Generic Top Level Domain Name (gTLD) Decisions

General Media Communications, Inc.
COMPLAINANT,

vs.

JMR Creations
RESPONDENT.

DECISION
Forum File No.: FA0004000094387

The above entitled matter came on for an administrative hearing on June 1, 2000 before the undersigned on the Complaint of General Media Communications, Inc., hereafter "Complainant", against JMR Creations, hereafter "Respondent".  Complainant was represented by Floyd A. Mandell. Respondent was represented by Timothy Engling..  Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name:  Penthouse.net

Domain Name Registrar:  Network Solutions, Inc.

Domain Name Registrant:  JMR Creations

Date of Domain Name Registration:  September 22, 1997

Date Complaint Filed:  April 3, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)^[1] and Rule 4(c):  April 7, 2000

Due date for a Response:  Respondent submitted a Response to the Complaint.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on April 7, 2000, in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c).  In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced.  Respondent submitted a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On September 22, 1997, Respondent registered the domain name "Penthouse.net” with Network Solutions, Inc., the entity that is the Registrar of the domain name.  On January 11, 2000, Network Solutions, Inc. verified that Respondent is the Registrant for the domain name "Penthouse.net", and that further by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through Network Solutions, Inc. and by derivation ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1.         That Complainant is the owner of many trademarks made up of the terms “Penthouse”.  Complainant has for many years prior to Respondent’s registration used the mark “Penthouse” in domain names for reaching its and related websites.  “Penthouse” was used extensively at its portal Website, which is a significant method of promoting Complainant’s products and services.

2.         That for many years prior to Respondent’s registration, Complainant has used its trademarks continuously and extensively in interstate and international commerce in connection with the advertising and sale of Complainant’s products and services.

3.         That Complainant has invested substantial sums of money in developing and marketing its products with its “Penthouse” trademarks affixed.  That “Penthouse” domain names have been in continual use by Complainant.

4.         That Respondent admittedly has an active internet business serving the adult entertainment market and is aware of the substantial market penetration of Complainant.  The record reflects that Respondent’s use of the “Penthouse.net” domain name in that business would cause diversion of some of Complainant’s customer’s and dilute its trademarks.

5.         That despite Respondent’s protestations, there is no evidence that Respondent actively sought to establish a real estate related business.  The evidence is the opposite.  Correspondence from April 28 and 30, 1998 reflects Respondent’s desire to have his adult sites linked to Complainant’s.  The attorney invoice proffered refers to Respondent’s adult site.

6.         That Respondent registered and sought to use the domain name "Penthouse.net" in bad faith and has no rights or legitimate interests in respect to said domain name or mark.  The following is evidence of Respondent's bad faith:

a.         Respondent registered the domain name “Penthouse.net” and initially sought to negotiate the sale of that name to Complainant for at least $10,000 plus other consideration, including links to Respondent’s adult entertainment websites.

b.         Despite arguing an intent to conduct a real estate related business with that domain name, no evidence has been presented which support any attempts to establish that business such as licenses, registrations with local authorities, or a proffer of website architecture reflecting the business model so as to show bona fide activities.

c.         Respondent’s profit motive is clearly evidenced by correspondence from its attorney on April 30, 1998, in which it offered to sell the domain name along with other consideration in exchange for tendering the domain back to Complainant.

5.         Complainant's prayer for relief requests that the domain name "Penthouse.net" be transferred from Respondent to Complainant.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding.  Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1.         The domain name "Penthouse.net", registered by Respondent is nearly identical and confusingly similar to a number of trademarks and domain names in which Complainant has rights and to which Respondent has no right or legitimate interests.

2.         Respondent registered and acquired the domain name "Penthouse.net" primarily for the purpose of selling or otherwise transferring the said domain name registration to the Complainant who is the owner of the trademark, or to compete with Complainant.  Respondent registered and has used the domain name in bad faith.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "Penthouse.net" REGISTERED BY RESPONDENT JMR CREATIONS BE TRANSFERRED TO COMPLAINANT.

Dated:  June 1, 2000, by John A. Bender, Arbitrator.