates a number of pornographic adult websites under such brand names as PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE. Complainant owns a number of trademark registrations for its brands in connection with Complainant’s adult entertainment services. These include (i) registrations for PORNHUB in the European Union (No. 010166973) and the United States (No. 4220491), which both issued in 2012; (ii) registrations for TUBE8 in the European Union (No. 010167005) and the United States (No. 4220492), which both issued in 2012; (iii) registrations for PORNMD in the United States (No. 4484877) and Canada (No. TMA936809), which issued in 2014 and 2016 respectively; (iv) registrations for YOUPORN in the European Union (No. 008846421) and the United States (No. 3534702), which issued in 2010 and 2008 respectively; and (v) registrations for REDTUBE in the European Union (No. 006096309) and the United States (No. 3884412), which issued in 2013 and 2010 respectively.
Complainant also owns and operates websites that correlate to each of Complainant’s brands at the following domain names: <pornhub.com>, <tube8.com>, <pornmd.com>, <youporn.com>, and <redtube.com>. Complainant’s websites offer adult content and are visited by over 115 million people each day.
Respondent registered the disputed domain names on the following dates: <pornhub.red> (April 5, 2017), <xxxpornhub.pw> (October 31, 2017), <xnxxpornhub.space> (November 12, 2015), <xxxtube8.space> (November 2, 2015), <pornmd.xyz> (October 24, 2016), <youporn.kim> (October 31, 2017), <xxxyouporn.space> (November 2, 1015), <youporn.click> (October 12, 2017) and <redtube.kim> (October 31, 2017). Respondent has used each of the disputed domain names in connection with websites that provided pornographic content.
On September 4, 2018, Complainant initiated a URS proceeding against the disputed domain names <redtube.kim>, <youporn.click> and <pornhub.red> (Licensing IP International S.A.R.L. v. PrivacyProtect.org, NAF Claim No. FA1804504). At the time, these three disputed domain names were registered under a privacy service, but had previously been registered under the name of Pedro Martinez using an address in Spain. By a decision dated September 19, 2018, these three domain names were suspended. On September 26, 2018, Complainant sent a demand letter to Respondent regarding the disputed domain names <youporn.kim>, <pornmd.xyz>, <xnxxpornhub.space>, <xxxpornhub.pw>, <xxxpornhub.space>, <xxxtube8.space>, <xxxyouporn.space>. At that time, all of these disputed domain names were also registered under the name of Pedro Martinez using an address in Spain. Respondent did not respond.
At some point after Complainant sent its September 26, 2018 demand letter, the contact information for the disputed domain names changed to reflect the name of Respondent Hitoshi Matsumoto using an address in Japan. Communications sent by the Center to Respondent at that address in Japan were returned as undeliverable by DHL, the courier service used by the Center.
5. Parties’ Contentions
A. Complainant
Complainant maintains that it owns and operates a number of well-known adult content websites under the names and marks PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE. Complainant, which is also known under the name Mindgeek, contends that its websites at <pornhub.com>, <tube8.com>, <pornmd.com>, <youporn.com>, and <redtube.com> are extremely popular and are visited by approximately 115 million people each day. Complainant further contends that it owns strong rights in the names and marks PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE in connection with its online adult content services and that it obtained trademark registrations for such marks well before Respondent registered and started using the disputed domain names.
Complainant argues that the disputed domain names are identical or confusingly similar to Complainant’s PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE marks as each of the disputed domain names contain one of Complainant’s trademarks in its entirety. Complainant asserts that the addition of text such as “xxx” or “xnxx” to some of the disputed domain names does not distinguish such disputed domain names as this type of text is commonly associated with the adult entertainment industry.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) owns no rights in the trademarks PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE, (ii) has used each of the disputed domain names in connection with adult entertainment content and, in particular, to facilitate the viewing of pornographic videos for profit, (iii) has used the disputed domain names to misleadingly redirect web users to websites that appear to be similar to those of Complainant, (iv) failed to respond to Complainant’s September 26, 2018 cease and desist letter, and (v) is not commonly known by the names PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE.
