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Generic Top Level Domain Name (gTLD) Decisions |
L.F.P., Inc. v. WWE
Claim Number: FA0204000109731
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 WWE,
Karachi, Sind, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hustlerhollywood.com>,
registered with VeriSign, Inc..
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 April 17, 2002; the Forum received
a hard copy of the
Complaint on April 18, 2002.
On
April 23, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain
name <hustlerhollywood.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 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 14,
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@hustlerhollywood.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 23, 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:
1. Respondent’s domain name <hustlerhollywood.com>
is identical to Complainant’s HUSTLER HOLLYWOOD mark and confusingly
similar to Complainant’s HUSTLER mark.
2. By diverting Internet users for
commercial purposes to a third-party website, <cybererotica.com>,
Respondent has no rights or
legitimate interests in <hustlerhollywood.com>.
3. Respondent did not register or begin
using the contested domain name until long after Complainant’s HUSTLER and
HUSTLER HOLLYWOOD
marks acquired their fame. Respondent has used the registered
domain name to redirect Internet users to an adult website in order
to benefit
commercially. Thus, Respondent has registered and used the disputed domain name
in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant holds U.S. service mark Reg.
No. 2,318,186 issued February 2000 for the mark HUSTLER HOLLYWOOD for providing
retail store
services related to books and pre-recorded video cassettes; French
service mark Reg. No. 033 046 366 issued August 2000; and German
service mark
Reg. No. 300 59 892 issued February 2001. Complainant also holds U.S. service
mark Reg. Nos. 2,001,594 and 1,011,001
issued September 1996 and May 1975,
respectively, for the mark HUSTLER in International Class 42 for providing a
computer on-line
magazine relating to adult entertainment and adult subject
matter. In connection with its internationally famous HUSTLER mark, Complainant
has registered numerous domain names, including <hustler.com> registered
April 1997 and <shophustler.com> registered
March 1998.
Respondent registered the disputed domain
name <hustlerhollywood.com> on December 2, 1998 and has used it to
redirect Internet users to <cybererotica.com>, an adult entertainment
website.
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.
Complainant has established rights in
HUSTLER HOLLYWOOD as a service mark by registration and continuous subsequent
use. Respondent’s
<hustlerhollywood.com> domain name is identical
to Complainant’s registered mark since the addition of the generic top-level
domain “.com” is irrelevant
when conducting an identical analysis. 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 Koninklijke
Philips Elec. NV v. Ramazan Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding
that the domain name <philips.org> is identical to Complainant’s PHILIPS
mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant has established its rights to
and interests in its marks. Because Respondent has not submitted a Response in
this proceeding,
the Panel may presume it has 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).
Furthermore, when Respondent fails to
submit a Response, the Panel is permitted to make all inferences in favor of
Complainant. See 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”).
By infringing on Complainant’s registered
marks and redirecting unsuspecting Internet users to a website devoted to
pornographic content,
Respondent fails in reaching the threshold established by
Policy ¶ 4(c)(i) in making a bona fide offering of goods or services. See 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 Pitney
Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights
or legitimate interests in the <pitneybowe.com> domain name where
Respondent
purports to resell original Pitney Bowes’ equipment on its website,
as well as goods of other competitors of Complainant).
Respondent has no connection or
affiliation with Complainant and has not produced evidence of any license,
authorization or consent
to use the HUSTLER HOLLYWOOD mark in a domain name or
in any other manner. Respondent also fails in making a legitimate noncommercial
or fair use of the domain name.
Re-routing unsuspecting Internet users to adult websites does not
qualify as a legitimate noncommercial or fair use under these circumstances
pursuant to 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 had 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).
Additionally, no evidence here suggests
that Respondent is commonly known as “hustlerhollywood” or <hustlerhollywood.com>
pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel only as WWE. 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
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by
the disputed domain name
or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent registered and used the
disputed domain name, which is confusingly similar and identical to
Complainant’s marks, in order
to divert Internet users searching for
Complainant’s services to a competing adult website. Respondent’s registration
and use of
Complainant’s well-known marks represent a deliberate attempt to
benefit from a perceived affiliation that those who access the Internet
will
assume that Respondent has with Complainant’s services; thus, indicating bad
faith registration and use under Policy ¶ 4(b)(iv).
See State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
Respondent directed Internet users seeking the Complainant’s
site to its own
website for commercial gain).
Because of the famous and distinctive nature
of Complainant’s HUSTLER and HUSTLER HOLLYWOOD marks, Respondent is thought to
have had
notice of the existence of Complainant’s mark at the time Respondent
registered the infringing <hustlerhollywood.com> domain name. See
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 world-wide
prominence of the mark, and thus, Respondent registered the domain name in bad
faith); see also Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration).
Given that both Complainant and
Respondent are involved in the adult entertainment industry, it is reasonable
to infer that Respondent
registered and used the contested domain name in order
to disrupt Complainant’s business. This demonstrates bad faith under Policy
¶
4(b)(iii). See Mission Kwa
Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as
“…one who acts in opposition to another and the context does not imply or
demand any restricted meaning such as commercial or business competitor”); see
also 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements requested
under the ICANN Policy, the Panel concludes that the required relief should be
hereby
GRANTED.
Accordingly, it is Ordered that the <hustlerhollywood.com> domain name be
TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 5, 2002.
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