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Generic Top Level Domain Name (gTLD) Decisions |
L.F.P., Inc. v. Viper Holdings
Claim Number: FA0208000117869
PARTIES
Complainant
is L.F.P., Inc., Beverly Hills, CA
(“Complainant”) represented by Paul J.
Cambria, of Lipsitz, Green,
Fahringer, Roll, Salisbury & Cambria, LLP. Respondent is Viper
Holdings, San Francisco, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hustlergirls.com>,
registered with Dotster Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 5, 2002; the Forum received
a hard copy of the
Complaint on August 6, 2002.
On
August 21, 2002, Dotster Inc. confirmed by e-mail to the Forum that the domain
name <hustlergirls.com> is
registered with Dotster Inc. and that Respondent is the current registrant of
the name. Dotster Inc. has verified
that Respondent is bound by the Dotster 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
August 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
10, 2002 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@hustlergirls.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
September 27, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed
Tyrus R. Atkinson, Jr.,
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<hustlergirls.com> domain name is confusingly similar to
Complainant’s HUSTLER mark.
Respondent
has no rights or legitimate interests in the <hustlergirls.com>
domain name.
Respondent
registered and used the <hustlergirls.com> domain name in bad
faith.
B.
Respondent
Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant holds numerous trademarks in
various countries for the HUSTLER mark.
Complainant’s HUSTLER mark is registered on the Principal Register of
the United States Patent and Trademark Office (“USPTO”) (Reg.
No.
1,011,001). Complainant first adopted
the HUSTLER mark in 1972 for its entertainment magazine.
Complainant describes itself as “a worldwide
provider of ‘adult’ entertainment in various media under, inter alia,
its famous HUSTLER trademark.” The
Hustler mark is used in connection with Complainant’s adult products and
services including videotapes, magazines, DVDs and online
entertainment. Complainant has invested substantial
resources and business energy into promoting and advertising the HUSTLER mark
and related goods
for thirty (30) years, which has resulted in the mark gaining
worldwide fame and notoriety.
In 1993, Complainant broadened its
HUSTLER related services to include an online version of its HUSTLER
magazine. The on-line magazine can be
found at <hustler.com>.
Complainant has also registered various other valuable marks in
corresponding domain names in an effort to capitalize on the e-commerce
market.
Respondent registered the <hustlergirls.com>
domain name on November 13, 2001.
Complainant sent a letter to Respondent demanding that Respondent
transfer the <hustlergirls.com> domain name to Complainant. Respondent never replied to Complainant’s
correspondence but a certified U.S. mail receipt confirms that Respondent
received the letter. There is no
evidence that shows Respondent uses the <hustlergirls.com> domain
name or has preparations to use the domain name.
DISCUSSION
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 and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) 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; and
(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.
Identical and/or Confusingly Similar
Complainant has established its rights in
the HUSTLER mark through proof of registration with the USPTO and continuous
use in commerce
since 1972.
Respondent’s <hustlergirls.com>
domain name contains Complainant’s entire HUSTLER mark with the addition of the
generic, descriptive word “girls.” The
use of the word “girls” in connection with Complainant’s HUSTLER mark suggests
adult content and therefore the <hustlergirls.com> has an obvious
relation to Complainant’s business.
Generic words added to famous marks, such as HUSTLER, do not create a
distinct mark capable of overcoming a Policy ¶ 4(a)(i) analysis,
especially
when the generic word intimates Complainant’s business. Therefore, Respondent’s <hustlergirls.com>
domain name is confusingly similar to Complainant’s HUSTLER mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant
combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with
a
generic term that has an obvious relationship to Complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has successfully alleged a prima
facie case, including Complainant’s allegations that Respondent has no
rights or legitimate interests in the <hustlergirls.com> domain
name. Therefore, Complainant has met
its burden under the Policy and the burden shifts to Respondent to demonstrate
its rights or legitimate
interests in the domain name. Respondent, however, has not come forward to
challenge Complainant’s allegations, which allows the Panel to presume that
Respondent
has no rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in
respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate
interests in the domain name); see also
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).
In addition, because Respondent has not
come forward and Complainant’s allegations remain uncontested, the Panel may
draw all reasonable
inferences from the facts in favor of Complainant. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Upon notice of Respondent’s registration
of the <hustlergirls.com> domain name, Complainant sent a letter
to Respondent ordering a transfer of the domain name. Respondent failed to respond to the letter and continues to hold
its registration rights in the domain name.
Complainant’s investigation revealed that Respondent has never actively
used the domain name in connection with a bona fide offering
of goods or
services, and Respondent has not come forward to notify the Panel
otherwise. Furthermore, there is no
evidence that Respondent intends to use the domain name in connection with a
legitimate offering of goods
and services that would not dilute Complainant’s
HUSTLER mark. Therefore, Respondent has
no rights or legitimate interests in the <hustlergirls.com> domain
name under Policy ¶¶ 4(c)(i) or (iii). See
Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint
and had made no
use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (finding that “merely registering the domain name is not
sufficient to establish rights or legitimate
interests for purposes of
paragraph 4(a)(ii) of the Policy”).
Respondent has no business affiliation
with Complainant and therefore is not licensed or authorized to use
Complainant’s famous HUSTLER
mark.
Respondent is identified as “Viper Holdings” in its WHOIS information,
and there is no evidence indicating that Respondent is commonly
known by the <hustlergirls.com>
domain name or anything remotely similar to it. Hence, Respondent has no rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by
the mark); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where Respondent was not commonly known by the
mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <hustlergirls.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
A list of circumstances that represents
bad faith can be found in Policy paragraph 4(b). However, the circumstances are merely suggested situations of bad
faith and are not meant to be exhaustive.
The Panel is permitted to look at the totality of circumstances when
making the crucial determination of bad faith registration and
use. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith
evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel
must look at the “totality of
circumstances”).
Complainant’s HUSTLER mark is famous and
especially well known in the adult entertainment industry. Respondent’s <hustlergirls.com>
domain name is confusingly similar to Complainant’s mark because of its
suggestive relationship to Complainant’s business. Thus, it is reasonable to infer that Respondent knew about
Complainant’s valuable interest in the HUSTLER mark and therefore registered
the domain name to somehow capitalize on that value. Furthermore, Complainant’s HUSTLER mark is registered on the
Principal Register of the USPTO, which imparts constructive knowledge
upon
Respondent. Therefore, not only is it
evident that Respondent had actual knowledge of Complainant’s mark, at a
minimum, Respondent had constructive
knowledge of Complainant’s interest in the
HUSTLER mark. Registering a confusingly
similar domain name with such knowledge constitutes bad faith registration
under Policy ¶ 4(a)(iii). See Entrepreneur
Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration); see also Victoria’s Cyber
Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive
notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent has not actively used the <hustlergirls.com>
domain name and has not established preparations to use the domain name. It can be reasonably inferred, because the <hustlergirls.com>
domain name is indistinguishable from the HUSTLER mark and assorted adult
services, that Respondent cannot possibly use the <hustlergirls.com>
domain name without causing source or sponsorship confusion with Complainant and
its adult entertainment services.
Therefore, Respondent’s passive holding of a domain name that
substantially reflects Complainant’s HUSTLER mark and related adult
entertainment services represents bad faith under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or
registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also
Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain
circumstances, for inactivity by the Respondent to amount
to the domain name
being used in bad faith”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
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 <hustlergirls.com> be
transferred from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 11, 2002.
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