DECISION

L.F.P., Inc v. Hotpics International

Claim Number: FA0204000109576

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 Hotpics International, Cherry Hill, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hustlervideo.com>, registered with Verisign, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 April 12, 2002; the Forum received a hard copy of the Complaint on April 15, 2002.

On April 17, 2002, Verisign, Inc. confirmed by e-mail to the Forum that the domain name <hustlervideo.com> is registered with Verisign, Inc. and that Respondent is the current registrant of the name.  Verisign, Inc. has verified that Respondent is bound by the Verisign, 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 April 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 7, 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@hustlervideo.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 May 21, 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

The disputed domain name <hustlervideo.com> is confusingly similar to HUSTLER, a mark in which complainant holds rights.

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

Respondent registered and used the domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant has been a worldwide provider of “adult” entertainment in various media under its well-known HUSTLER trademark since 1972.  From its inception, Complainant has used the HUSTLER mark in relation to interstate and international sales of Hustler Magazine.

Complainant also uses its HUSTLER mark for ancillary products; including videos, apparel, and accessories.  In relation to videos, Complainant has marketed its videotapes under the common-law trademark and logo HUSTLER VIDEO since September 14, 1999.  Complainant conducts business on multiple websites, including <hustler.com>, registered on April 12, 1997.

Complainant has registered HUSTLER as a trademark and a service mark.  On May 20, 1975, Complainant registered the HUSTLER mark with the United States Patent and Trademark Office as Reg. No. 1,011,001.  In relation to Complainant’s on-line magazine service, it registered the HUSTLER mark with the United States Patent and Trademark Office as Reg. No. 2,001,594, on September 17, 1996.

Respondent registered the disputed domain name on March 25, 1998, and has made no apparent use of the 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 registration with the U.S. Patent and Trademark office and continuous subsequent use.

The disputed domain name is confusingly similar to Complainant’s HUSTLER mark, as it incorporates the mark in its entirety, only adding the generic term “video.”  The use of a generic term to alter the impression of the mark does not defeat a confusing similarity claim.  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 the Complainant combined with a generic word or term). 

Furthermore, Respondent’s use of the generic term “video” does not defeat a confusing similarity claim, because the generic term directly relates to Complainant’s business.  This direct relation only increases the likelihood of confusion.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

           

Additionally, the use of the generic top-level domain “.com” does not significantly alter  the impression of the mark so as to defeat a claim of confusing similarity.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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").

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

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the HUSTLER mark.  Because Respondent has not filed a Response in this matter, the Panel may presume it holds no such rights or 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).

There is no working website located at the disputed domain name address.  Due to the lack of use of the disputed domain name, which was registered four years ago, Respondent is not making 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 Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also 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).

           

There is also no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  Respondent is only know to this Panel as Hotpics International.  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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

Respondent has registered the disputed domain name incorporating Complainant’s mark in its entirety and has failed to use the domain name for four years.  Such behavior permits an inference of a bad faith attempt to sell the domain name to Complainant or to prevent Complainant from registering a domain name reflecting its mark.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see aslo E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).

Moreover, Respondent’s passive holding of <hustlervideo.com> suggests that it registered the domain name for the purpose of disrupting Complainant’s business.  This provides further evidence of bad faith under the policy.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); 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”).

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 should be hereby granted.

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

James A. Carmody, Esq., Panelist

Dated: May 24, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/769.html