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E.D. Publications, Inc. v. Decorum [2001] GENDND 1216 (24 June 2001)

WIPO Arbitration and Mediation Center

The Complainant is E.D. Publications, Inc., a corporation organized in the State of Texas, United States of America (USA), with place of business in Clearwater, Florida, USA.

The Respondent is Decorum, with address in Hollywood, California, USA.

The disputed domain name is <exoticdancer.com>.

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on April 24, 2001, and received by WIPO via e-mail on April 26, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On April 26, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar’s Response received by WIPO on April 27, 2001).

(b) On May 1, 2001, WIPO notified the Complainant of a formal filing deficiency in regard to the identity of the Respondent as advised by the Registrar. On May 3, 2001, WIPO received an amended Complaint via e-mail, and on May 7, 2001, WIPO received an amended Complaint in hardcopy.

(c) On May 9, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail.

(d) On May 29, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.

(e) On June 7, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On June 8, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(f) On June 11, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by June 24, 2000. On June 11, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.

Complainant has registered the word trademark "EXOTIC DANCER" on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. no. 1,678,514, dated March 10, 1992, in International Class (IC) 16, covering "periodical directory of men’s entertainment clubs", claiming first use in commerce of January 1, 1991, (Complaint, Annex C). Claimant has filed an application for trademark registration with the USPTO for the word service mark "EXOTIC DANCER" in IC’s 35, 38 and 41, ser. no. 761840032, dated December 20, 2000. Such application covers various services in relation to the adult entertainment industry, including conducting trade shows, broadcasting and computer services. (Id., Annex D).

Complainant has registered the domain name <exotic-dancer.com> and uses the domain name in connection with maintaining an active commercial website providing information concerning adult men’s entertainment clubs.

According to the registrar’s verification response to WIPO, dated April 27, 2001, Respondent is the listed registrant of the disputed domain name <exoticdancer.com>. The Administrative Contact, at the same address, is "Stevens, Rick". According to a Network Solutions’ WHOIS database printout furnished by Complainant, the record for the disputed domain name was created on September 28, 1995, and was last updated on September 20, 2000 (Complaint, Annex A).

There is no evidence on the record of this proceeding of any use of the disputed domain name in connection with the maintenance of an active Internet website.

Complainant has furnished a copy of e-mail correspondence from Mr. Peter Zimble of InterPacket Group, Inc. to David at dfox@foxman.com containing a confirmation of conversation pursuant to which Mr. Zimble proposed to license the use of <exoticdancer.com> to the party referred to as David for $25,000 per year for a three year term, plus other commercial terms and conditions. Said e-mail is dated March 28, 1997. The additional terms and conditions include an offer to sell the disputed domain name for three times the gross revenue generated by the website identified by the name over the prior twelve month period. In its complaint, Complainant represents that the aforesaid e-mail was from a representative of Respondent to Complainant, although supporting data concerning the identity of the parties to the subject e-mail is not provided.

By certified letter, fax and e-mail dated March 22, 2001, Complainant via counsel sent a cease and desist and transfer demand to Respondent. As evidenced by a postal delivery receipt, the certified letter was delivered to Respondent’s principal address listed in its registration. There is no evidence of a reply from Respondent. Although Complainant’s letter was successfully delivered to the contact address listed for Respondent, there is evidence presented by Complainant that delivery to the telefax number and the administrative contact address listed in Respondent’s contact details was not successful.

A. Complainant

Complainant states that it has registered the trademark "EXOTIC DANCER" at the USPTO and that it uses such trademark in commerce in connection with print media and Internet services providing information concerning men’s entertainment clubs (see Factual Background supra and Complaint). Complainant asserts that it also uses the mark in connection with organizing trade shows and industry events.

Complainant indicates that is has applied for registration of its trademark in connection with the services it provides outside its directory business.

Complainant asserts that its mark is "inherently distinctive" and thus entitled to the "maximum level of protection afforded to any trademark".

