Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Stacy Baker, Tarzana, CA, USA ("Complainant") represented by Keith Condon. The Respondent is Visiotex S.A., Ft. Lauderdale, FL, USA ("Respondent").

The domain name at issue is "staceyvalentine.com" registered with Network Solutions.

On February 19, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 11, 2001; the Forum received a hard copy of the Complaint on January 22, 2001.

On January 16, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "staceyvalentine.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@staceyvalentine.com by e-mail.

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.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

Complainant asserts that Respondent’s domain name, staceyvalentine.com, is virtually identical to Complainant’s common law mark, STACY VALENTINE. In addition, Complainant contends Respondent has no rights or legitimate interests in respect to the domain name at issue. And Finally, Respondent registered and used the domain name at issue in bad faith.

B. Respondent

Respondent has not submitted a response in this matter.

Complainant, Stacy Baker, is an internationally known actress, model and feature entertainer known as "Stacy Valentine." Complainant owns the common law mark for the name STACY VALENTINE and maintains a registration for the domain name stacyvalentine.com. Complainant has used its common law mark for ten years in connection with the adult film industry. Complainant’s primary services include a commercial membership based web site.

Respondent, Visiotex S.A., is one of Complainant’s competitors. In October of 2000, Complainant contacted Respondent to inquire about the purchase of the domain name at issue, to which, Respondent’s reply indicated that the domain name would be "very expensive" and Complainant would need to submit a "serious proposal" before Respondent would consider transferring the domain in question. In December of 2000, Complainant offered Respondent reasonable consideration for the domain name at issue, to no avail.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order 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.

Under ICANN Policy, Complainant must show that it has rights in a mark, and that the domain name at issue is identical or confusingly similar to that mark.

Accordingly, Complainant’s rights are evidenced by its common law mark STACY VALINTINE. See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks").

Respondent’s domain name, staceyvalentine.com, is found to be confusingly similar to Complainant’s mark. The only difference between the domain name at issue and Complainant’s mark is an "e" has been inserted. See Crédit Lyonnais v. Association Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter "e" and a hyphen does not affect the power of the mark in determining confusing similarity); see also Blue Cross and Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that the domain names which merely add the letter ‘s’ are sufficiently similar to these marks as to cause a likelihood of confusion between the relevant users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain names).

The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark.

Complainant has shown Respondent is not commonly known by the domain name at issue, nor is Respondent using the domain name in connection with a bona fide offering of goods, services or for a legitimate noncommercial or fair use. Policy ¶ 4(c)(i)-(iii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent asserted no rights or legitimate interests in the domain name at issue. Consequently, Respondent’s failure to show evidence sufficient to refute Complainant’s assertions, entitles the Panel to conclude that Respondent has no such rights or legitimate interest in regard to the domain name in question. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).

Therefore, the Panel finds that Respondent has no rights or legitimate interests in the domain name at issue.

Although Respondent requested no specific dollar amount in exchange for the domain name at issue, it did indicate to Complainant that the domain name could prove to be "very expensive," which infers Respondent would only accept an amount that far exceeded the out-of-pocket cost directly associated with the domain name in question. See American Anti-Vivisection Soc’y v. "Infa dot Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith"); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).

Moreover, Respondent’s registration of the domain name at issue demonstrates its intent to create a likelihood of confusion, strictly for commercial gain, with Complainant’s mark as to the source sponsorship, affiliation, or endorsement of its web site. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Consequently, the Panel finds Respondent registered the domain name at issue in bad faith.

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name, staceyvalentine.com, be transferred from Respondent to Complainant.