DECISION

L.F.P., Inc. v. Charles Yarbrough

Claim Number: FA0205000114420

PARTIES

The Complainant is L.F.P., Inc., Beverly Hills, CA (“Complainant”) represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria.  The Respondent is Charles Yarbrough, Santa Barbara, CA (“Respondent).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <xxxbarelylegal.com>, registered with ItsYourDomain.com.

PANEL

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.

Edward C. Chiasson, Q.C. as Panelist.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 28, 2002; the Forum received a hard copy of the Complaint on May 29, 2002.

On May 29, 2002, ItsYourDomain.com confirmed by e-mail to the Forum that the domain name <xxxbarelylegal.com> is registered with ItsYourDomain.com and that the Respondent is the current registrant of the name.  ItsYourDomain.com has verified that the Respondent is bound by the ItsYourDomain.com 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 May 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 2002 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@xxxbarelylegal.com by e-mail.

A timely Response was received and determined to be complete on May 31, 2002.

The Complainant submitted a timely Additional Submission on June 6, 2002.

On June 26, 2002, pursuant to the Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edward C. Chiasson, Q.C. as Panelist.

RELIEF SOUGHT

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

BACKGROUND AND PARTIES’ CONTENTIONS

A. Complainant

The Complainant is a worldwide provider of “adult” entertainment in various media under, inter alia, its famous BARELY LEGAL trademark.  Its adult products and services include magazines, videotapes, DVDs and online entertainment. 

Since 1993, the Complainant has used the trademark BARELY LEGAL in interstate and international commerce to designate its famous “Barely Legal” Magazine for adult entertainment.

Since September 14, 1999, the Complainant has marketed pre-recorded videotapes and DVDs, under the trademark BARELY LEGAL.

The Complainant owns the mark BARELY LEGAL and has numerous registrations of this mark in the United States and elsewhere and uses it in association with the promotion, advertisement and sale of a wide variety of goods and services, including the operation of an Internet Web Site at <barelylegal.com> offering adult entertainment.

The Complainant holds the following:

United States Service Mark Registration No. 1872472 issued January 10, 1995 for the mark BARELY LEGAL in International Class 16 for printed publications, namely, an adult entertainment magazine;

United States Trademark Registration No. 2060025 issued May 6, 1997 for the mark BARELY LEGAL in International Class 42 for computer services, namely, providing access time to an interactive computer database in the field of adult entertainment and subject matter;

United States Trademark Registration No. 2435911 issued March 13, 2001 for the mark BARELY LEGAL in International Class 9 for pre-recorded videotapes and discs in the field of adult entertainment

Complainant holds registrations for the mark BARELY LEGAL in Germany, Czech Republic, Slovak Republic, Sweden, Argentina, Australia, Canada, Chile, Columbia, Denmark, Finland, Greece, Hong Kong, Italy, Japan, Mexico, New Zealand, Norway, Panama, Peru, Poland, Russian Federation, South Africa, Spain, Switzerland, Taiwan, Ukraine, United Kingdom, and Venezuela, all for the printing and publication of its famous “BARELY LEGAL” magazine in the field of adult entertainment.

On or about February 25, 1996, the Complainant adopted and commenced use of the service mark BARELY LEGAL in interstate and international commerce for the purpose of designating an on-line, Web-based version of its “Barely Legal” magazine.

In connection with its marks, the Complainant has established numerous internet web sites, including one at <barelylegal.com>, registered on May 15, 1998

The subject domain name was registered by the Respondent on February 27, 2002.

The Respondent’s Web site to which the subject domain name resolves offers goods and services in the field of adult entertainment in competition with the Complainant’s goods and services offered at its Web site.

On April 5, 2002, the Complainant’s counsel issued a letter to the Respondent demanding, inter alia, that the subject domain name be transferred to the Complainant.

In response, the Respondent issued an E-mail on April 19, 2002, to the Complainant’s counsel offering, inter alia, to sell the subject domain name to the Complainant at a price that was “negotiable”.  

The Respondent’s registration and use to sell goods in competition with the Complainant fails to create or demonstrate a bona fide offering of goods.  It is an illegitimate use of subject domain name and the Complainant’s BARELY LEGAL mark.

