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General Media Communications v. Sean McCabe [2000] GENDND 856 (8 August 2000)

National Arbitration Forum

DECISION

General Media Communications, Inc. v. Sean McCabe

Claim Number: FA0006000095073

PARTIES

The Complainant is General Media Communications, Inc, New York, NY, USA ("Complainant"). The Respondent is Sean McCabe, Orlando, FL, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain names at issue are "PENTHOUSEX.COM" and "PENTHOUSEX.NET", registered with Network Solutions Inc. ("NSI").

PANELIST(s)

The Panelist certifies that he has acted independently and impartially and to the best of

his knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Harold Kalina as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/27/2000; The Forum received a hard copy of the Complaint on 06/27/2000.

On 06/28/2000, NSI confirmed by e-mail to The Forum that the domain names "PENTHOUSEX.COM" and "PENTHOUSEX.NET" are registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 06/29/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/19/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by email.

On 07/19/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On July 28, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIESí CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is confusingly similar to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.

The Complainant contends that the Respondent registered the domain names with the intent to (1) profit by luring internet users away from Complainantís websites, (2) prevent Complaint from utilizing the domain names for its business, and (3) disrupt the Complainantís business.

The Complainant asserts that the Respondent was put on constructive notice of the Complainantís rights in the PENTHOUSE marks by the virtue of the Complainantís federal registrations. The Complainant asserts that the Respondent registered the domain names with knowledge of the Complainantís marks to capitalize, benefit from, and trade upon the reputation and goodwill built up by the Complainant.

1. Respondent

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegation of the Complainant will be deemed true.

FINDINGS

The Complainant is the owner of numerous trademark registrations containing the mark PENTHOUSE. The Complainant has for many years used its famous PENTHOUSE mark in domain names for reaching its websites. See General Media Communications, Inc. v. JMR Creations, FA 94387 (Nat. Arb. Forum June 1, 2000). "Penthouse [is] used extensively at its portal website, which is a significant method of promoting Complainantís products and services." See id.

On December 27, 1999 the Respondent registered the domain names in question. The Respondent has a significant presence within the adult-entertainment industry and is a direct competitor of the Complainant. The Respondent owns at least sixteen other domain names, almost all of which are associated with the adult entertainment industry. The Respondent is the owner of the Diamond Club, an adult entertainment establishment in Florida.

The Respondent has failed to respond to four "cease and desist" letters sent by the Complainant.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The Complainant has rights in its numerous registered trademarks containing the term PENTHOUSE. The Respondentís domain names are confusing similar with the Complainantís registered marks. See Fossil, Inc. v. NSA, FA 92525 (Nat. Arb. Forum Feb 23, 2000) (finding that fossilwatch.com is confusingly similar to the Complainantís registered marks). The addition of the letter "X" merely denotes the nature of the adult oriented material and does not dilute the Complainantís mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question. The Respondent has not denied that assertion.

The domain name in question is not a mark by which the Respondent is commonly known. Policy  4(c)(ii). Rather, the Respondent is using a portion of the Complainantís mark to offer competing services.

The Respondent has made no claim that it is using the domain name in connection with a bona fide offering of goods and services or is making a legitimate noncommercial or fair use of the site. Policy  4(c)(i), (iii). Instead, the Respondent seeks to profit from its registration of said domain name by offering competing services and trading upon the PENTHOUSE mark. See Cunard Line Ltd. v. Champion Travel, Inc., FA 92053 (Nat. Arb. Forum Mar. 7, 2000) (finding that the Respondent had no rights or legitimate interests in the domain name <cunardcruise.com>).

For these reasons, the panel concludes that the Respondent has no rights or legitimate interest in the domain name in question.

The Complainant asserts that the Respondent acted and is acting in bad faith. The Respondent has not denied that assertion.

The Respondent registered the domain names primarily for the purpose of disrupting the business of its competitor. Policy  4(b)(iii). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands). The Respondent obviously knew of the Complainantís mark given the competitive nature of the two businesses. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 15, 2000) (finding that Respondent "clearly had knowledge or reasonably should have had knowledge" of Complainantís well-known mark).

The Respondent has created an adult entertainment website at the domain name "PENTHOUSEX.COM". Using a domain name to attract Internet users to your website by creating a likelihood of confusion with the Complainantís mark is evidence of bad faith. Policy  4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and creating confusion by offering similar products).

The Respondent has not developed the website associated with the domain name "PENTHOUSEX.NET". Passive holding of a domain name constitutes use of the domain name in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is use of the domain name in bad faith).

Based on the above, the panel concludes that the Respondent registered and used the domain name in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "PENTHOUSEX.COM" and "PENTHOUSEX.NET", be transferred from the Respondent to the Complainant.

Judge Harold Kalina (Ret.)

Dated: August 8, 2000