DECISION

MRA Holding, LLC v. Alexander Boris Boch Niche Profit LTD.

Claim Number:  FA0301000140623

PARTIES

Complainant is MRA Holding, LLC, Santa Monica, CA, USA (“Complainant”) represented by Victor T. Fu, of Pollet Richardson & Patel ALC. Respondent is Alexander Boris Boch Niche Profit LTD., Smolian BG 4700, II, BG (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <girlsgoneswild.com>, registered with Stargate Communications, 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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 8, 2003; the Forum received a hard copy of the Complaint on January 15, 2003.

On January 8, 2003, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain name <girlsgoneswild.com> is registered with Stargate Communications, Inc. and that Respondent is the current registrant of the name. Stargate Communications, Inc. has verified that Respondent is bound by the Stargate Communications, 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 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 2003 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@girlsgoneswild.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 19, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch  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:

1. Respondent’s <girlsgoneswild.com> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark.

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

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

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

FINDINGS

Complainant, MRA Holding, LLC, holds a registered trademark for the GIRLS GONE WILD mark (U.S. Reg. No. 2,411,851, registered on the Principal Register of the U.S. Patent and Trademark Office on December 12, 2000). Complainant filed for this mark on February 12, 1999, and has used the mark since December of 1998 in conjunction with its sale of pre-recorded visual media and related products.

Complainant’s goods have been extensively advertised and promoted throughout the United States and other nations, generating considerable goodwill and consumer recognition of the mark. Pursuant to its efforts to promote and sell its products, Complainant registered the <girlsgonewild.com> domain name on January 21, 1999.

Respondent, Alexander Boris Boch Niche Profit LTD, registered the <girlsgoneswild.com> domain name on May 27, 2002, and is not licensed or authorized to use Complainant’s mark for any purpose. Respondent uses the domain name to host a series of banners and hyperlinks named after various permutations of the GIRLS GONE WILD mark (e.g. “free girls gone wild,” “college girls gone wild” and “girls gone wild nude”), which redirect Internet users to various 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 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 and/or Confusingly Similar

Complainant has established rights in its common law GIRLS GONE WILD mark, as well as through its registration of the mark on the Principal Register of the U.S. Patent and Trademark Office.

Respondent’s <girlsgoneswild.com> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark. Respondent adds the letter “s” between the words GONE and WILD, but this modification of Complainant’s mark is not enough to prevent any confusing similarity. See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); see also Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of the Complainant’s services and those who were to view a web site provided by the Respondent accessed through the contested domain name).

Accordingly, the Panel finds that the <girlsgoneswild.com> domain name is confusingly similiar to Complainant’s GIRLS GONE WILD mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In this dispute, the Panel chooses to view Respondent’s failure to respond to the Complaint as evidence that it lacks rights and legitimate interests in the 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); 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).

Complainant has the initial burden of showing that Respondent has no rights or legitimate interests in the domain name. If Complainant demonstrates that the provisions of Policy ¶¶ 4(c)(i)-(iii) are not applicable to Respondent, Complainant can successfully meet this burden. 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent’s <girlsgoneswild.com> domain name takes advantage of its confusing similarity to Complainant’s mark to redirect Internet users attempting to reach Complainant’s <girlsgonewild.com> domain name to a website featuring hundreds of links to pornographic websites. The Panel infers from Complainant’s uncontested allegations that Respondent receives a referral fee for Internet users who follow these links to the associated webpages. This type of commercial redirection does not evidence a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name as stated in Policy ¶ 4(c)(iii). See Encyclopaedia Britannica, 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); 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); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of the Complainant’s mark in connection with Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant).

Respondent is known by the name “Alexander Boris Boch Niche Profit LTD” in its contact information, and no evidence before the Panel implies that Respondent is “commonly known by” the name GIRLS GONES WILD or <girlsgoneswild.com>. Therefore, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent. See 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"); see also 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).

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

Registration and Use in Bad Faith

Respondent registered and used the <girlsgoneswild.com> domain name in bad faith. Respondent registered an infringing domain name, one that differs from Complainant’s mark by one character. In doing so, Respondent created a likelihood of confusion as to whether there is any affiliation or endorsement of its website by Complainant. Respondent fosters this likelihood of Internet user confusion with its series of links to pornographic websites, most of which are named after derrivatives of Complainant’s GIRLS GONE WILD mark. In taking advantage of the goodwill surrounding Complainant’s mark for commercial gain via referral fees, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the 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).

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

DECISION

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

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

John J. Upchurch, Panelist

Dated:  February 21, 2003

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