Lastly, Complainant asserts that Respondent registered and has used the disputed domain names in bad faith as Complainant had prior registered rights in the marks PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE, and that a search on Google by Respondent would have listed Complainant’s brands and services among the top results of such a search. Consequently, given the goodwill and reputation of Complainant’s marks and Respondent’s use of the disputed domain names with websites that displayed pornographic content, Complainant argues that Respondent likely had knowledge of Complainant’s marks when Respondent registered the disputed domain names. Complainant also asserts that Respondent acted in bad faith by registering and using ten disputed domain names based on Complainant’s marks. Complainant further maintains that Respondent’s bad faith is established by Respondent’s use of the disputed domain names to misleadingly redirect web users to competing websites for commercial gain. Finally, Complainant contends that Respondent has acted in bad faith by using different aliases to hide Respondent’s true identity.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD,
WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns a number trademark registrations for the marks PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE for its adult entertainment services that predate Respondent’s registration of the disputed domain names.
With Complainant’s rights in PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE marks established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain or country code Top-Level Domain such as “.red,” “.space,” “.xyz,” “.kim,” “.click,” and “.pw”) are identical or confusingly similar with Complainant’s marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,
WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names are identical or confusingly similar to Complainant’s PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE marks as the disputed domain names each incorporate one of Complainant’s marks in its entirety. The addition of text such as “xxx” and “xnxx” to some of the disputed domain names does not distinguish such disputed domain names as Complainant’s marks are identifiable in their entirety in such disputed domain names. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE marks and in showing that the disputed domain names are identical or confusingly similar to those trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,
WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, Respondent registered the disputed domain names after Complainant had already established rights and reputation in its PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE marks and services and then started using the disputed domain names with websites offering adult entertainment services akin to those offered by Complainant under its PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE marks and websites. Such use of the disputed domain names does not constitute a legitimate use and is essentially opportunistic.
The fact that the disputed domain names <redtube.kim>, <youporn.click> and <pornhub.red> are currently suspended as a result of the September 19, 2018 URS decision does not alter the conclusion as to these domain names, as Respondent’s only use of these disputed domain names was in connection with websites that provided competing adult entertainment services for Respondent’s own profit. The Panel notes that neither the Policy nor the URS rules prevent a Complainant from pursuing disputed domain names that were the subject of a prior successful URS. See paragraph 13 of the URS Rules (“The URS Determination shall not preclude any other remedies available to the appellant, such as UDRP . . .”). Indeed, because the relief available under the two proceedings are different (a URS can provide temporary suspension of a disputed domain name and a UDRP the transfer or cancellation of a disputed domain name), these remedies are complementary and properly can be used in conjunction by a complainant to address abusive bad faith actions by a respondent. See Yves Saint Laurent v. Khita Kongsansatien,
WIPO Case No. D2016-0496.
Given that Complainant has established with sufficient evidence that it owns rights in the PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE marks, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
In view of Respondent’s actions, and failure to appear in this proceeding, it is easy to infer that Respondent’s registration and use of the disputed domain names, which each consist of one of Complainant’s PORNHUB, TUBE8, PORNMD, YOUPORN and REDTUBE marks, to offer competing adult entertainment services has been done opportunistically and in bad faith.
Given that Respondent appears to have used multiple aliases and privacy services to mask his or her identity in connection with the disputed domain names, has failed to appear or respond in this proceeding and the prior URS proceeding, and has failed to respond to Complainant’s September 26, 2018 demand letter, it seems more likely than not that Respondent opportunistically acquired the disputed domain names based on Complainant’s prior trademarks for the purpose of using such to misleadingly attract consumers to Respondent’s competing websites for Respondent’s own profit. Indeed, as Respondent registered ten disputed domain names all based on Complainant’s trademarks and then used each of the disputed domain names with adult entertainment websites, the very services provided by Complainant, there is little doubt that Respondent was well aware of Complainant and its brands when Respondent registered and used the disputed domain names and did so in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 names <pornhub.red>, <pornmd.xyz>, <redtube.kim>, <xnxxpornhub.space>, <xxxpornhub.pw>, <xxxpornhub.space>, <xxxtube8.space>, <xxxyouporn.space>, <youporn.click>, and <youporn.kim> be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: January 24, 2019
