Generic Top Level Domain Name (gTLD) Decisions

Complainant is Private Media Group, Inc., Barcelona, Spain ("Complainant") represented by Steven W. Workman, Esq.. Respondent is Darjan Popic, Slovenj Gradec, Slovenia ("Respondent").

The domain name at issue is <privategold.net> registered with Network Solutions, Inc..

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

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 19, 2001; the Forum received a hard copy of the Complaint on April 19, 2001.

On April 23, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <privategold.net> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 April 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 14, 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@privategold.net 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 May 17, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody 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 the Respondent to the Complainant.

A. Complainant

The <privategold.net> domain name is confusingly similar to Complainant’s PRIVATE family of marks.

Respondent has no rights or legitimate interests in the <privategold.net> domain name.

Respondent registered and used the <privategold.net> domain name in bad faith.

B. Respondent

No response was received from Respondent.

Since 1965, the Private Media Group (Complainant) has used its PRIVATE mark in connection with adult entertainment throughout the world. Complainant registered the PRIVATE trademark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,014,957, on July 1, 1975. The Complainant has also registered the PRIVATE mark and variations thereof in Slovenia as Registration No. Z 90 8 0327, on March 24, 1993. In addition, Complainant has obtained registrations for marks containing the word PRIVATE in over forty-two (42) countries. Complainant has been in continuous use of the marks since their registrations.

Complainant is the owner and licensor of the <privategold.com> domain name, registered on September 30, 1997. The <privategold.com> website is one of the most successful adult entertainment websites on the Internet, registering an average of 35,000 visitors every day.

Respondent registered the <privategold.net> domain name on November 6, 1998. The <privategold.net> website offering similar adult entertainment services as the Complainant’s <privategold.com> websites.

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 <privategold.net> domain name is confusingly similar to Complainant’s PRIVATE family of marks because it incorporates the PRIVATE mark of the Complainant with a generic word. See Dell Corp. v. Ewaldsson, D2000-1087 (WIPO Nov. 17, 2000) (finding confusing similarity, inter alia, between <dellultra.net> and Complainant’s DELL family of marks); see also Body Shop Int’l PLC v. CPIC NET and Hussain, D2000-1214 (Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the Complainant’s trademark <THE BODY SHOP>).

The confusing similarity is further exacerbated by the fact that Respondent is offering competing adult entertainment services on the <privategold.net> website. By offering competing services, Respondent is engaging in activity that would confuse users into believing they are subscribing to the services of the Complainant, rather than the Respondent. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar "so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement").

Furthermore, given the fame of Complainant’s PRIVATE mark, with respect to adult entertainment services, combined with the popularity of Complainant’s <privategold.com> website, Respondent is said to be on notice of Complainant’s <privategold.com> website when he registered the <privategold.net> domain name more than a year after Complainant registered the <privategold.com> domain name.

The Panel finds that the <privategold.net> domain name is confusingly similar to Complainant’s PRIVATE family of marks.

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <privategold.net> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that "In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Respondent is not engaged in a bona fide offering of goods or services. Respondent’s registration and use of the <privategold.net> domain name, whose website offers the same adult entertainment services as the Complainant, does not evidence a bona fide offering of services when Respondent misleads users by utilizing a domain name which is confusingly similar to that of the Complainant’s. See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of domain names confusingly similar to Complainant’s mark to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <privategold.net> domain name, pursuant to the Policy 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

There is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <privategold.net> domain name pursuant to the Policy 4(c)(iii) when Respondent is admittedly engaged in a for-profit enterprise using the disputed domain name.

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <privategold.net> domain name and that Policy 4(a)(ii) has been satisfied.

The Respondent is engaged in bad faith use of the <privategold.net> domain name. The registration and use of the disputed domain name is evidence of bad faith when Respondent attracts users to its website for commercial gain by creating a likelihood of confusion. The identical nature of the Complainant’s <privategold.com> domain name and the Respondent’s <privategold.net> domain name, combined with Respondent’s offering of competing services constitutes bad faith pursuant to the Policy 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant).

Respondent’s offer to sell the <privategold.net> domain name to the Complainant, in excess of out-of-pocket expenses, further evidences Respondent’s bad faith pursuant to the Policy 4(b)(i). The fact that Respondent, in correspondence with the Complainant, stated that he would not transfer the disputed domain name unless paid valuable consideration amounting to the earnings he currently was enjoying using the <privategold.net> domain name establishes Respondent’s bad faith. See 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); see also World Wrestling Fed’n Entertainment, Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

The Panel finds that Policy 4(a)(iii) has been satisfied.

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

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