The Respondent is using a domain name confusingly similar to the Complainant’s trademark as a way to divert Internet users to the Respondent’s competing adult Web site for commercial benefit.  This is not a legitimate, non-commercial fair use of the subject domain name.

Respondent is not commonly known by the subject domain name.

Through his registration and use of the subject domain name the Respondent is causing damage to the Complainant’s BARELY LEGAL trademarks and service marks.

The minor degree of variation from the Complainant’s famous BARELY LEGAL marks suggests that the Respondent, the Complainant’s competitor, registered the name primarily for the purpose of disrupting the Complainant’s business.

There is no plausible circumstance in which the Respondent could legitimately use Complainant’s BARELY LEGAL mark and no plausible situation in which the Respondent would have been unaware of the Complainant’s BARELY LEGAL marks at the time of registration of the subject domain name.

B. Respondent

The subject domain name is not based on the website Barelylegal it is based on a genre on the adult website market that has been around since the beginning of the Internet. Barelylegal being the name of the genre, but is generic. The subject domain name says exactly what it is: xxx meaning sex and Barelylegal meaning barely legal. This site is not in anyway a misinterpretation of Barelylegal.  “[I]t is stating there is xxxbarelylegal in the domain it represents and that is what it has.”

The subject domain name is stating what is offered by the site to which it resolves and is not in any way connected with the Complainant.

In a popular web search tool Google, the term Barelylegal shows 35,700 websites available with that term, not sites necessarily affiliated with the Complainant.

 The Respondent did not register the subject domain name to confuse with the Complainant.  It was purchased to describe the services available only.

C. Additional Submissions

The Complainant delivered a Reply.

The Respondent cannot refute that the subject domain name is confusingly similar to the Complainant’s Barely Legal registered mark and <barelylegal.com> domain name.

The Respondent's placement of "xxx" in front of the Complainant's registered service mark does not in any substantive way change the registered mark.  In fact, "xxx" is simply a colloquial code referring to explicit sex. 

Even if the Respondent did not intend to cause confusion between the names, the test is whether there is a likelihood of confusion, not whether the Respondent deliberately intended the same.

If  Barely Legal were a generic term, it would not have been registered as a trademark and service mark by the United States Patent and Trademark Office.

The Complainant noted that the Respondent had failed to respond to many of the allegations in the Complainant.

DISCUSSION AND FINDINGS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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.

It is clear that the Complainant has rights to the words “barely legal” both through long use and registration.  The Respondent says that the words are generic.  This is an attack on the validity of the Complainant’s registrations and is not a matter to be resolved in this proceeding.

The subject domain name differs from the Complainant’s mark only by the addition of “xxx”.  This is not a distinguishing addition.  In the context of the Complainant’s use of its mark, xxx merely suggests a closer link to the Complainant.

The Complainant points to the usual indicia of a lack of legitimate interest: for example, not known by the subject domain name; confusion with the Complainant; exploitation of the Complainant’s goodwill etc.  The Respondent says that the subject domain name merely describes the content of the website to which the subject domain name resolves.

The subject domain name is being used in direct competition with the Complainant.  It contains the Complainant’s mark.  The addition of xxx merely suggests the sexual content of the relevant websites.

Using the mark of another to attract business generally is not a legitimate use.  This is all the more true when the businesses essentially are identical.

The Respondent’s willingness to sell the subject domain name also suggests that he does not have a legitimate interest in it.

The finding that a Respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of another, does not automatically lead to a conclusion of bad faith, but the facts that support the finding are relevant to the bad faith issue.

In this case the conduct of the Respondent suggests bad faith.  He does not quarrel with much of the Complainant’s assertions against him and appears to use the subject domain name to attract the same customers as the Complainant.

In addition, his offer to sell the subject domain name, albeit at an undisclosed amount, supports an inference of evidence of bad faith to which he made no comment in his Response.

Identical and/or Confusingly Similar

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i)

Rights or Legitimate Interests

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii)

Registration and Use in Bad Faith

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii)

DECISION

Based on the information provided to it and on its findings, the Administrative Panel concludes that the Complainant has established its claim. 

The Complainant asked that the subject domain name be transferred to it.  The Administrative Panel so orders.

Edward C. Chiasson, Q.C., Panelist
Dated:  July  9, 2002

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