DECISION

L.F.P., Inc. v. Ira Willey

Claim Number: FA0211000128819

PARTIES

Complainant is L.F.P., Inc., Beverly Hills, CA, USA (“Complainant”) represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria, LLP.  Respondent is Ira Willey, Victoria, BC, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwhustler.com>, registered with Register.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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 1, 2002; the Forum received a hard copy of the Complaint on November 4, 2002.

On November 1, 2002, Register.com confirmed by e-mail to the Forum that the domain name <wwwhustler.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 November 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 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@wwwhustler.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 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 makes the following assertions:

Respondent’s <wwwhustler.com> domain name is confusingly similar to Complainant’s registered HUSTLER mark.

Respondent does not have any rights or legitimate interests in the <wwwhustler.com> domain name.

Respondent registered and used the <wwwhustler.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, L.F.P., Inc., holds two registrations for the HUSTLER trademark. Complainant holds rights in the HUSTLER mark that was originally registered on May 20, 1975 (U.S. Reg. No. 1,011,001) for an entertainment magazine. Complainant subsequently registered is HUSTLER mark for providing a computer online magazine on September 17, 1996 (U.S. Reg. No. 2,001,594). Both marks are used in conjunction with Complainant’s business as a worldwide provider of “adult” entertainment, including magazines, videotapes, DVDs, and online entertainment. Pursuant to its buisness in “adult” entertainment, Complainant registered the, <hustler.com> domain name, reflecting its registered mark.

Respondent, Ira Willey, registered the <wwwhustler.com> domain name on January 15, 2002, and is not authorized or licensed to use Complainant’s HUSTLER mark for any purpose. Respondent uses the disputed domain name to redirect Internet users to Complainant’s <hustler.com> 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 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 rights in the HUSTLER mark through registration on the Principal Register of the United States Patent and Trademark Office as well as through continuous and widespread use of the mark worldwide.

Respondent’s <wwwhustler.com> domain name is confusingly similar to Complainant’s HUSTLER mark. Respondent’s registration is a perfect example of “typosquatting,” taking advantage Internet users who, when entering in a Uniform Resource Locator (URL), inadvertantly fail to add the period between the “www” and whatever second-level domain that they are attempting to reach. In this case, Internet users who are hoping to arrive at Complainant’s “www.hustler.com” but accidently do not type a period after they have entered “www,” will be unsuspectingly diverted to Respondent’s <wwwhustler.com> domain name. Typosquatting does not prevent a finding of confusing similarity between Respondent’s domain name and Complainant’s mark, especially as the dominant feature of the domain name remains Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

Respondent’s addition of the top-level domain “.net”, a feature that is required for all domain name registrants, also fails to prevent the Panel from finding Respondent’s domain name to be confusingly similar to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

Accordingly, the Panel finds that the <wwwhustler.com> domain name is confusingly similar to Complainant’s registered HUSTLER mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Policy paragraphs 4(c)(i)-(iii) list three circumstances illustrative of situations where a respondent would have rights or legitimate interests in a domain name. When a respondent has failed to respond to a Complaint, a showing by a complainant that none of these three circumstances are present is sufficient for that complainant to meet its burden under the Policy. At that point, the burden shifts to Respondent to rebut Complainant’s allegations. 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).

In these circumstances, Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent uses the <wwwhustler.com> domain name to redirect Internet users to the website they are presumably trying to reach in the first instance; Complainant’s website at <hustler.com>.  This is an attempt by Respondent to earn compensation from Complainant for click through “sign-ups” originating from the domain name at issue. In doing so, Respondent is not making either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a misspelled domain name because Respondent did not provide any bona fide products in connection with the domain name); see also Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

Respondent’s contact information states that it is “Ira Willey,” and no evidence supports the proposition that it has ever been “commonly known by” the name WWWHUSTLER or <wwwhustler.com>. As such, the Panel finds that Complainant has met its burden in showing that Respondent does not fall under the ambit of Policy ¶ 4(c)(ii). See 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”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwhustler.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

While Policy paragraph 4(b) lists four circumstances evidencing bad faith use and registration of a domain name, that list is not meant to be all-inclusive. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

One example of bad faith use and registration not directly illustrated in the Policy, yet nevertheless representing bad faith use and registration of a domain name under Policy ¶ 4(a)(iii), is typosquatting. See AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants). Respondent’s registration and use of the <wwwhustler.com> domain name qualifies as typosquatting (simply adding a “www” prefix to a mark in which another has rights exemplifies typosquatting) and therefore evidences bad faith use and registration.

Further evidence of Respondent’s bad faith use and registration of the disputed domain name can be inferred from the fact that Respondent had actual knowledge of Complainant’s mark when it registered the infringing domain name, and subsequently used it to redirect Internet users to Complainant’s website. Such registration and use is another non-enumerated example of bad faith under Policy ¶ 4(a)(iii). See 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”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Accordingly, the Panel finds that Respondent registered and used the <wwwhustler.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

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

James A. Carmody, Esq., Panelist

Dated: December 16, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1673.html