DECISION

Heidi Fleiss v. Tricky Web, Inc.

Claim Number: FA0112000103136

PARTIES

Complainant is Heidi Fleiss, Los Angeles, CA (“Complainant”).  Respondent is Tricky Web, Inc., Road Town, Tortola, VI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES  

The domain names at issue are <heidifleiss.com>, <heidiwear.com>, registered with Intercosmos Media Group 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 18, 2001; the Forum received a hard copy of the Complaint on January 7, 2002.

On December 18, 2001, Intercosmos Media Group Inc. confirmed by e-mail to the Forum that the domain names <heidifleiss.com> and <heidiwear.com> are registered with Intercosmos Media Group Inc. and that Respondent is the current registrant of the name.  Intercosmos Media Group Inc. has verified that Respondent is bound by the Intercosmos Media Group 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 January 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 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@heidifleiss.com and postmaster@heidiwear.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 February 5, 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 names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s domain names <heidifleiss.com> and <heidiwear.com> are identical to Complainant’s name HEIDI FLEISS and Complainant’s common law trademark HEIDIWEAR.

2. Respondent’s use of the disputed domain names in connection with pornographic services does not constitute a bona fide offering of goods and services.  Also, since Respondent is not commonly known as <heidifleiss.com> or <heidiwear.com> and since the domain names at issue link to websites that offer pornographic services, Respondent’s use of <heidifleiss.com> and <heidiwear.com> is also not a legitimate noncommercial or fair use, Respondent has not demonstrated that it has a legitimate interest in either domain name.

3. Respondent’s use of Complainant’s identical marks in its domain names is evidence that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion to the source of the website.  Therefore, Respondent registration and use of <heidifleiss.com> and <heidiwear.com>   are in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant is a public figure, internationally known by her given name, HEIDI FLEISS.  Complainant first gained notoriety in 1993 for her alleged involvement in a prostitution ring catering to Hollywood studio executives and celebrities.  Since then, Complainant has become a sought-after public figure and celebrity and has developed a  lingerie and clothing line known as HEIDIWEAR.  From 1994-98, Complainant operated a retail store under the mark HEIDIWEAR in Los Angeles, CA.  Complainant continues to market her products under the HEIDIWEAR mark via mail order and from her website, <heidiwear.net>.

Respondent registered <heidifleiss.com> on February 3, 1998 and registered <heidiwear.com> on September 3, 1998.  Respondent has used both domain names to link to several different website that offer pornographic services including <sexshows.com>.  Upon information and belief, Respondent’s agent earns a commission when a surfer joins one of the pornographic websites.    

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

The domain name <heidifleiss.com> is identical to Complainant’s name.  The domain name <heidiwear.com> is identical to Complainant’s common law trademark.  Since the UDRP does not require Complainant have rights in a registered trademark and certrainly Complainant holds a common law mark in her own famous name HEIDI FLEISS, the Complainant holds rights in both marks.  See Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (finding Complainant held a common law trademark in his famous name MICK JAGGER, even though Complainant had not registered his name with the United States Patent and Trademark Office); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (stating that Julia Roberts had sufficiently proven that she owned common law trademark rights in her name).  

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

Rights or Legitimate Interests

Complainant has established her rights and legitimate interests in both domain names.  Respondent has failed to file a Response in the matter.  As a result, the Panel will presume that Respondent has no rights or legitimate interests in the disputed domain name.  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’s use of the domain names to link to websites that offer pornographic services for personal financial gain is not evidence of a bona fide offering of goods or services in connection with the domain names and thus Respondent has failed to satisfy Policy ¶ 4(c)(i).  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

There is no evidence presented that Respondent is or has been known as <heidifleiss.com> or <heidiwear.com>, therefore the Panel will presume that Respondent is not commonly known as <heidifleiss.com> or <heidiwear.com> and therefore, fails to satisfy Policy ¶ 4(c)(ii).  See Jeanette Winterson v. Mark Hogarth, D2000-0235 (WIPO May 22, 2000) (holding that the Respondent did not demonstrate any rights or legitimate interests in a famous author’s name he used for an Internet domain name); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Finally, Respondent’s use of the domain names in dispute to link to pornographic websites does not demonstrate a legitimate noncommercial or fair use of the domain names and thus Respondent cannot satisfy Policy ¶ 4(c)(iii).  See Nat’l Football League Prop., Inc., v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).

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

Registration and Use in Bad Faith

Since there is no evidence to the contrary, it appears that Respondent’s intent on registering the disputed domain names, which are identical to Complainant’s famous marks, was to link the domain names to pornographic websites.  Further, Respondent has actually used the domain names in dispute to redirect users to pornographic websites in which Respondent benefits financially.  Therefore, Respondent has intentionally attempted to attract, for commercial gain, Internet users to other on-line locations, by creating a likelihood of confusion with Complainant’s marks as to the source of the website and is not evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of 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 be hereby granted.

Accordingly, it is Ordered that the domain names <heidifleiss.com> and <heidiwear.com> be transferred from Respondent to Complainants.

James A. Carmody, Esq., Panelist

Dated: February 7, 2002

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