Generic Top Level Domain Name (gTLD) Decisions

DECISION

L.F.P., Inc. v. Country Walk a/k/a John Zuccarini

Claim Number: FA0210000128645

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 John Zuccarini a/k/a Country Walk, Andalusia, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hustlermagizine.com>, registered with Joker.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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 17, 2002; the Forum received a hard copy of the Complaint on October 18, 2002.

On October 22, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <hustlermagizine.com> is registered with Joker.com and that Respondent is the current registrant of the name.  Joker.com has verified that Respondent is bound by the Joker.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 October 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 11, 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@hustlermagizine.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 December 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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  <hustlermagizine.com> domain name is confusingly similar to Complainant's HUSTLER mark.

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

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant is a worldwide provider of adult entertainment.  Complainant uses its famous HUSTLER trademark in relation to adult products, magazines, videotapes, DVDs and online entertainment.  Complainant has used its HUSTLER mark since 1972.  Complainant has held the domain name registration for <hustler.com> since 1992 and uses the domain name in relation to adult entertainment and the promotion of its products. 

Complainant holds numerous trademark registrations for HUSTLER with the United States Patent and Trademark Office, including the following Registration Number 1,011,001 on the Principal Register.  Complainant also holds trademark registrations in various countries throughout the world incorporating the HUSTLER mark.

Respondent registered the disputed domain name on October 25, 1999.  Respondent is a notorious cybersquatter who has been a respondent in numerous administrative proceedings for registering domain names that are misspellings of famous marks.  Respondent is using the disputed domain name in order to divert Internet users to an adult website sponsored by Respondent.

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

(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.

Identical and/or Confusingly Similar

Complainant has established that it has rights to the HUSTLER mark through continuous use since 1972 and through its registration on the Principal Register of the United States Patent and Trademark Office.

Respondent’s domain name <hustlermagizine.com> is confusingly similar to Complainant’s HUSTLER mark because it incorporates Complainant’s entire mark and adds a misspelled version of the descriptive word “magazine.”  The addition of a descriptive term such as magazine to Complainant’s mark does not create a distinct mark capable of overcoming a claim of confusing similarity as it describes Complainant’s business.  Furthermore, the misspelling of the word “magazine” as “magizine” does not create any distinctive characteristics because it is a common misspelling of the word and Complainant’s famous mark is still the dominant feature of the disputed domain name.  See 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); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also 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”). 

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is using a confusingly similar domain name in order to divert Internet users to a website that offers services that compete with Complainant’s adult entertainment business.  The disputed domain name is similar to Complainant’s mark therefore Internet users who are looking for Complainant on the Internet will likely be confused as to the source, sponsorship and affiliation of the disputed domain name.  Respondent’s use of the disputed domain name to compete with Complainant is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. 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”); see also Kosmea Pty Ltd. v. 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).

Respondent is the notorious cybersquatter John Zuccarini.  Respondent commonly engages in the registration of domain names that infringe upon other entities’ marks.  There is no evidence on record that Respondent is commonly known as HUSTLER MAGIZINE, or <hustlermagizine.com>, and Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on website that would justify use of the word NOKIA within the domain name).

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

Registration and Use in Bad Faith

The bad faith circumstances listed in Policy paragraph 4(b) are not exclusive.  Situations that give rise to bad faith can be based on the totality of circumstances and those listed in the Policy are meant to illustrative.  See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Based on the fame of Complainant’s mark it can be inferred that Respondent had actual knowledge of Complainant’s rights when it registered the disputed domain name.  Registration of a domain name, despite knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Respondent’s <hustlermagizine.com> domain name is confusingly similar to Complainant’s HUSTLER mark.  Respondent is using the disputed domain name in order to divert Internet users to a website that competes with Complainant’s adult entertainment services.  It can be inferred that Respondent is making a profit from this activity, and therefore, Respondent is using a confusingly similar domain name in order to cause Internet user confusion for its own commercial gain.  This type of behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between Respondent and Complainant).

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 <hustlermagizine.com>, be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY ( Ret.)

Dated: December 5, 2002

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