Complainant asserts that the disputed domain name is essentially identical to a trademark in which it has rights.

Complainant asserts that Respondent has not used the disputed domain name in connection with establishing or maintaining an active website. Complainant asserts that Respondent has demonstrated no rights or legitimate interests in the disputed domain name, and that registration alone does not establish such rights.

Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. Complainant alleges that such bad faith is evidence by (1) registration of Complainant’s inherently distinctive mark (2) the provision of inaccurate registration data (3) passive holding of the disputed domain name and (4) Respondent’s offer to sell the disputed domain name to Complainant.

Complainant requests that the Panel direct the registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., paragraph 15(a)).

Complainant is the holder of a valid and subsisting word trademark registration for "EXOTIC DANCER" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant’s registration of the "EXOTIC DANCER" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law (footnote 1). Complainant’s trademark appears to be descriptive of its publication and services businesses in that Complainant provides information and services concerning dancers who perform in men’s entertainment clubs. The USPTO has determined that the words "EXOTIC DANCER" have achieved the level of distinctiveness or secondary meaning adequate to be accorded registration, and Respondent has not disputed Complainant’s rights in the mark.

The Panel determines that Complainant has rights in the trademark "EXOTIC DANCER". Based on the March 10, 1992, date of the USPTO registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant’s rights in the "EXOTIC DANCER" mark arose prior to Respondent’s registration, on September 28, 1995, of the disputed domain name.

The disputed domain name <exoticdancer.com> directly incorporates Complainant’s "EXOTIC DANCER" mark, eliminates the space between terms and adds the gTLD ".com". In the context of this proceeding, the differences between the disputed domain name and mark are not material from a legal standpoint for assessing confusing similarity (footnote 2). The Panel determines that the disputed domain name is confusingly similar to Complainant’s mark in the sense of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

Respondent has demonstrated no use of the disputed domain name other than in connection with an offer for its license and sale. Respondent has asserted no fair use or other right in the name and Complainant’s mark. Registration alone does not establish rights or legitimate interests in a disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy. The Panel determines that Respondent has failed to establish rights or legitimate interests in the disputed domain name within the meaning of paragraphs 4(a)(ii) and 4(c) of the Policy. Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (id., paragraph 4(b)(i)).

Complainant has established that it has rights in a mark that Respondent incorporated in the disputed domain name. Complainant used its trademark in commerce and registered it substantially before Respondent registered the disputed domain name. Subsequent to registering the disputed domain name, Respondent offered to sell it to Complainant for a substantial sum in excess of its out-of-pocket expenses in connection with the name (footnote 3). Respondent has demonstrated no other use of the name. On the basis of these facts, the Panel determines that Respondent registered the disputed domain name primarily for the purposes of selling it to Complainant for an amount substantially in excess of its out-of-pocket costs associated with the name, and that this constitutes bad faith within the meaning of paragraph 4(a)(iii) and 4(b) of the Policy.

Having made the aforesaid determination, the Panel need not consider the additional grounds of bad faith asserted by Complainant.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.

The Panel will therefore request the registrar to transfer the domain name <exoticdancer.com> to the Complainant.

Based on its finding that the Respondent, Decorum, has engaged in abusive registration and use of the domain name <exoticdancer.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <exoticdancer.com> be transferred to the Complainant, E.D. Publications, Inc.

Frederick M. Abbott
Sole Panelist

Dated: June 24, 2001

Footnotes:

1. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, [1999] USCA9 436; 189 F.3d 868 (9^th Cir. 1999). (back to text)

2. See Sporty's Farm v. Sportsman's Market, [2000] USCA2 33; 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, [1999] USCA9 225; 174 F.3d 1036 (9^th Cir. 1999). (back to text)

3. The Panel notes that Respondent failed to dispute Complainant’s allegation that Respondent in fact made the offer referred to by Complainant. (back to text)