Generic Top Level Domain Name (gTLD) Decisions

Complainant is General Media Communications, Inc., New York, NY, USA ("Complainant"). Respondent is Emilio Lopez, Madrid, ES ("Respondent").

The domain name at issue is <pennthouse.com> registered with CORE.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 26, 2001; the Forum received a hard copy of the Complaint on February 27, 2001.

On Mar 5, 2001, CORE confirmed by e-mail to the Forum that the domain name <pennthouse.com> is registered with CORE and that Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE 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 March 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 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@pennthouse.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 April 5, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Carolyn Marks Johnson 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 Respondent.

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

A. Complainant asserts the following:

Respondent’s <pennthouse.com> domain name is confusingly similar to Complainant’s PENTHOUSE mark.

Respondent has no rights or legitimate interests in the <pennthouse.com> domain name.

Respondent registered the <pennthouse.com> domain name in bad faith with either actual notice or constructive knowledge of Complainant’s famous PENTHOUSE marks.

Respondent is a competitor of Complainant and registered the <pennthouse.com> domain name for the purpose of disrupting the business of Complainant, by luring Internet users away from Complainant’s PENTHOUSE web sites, namely <penthouse.com>.

B. Respondent did not file a response in this matter.

Complainant registered the PENTHOUSE mark with the United States Patent and Trademark Office as early as November 18, 1969. Complainant has also registered the service mark PENTHOUSE ONLINE for use in conjunction with online services on November 8, 1994.

Complainant also has valid and subsisting registrations in the Oficina Espanol de Patentes y Marcas (the "Spanish Patent and Trademark Office") and the Office for Harmonization of the Internal Market (the "European Community Trademark Office").

Respondent registered the domain name on October 18, 2000, and is located in Spain.

Respondent created an active adult entertainment web site at the <pennthouse.com> domain name.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 <pennthouse.com> domain name is essentially the misspelling of Complainant’s PENTHOUSE mark. The addition of the "n" does not circumvent Complainant’s rights in the mark nor avoid consumer confusion. See EBAY, Inc. v. MEOdesigns and Oettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent’s domain name <eebay.com> is confusingly similar to Complainant’s registered trademark).

Therefore, the Panel concludes that Complainant has met the burden set forth under Policy 4(a)(i) of showing that Respondent registered a domain name that is identical to or confusingly similar to Complainant’s well-known mark.

Respondent’s use of the domain name, which was confusingly similar to Complainant’s mark, as a an adult entertainment web site was not a bona fide offering of goods under Policy 4(c)(i) nor was it noncommercial fair use under Policy 4(c)(iii) because the web site offered similar services to Complainant. See North Coast Med., Inc. v Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

It is reasonable to conclude that because of Complainant’s notoriety in the area of adult entertainment, it does not seem likely that Respondent is known by the "pennthouse" name. See Victoria’s Secret et al v. Asdak, FA96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Therefore, the Panel concludes that Complainant has established its burden set forth under Policy 4(a)(ii) to show that Complainant has a right to and interest in its mark and that Respondent does not.

The proof permits the inference that Respondent registered the <pennthouse.com> domain name with either actual notice or constructive knowledge of Complainant’s famous PENTHOUSE marks. Indeed, it is inconceivable that Respondent, owner of an online adult entertainment website was unaware of Complainant’s famous PENTHOUSE marks and web sites prior to his registration of the <pennthouse.com> domain name. This is evidence of bad faith. See Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) ("the selection of a domain name [northwest-airlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith").

Respondent also registered the <pennthouse.com> domain name for the purpose of disrupting the business of Complainant, Respondent’s competitor. Respondent’s intent to disrupt Complainant’s business is evident by Respondent’s presence in the Internet adult-entertainment industry, his knowledge of Complainant’s famous PENTHOUSE mark before he registered the <pennthouse.com> domain name, and Respondent’s creation of an active adult entertainment web site intending to divert consumers looking for Complainant’s <penthouse.com> web site to Respondent’s <pennthouse.com> site. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant’s marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant’s business).

Respondent also is using the <pennthouse.com> domain name in bad faith for the purpose of attracting for commercial gain Internet users to his adult web site <pennthouse.com>. 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).

Therefore, the Panel concludes that the elements of Policy 4(a)(iii) have been satisfied and Complainant has shown that Respondent registered and used the domain name in issue in bad faith.

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

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