Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Chris Bolton General Media Communications, Inc., New York, NY, USA ("Complainant"). The Respondent is Vine Ent., Cypress, CA, USA ("Respondent").

The domain name at issue is "penthaus.com" registered with iHoldings.com, Inc.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 30, 2001; the Forum received a hard copy of the Complaint on January 29, 2001.

On February 9, 2001, iHoldings.com, Inc. confirmed by e-mail to the Forum that the domain name "penthaus.com" is registered with iHoldings.com, Inc. and that the Respondent is the current registrant of the name. iHoldings.com, Inc. has verified that Respondent is bound by the iHoldings.com, Inc. 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 February 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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@penthaus.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.

On March 14, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

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.

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

This Complaint is based upon Complainant’s well-known PENTHOUSE mark. Since 1969, Complainant, through its predecessors in interest, has published a well-known magazine using the trademark PENTHOUSE throughout the United States, and internationally. Since that time, and by virtue of its popularity, Complainant's PENTHOUSE publication has generated many millions of dollars of sales, and Complainant has capitalized on that popularity to expand to a number of other products and services using the mark PENTHOUSE, including on-line adult-entertainment services at its PENTHOUSE web sites, most notably its "penthouse.com" web site.

Complainant’s PENTHOUSE web sites are among the most visited web sites on the Internet. For example, in September through November 2000, the PENTHOUSE web sites received the following number of hits:

Respondent’s PENTHAUS.COM domain name is confusingly similar to Complainant’s PENTHOUSE mark.

Respondent has no rights or legitimate interests in the PENTHAUS.COM domain name.

Respondent registered the PENTHAUS.COM domain name in bad faith with full knowledge of Complainant’s famous PENTHOUSE mark.

B. Respondent

Respondent has not disputed the contentions addressed in the complaint.

Complainants Federally registered the PENTHOUSE mark as early as November 18, 1969.

Respondent has registered the following domain names and uses them to redirect traffic to his adult website: PLSYBOY.COM for "Playboy", DAWOO.COM for "Daewoo", DAEWOOUSA.COM for "Daewoo", INFORSEEK.COM for "Infoseek", DOGERS.COM for "Dodgers", CONPAQ.COM for "Compaq", MICROSOFY.COM for "Microsoft", CORVETT.COM for "Corvette", CHEVOLET.COM for "Chevrolet", HUNDAI.COM for "Hyundai", HYUNDAE.COM for "Hyundai", LAMBOGHINI.COM for "Lamborghini" and KAWASAKY.COM for "Kawasaki".

Respondent’s PENTHAUS.COM domain name instantly redirects Internet users to Respondent’s adult entertainment site.

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.

The domain name is confusingly similar to the Complainant’s PENTHOUSE mark in both pronunciation and meaning. VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name "venesign.com" and the Complainant’s mark, VeriSign, are so close that confusion can arise in the mind of the consumer).

Respondent has not established rights or legitimate interests by using a domain name confusingly similar to the Complainant’s mark by redirecting the domain name to the Respondent’s pornographic web site. See Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his web sites).

It is especially difficult to find a bona fide offering of goods when the Respondent uses a domain name confusingly similar to a competitor’s mark. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that "[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business).

Lastly, because of the Complainant’s notoriety in the adult entertainment business, it would not be likely that the Respondent is also commonly known by a confusingly similar name. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark).

Respondent has shown bad faith by preventing Complainant from registering a domain name that reflects Complainant’s mark and by exhibiting a pattern of registering misspellings of famous trademarks and names. See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and web sites).

As a competitor of the Complainant, Respondent has further exhibited bad faith by registering a domain name confusingly similar to Complainant’s mark. See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to website that competes with Complainant’s business).

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

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