PornHub / YouPorn URS Decision is Surprising

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A company called Licensing IP International S.à r.l. filed a URS complaint at the National Arbitration Forum against several new gTLD domain names. The complainant operates a number of popular adult websites, including PornHub, YouPorn, Tube8, RedTube, PornMD, and SexTube. The domain names subject to the URS filing include pornhub.plus, pornhubteen.top, pornmd.icu, pornohub.bid, redtube.bike, redtube.ink, redtube.vet, sextube.ink, tube8.blue, tube8.wtf, xxxyouporn.top, and youporn.guru.

Had I simply looked at the domain names in advance of the decision, I would have guessed the complaint would be resolved in favor of the complainant. It looks like the keywords match some of the brand names that are operated by the complainant. Surprisingly to me, the URS panelist ruled against the complainant in this proceeding.

Here’s an excerpt from the decision covering why the panel did not rule in favor of the complainant:

“The Panel notes that Respondent operates adult websites from all the disputed domain names, which deal with explicitly sexual material. In this Panel’s opinion, under the circumstances of the case available for review under the URS procedure, the mere fact that the domain names incorporate Complainant’s marks and resolve to websites offering identical and/or similar services is not automatically sufficient to prove that Respondent’s use does not constitute a bona fide offering of services.

Given the descriptive/suggestive nature of Complainant’s marks and the higher standard set forth under the URS Policy, there is no basis for Panel to find in favor of Complainant. Particularly, it is not evident from the records that Internet users would be misled into believing that the services offered through the disputed websites originate from Complainant or that Respondent’s activity is affiliated or endorsed by Complainant.”

I also found this part of the decision to be amusing given the adult nature of the domain names (emphasis added by me):

“While in a number of cases previous Panels found that registration of multiple domain names incorporating third parties’ trademarks constitutes bad faith registration, this Panel finds the scope of case review available under the URS Policy insufficient to resolve the matter. The conclusion on the third element of the Policy would require more in-depth analysis and additional evidence supporting bad faith registration and use, particularly that related to trademarks’ reputation and fame leading to the likelihood of confusion.”

I don’t pay all that much attention to URS proceedings, but it was surprising to me that the complainant lost this URS proceeding. Feel free to do your own in-depth analysis as you wish.

13 COMMENTS

  1. Anytime a complaintant is TOO CHEAP to have a 3 member panel, they deserve whatever unjust consequence they get!

    I never have and never will have sympathy for CHEAP and STUPID! You get what you pay for. lol

    If it was important enough to go after, it is mandatory to do it RIGHT and not on the CHEAP!
    DUMB! DUMB! DUMB!

    Sorry to say it, but we get a 100% prejudiced, biased and unbridled panel that has to answer to nobody but their own opinions etc. vs what might be the legal standard. with a one member panel.

    • You can not request a 3 member panel with the URS. The URS was designed to be a less expensive and quicker alternative to the UDRP to remedy an obvious case of infringement with the new gTLD domain names.

      Maybe they should have filed a UDRP instead, where a 3 member panel can be requested, but they may have felt this was a slam dunk and may not have wanted to spend more money on domain names it does not want.

      If someone bought DomainKing.blog or RickSchwartz.blog and put domain industry content on each, would you really want to spend thousands of dollars on a UDRP filing for these domain names when you could spend a few hundred on a URS assuming you think it’s a “slam dunk?”

      • “If someone bought DomainKing.blog or RickSchwartz.blog and put domain industry content on each, would you really want to spend thousands of dollars on a UDRP filing for these domain names when you could spend a few hundred on a URS assuming you think it’s a “slam dunk?”

        Not even a thought for me.

        I do what it takes to WIN and PROTECT and not take any chances.
        I don’t want to spend the $$$ but that’s life. Do it right or not at all.

        It’s part of the cost of doing business and since they did it on the CHEAP, they got burned! A risk I would never take.

          • Ask Howard.
            I was pretty upset and outraged when I saw it. Still am!

            My thinking on this has been very clear for many many years and he represented me many times. ALWAYS with a 3 member panel. Always.

            So I am not sure what the motive behind that was cuz he knew better and was not in MY best interest as filed.

            It was too late when I found out and THAT was the reason I lost. imho
            Not a happy camper and I never said a word about it until now. But you asked, so there it is.

            That was a case that should have been won.
            And it was IMPORTANT to win.

            That’s why I used a different attorney for Queen.com
            I could not take the risk again on something so valuable after losing a case that should have been a slam dunk.

        • In my opinion, the complainant shouldn’t have to spend the extra money on 3 panelists on a slam dunk type of UDRP for a domain name that isn’t even wanted.

          From what I see, respondents that want to win a UDRP (and have counsel) tend to choose to pay for 3 panelists, so it would seem that is a better way for a registrant to win than complainant.

  2. These decisions are all over the board most of the time. One panel may find one decision but another panel would find a whole different decision. It seems like most of the time these decisions are based purely off opinion. Sure seems like the system needs to be overhauled.

    I do agree with Rick that they should have chosen a 3 member panel but wonder if any complaintant even knows if they can choose that option or even clearly understand the process.

  3. I would guess they are worth either a big fraction of or well over a billion dollars, so to not pay for a full panel when you can well afford it is definitely not smart.

    • As I mentioned above, there is only one panelist assigned to a URS and no option for additional panelists.

      The URS was designed to be a less expensive and quicker alternative to the UDRP to remedy an obvious case of infringement with the new gTLD domain names.

  4. Just an FYI. This was a URS proceeding. Unlike the UDRP, the URS does not provide for a three member panel.

    The URS is a somewhat stripped down version of the UDRP. It only applies to new gTLDs, and only results in suspension, not transfer, of the domain name. It is for new TLD names the TM owner does not want, but wants to shut down. Because it was intended for very quick, no-brainer cases, there are only single member panels.

    One of the ways implementation was botched is that “no-brainer” was supposed to mean “no-brainer to someone with experience and familiarity with domain disputes”. But, because of the reduced fees, the NAF came up with a panelist roster that has, in most instances, no experience with domain dispute cases whatsoever, whether as a panelist or representative. So a good deal of the URS cases are handled by a panelist who has never even dealt with a domain dispute of any kind.

    Carry on.

  5. That said, instead of a three member panel option, the URS does have an appeal mechanism.

    I expect we might see that used on this one, so this story is not over.

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