DECISION

L.F.P., INC. v. HUSTLERMAG.COM

Claim Number: FA0203000105862

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 HUSTLERMAG.COM, Belize City, BELIZE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hustlermag.com>, registered with BulkRegister.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 13, 2002; the Forum received a hard copy of the Complaint on March 14, 2002.

On March 13, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain name <hustlermag.com> is registered with BulkRegister.com and that Respondent is the current registrant of the name.  BulkRegister.com has verified that Respondent is bound by the BulkRegister.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 March 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 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@hustlermag.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 April 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 allegations:

Respondent’s <hustlermag.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 did not file a Response in this proceeding.

FINDINGS

Complainant registered HUSTLER with the United States Patent and Trademark Office (“USPTO”) on September 17, 1996 in connection with an online magazine for adult entertainment and subject matter.  Complainant has also registered many other marks incorporating the HUSTLER name in several other countries.

Complainant is a worldwide provider of services including magazines, videotapes, DVDs, and online entertainment.  Complainant also markets the HUSTLER mark on apparel, accessories, and other products throughout the world.

Complainant has used the HUSTLER mark since 1972 in interstate commerce and has provided an online version of its “Hustler Magazine” at <hustler.com> since April 12, 1997.

Respondent registered the disputed domain name on November 26, 1997.  The disputed domain name is currently “parked at” <top10sites.com>, which offers links to numerous other websites, one of which, <heavengate.com>, offers adult entertainment in competition with Complainant.  The <top10sites.com> and <heavengate.com> domain names maintain the same registrant address as 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 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 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 to and/or Confusingly Similar

Complainant has rights in the HUSTLER mark due to its federal registration of the mark at the USPTO.

Respondent’s <hustlermag.com> domain name is confusingly similar to Complainant’s HUSTLER mark because it includes Complainant’s mark in its entirety, merely adding a “.com” and the abbreviation “mag,” which describes Complainant’s main product.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark “Marriott”).

 

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

Rights to or Legitimate Interests

Complainant has established in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety in the domain name that Respondent registered.  Because Respondent has not responded to this Complaint, the Panel may find that Respondent has no rights or legitimate interests in the disputed domain name.  See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to respond to the Panel's additional requests warranted a finding for Complainant).

Further, Respondent’s use of the disputed domain name as a link to other commercial sites, at least one of which was an adult site that would easily confuse Internet users as to the affiliation and sponsorship of the website, is not a bona fide offering of goods under Policy ¶ 4(c)(i).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).  Moreover, Respondent’s use of the domain name incorporating Complainant’s mark to sell goods similar to those of Complainant indicate an attempt to attract Complainant’s customers for commercial benefit.  This activity suggests a lack of rights and legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See  Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); 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, listed as “hustlermag.com,” has not provided any evidence that it is an individual or a business entity that is commonly known as <hustlermag.com> or as HUSTLER.  Further, Respondent’s website makes no mention of the HUSTLER name and does not appear to sell any products or provide any services under the HUSTLER name.  The Panel therefore finds that Respondent has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See 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); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

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

Registration and Use in Bad Faith

Complainant urges that Respondent registered and used Complainant’s mark in bad faith.  The Policy permits the Panel to find that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii), because it used the domain name to host a competing pornographic website.  See General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site).

Further, Respondent’s registration and use of the website as a way to commercially benefit from Complainant’s goodwill by advertising and linking to other websites is considered to be in bad faith under Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>; presumably, the Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant).

Because Complainant’s mark is well-known, was registered before Respondent’s use of the domain name at issue, and because Respondent has not provided an explanation for its use of the domain, the Panel finds that Respondent registered and used the disputed domain name in bad faith.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the 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).

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

Hon. Carolyn Marks Johnson, Panelist

Dated: April 19, 2002.

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