DECISION

L.F.P., Inc. v. Corp Moishe

Claim Number:  FA0302000146622

PARTIES

Complainant is L.F.P., Inc., Beverly Hills, CA, USA (“Complainant”) represented by Paul J. Cambria of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria. Respondent is Corp Moishe, San Pedro, COSTA RICA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <sportshustlers.com> and <sportshustler.com> registered with Network Solutions, 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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 24, 2003; the Forum received a hard copy of the Complaint on February 25, 2003.

On February 26, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <sportshustlers.com> and <sportshustler.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 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@sportshustlers.com and postmaster@sportshustler.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 March 31, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <sportshustlers.com> and <sportshustler.com> domain names are confusingly similar to Complainant’s HUSTLER and HUSTLER CASINO marks.

2. Respondent does not have any rights or legitimate interests in the <sportshustlers.com> and <sportshustler.com> domain names.

3. Respondent registered and used the <sportshustlers.com> and <sportshustler.com> domain names in bad faith.

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

FINDINGS

Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the HUSTLER mark (Reg. No. 1,022,001 registered on May 20, 1975) related to adult entertainment in various media, including magazines, videotapes, DVDs and online entertainment. Complainant also holds a trademark registration with the USPTO for the HUSTLER CASINO mark (Reg. No. 2,279,911 registered on August 21, 2001) in relation to providing gaming casino facilities.

Respondent registered the <sportshustler.com> domain name on April 21, 2001. Respondent registered the <sportshustlers.com> domain name on September 21, 2002.

Both of Respondent’s disputed domain names resolve to the same website, which reads “Where Sex and Sports Collide,” offering adult entertainment and Internet gambling.

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 that it has rights in the HUSTLER mark and the HUSTLER CASINO mark through registration with the USPTO.

Respondent’s <sportshustlers.com> and <sportshustler.com> domain names are confusingly similar to Complainant’s HUSTLER mark because the domain names incorporate Complainant’s entire mark and merely add the descriptive term “sports” to the beginning of Complainant’s mark and the generic top-level domain (“gTLD”) “.com” to the end of the mark. Respondent’s <sportshustlers.com> domain name also adds the letter “s” to the end of Complainant’s mark. The Panel finds that neither the addition of the descriptive term “sports,” the gTLD “.com” nor the letter “s” sufficiently distinguish the disputed domain names from Complainant’s registered mark pursuant to Policy ¶ 4(a)(i). 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 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 website provided by the Respondent accessed through the contested domain name).

The phrase "confusingly similar" is shorthand for saying that concurrent use of conflicting marks will create a likelihood of confusion. McCarthy on Trademarks and Unfair Competition, § 23:4 (4th ed. 2000). The Panel is well aware other panels have held that a Complainant’s failure to establish a likelihood of confusion between a registered mark and a domain name bars the transfer of the domain name registration when the term signified by the mark is also a term of common usage. See Trump v. olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that “although Complainant is a well known personage whose name is internationally recognized,” the word “trump” predates Complainant and has a myriad of common uses, therefore, <porntrumps.com> should not be transferred to Complainant). The Panel also fully understands that Complainant does not have the exclusive right to every form of the term “hustler.” See Trump v. olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on Complainant’s famous mark TRUMP, since Complainant does not have the exclusive right to use every form of the word “trump”).

However, on its facts, the Trump decision is distinguishable from this proceeding. In the Trump decision, the Panel found that there was no likelihood of confusion between the TRUMP mark and the <porntrumps.com> domain name because the web-surfing public would not readily associate Mr. Trump’s distinguished moniker and service mark with “porn.” In contrast, Complainant holds trademark registrations in relation to both the adult entertainment industry and gaming casino facilities. By referencing both “sex” and “sports” on its web page, Respondent has created a likelihood of confusion between Complainant’s registered trademark and Respondent’s web-related services. The likelihood of confusion resulting from Respondent’s offer of similar services to those that Complainant provides mandates this Panel to find that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).

Furthermore, Respondent has not provided this Panel with a Response to the Complaint. Had Respondent presented a case to establish that the <sportshustlers.com> and <sportshustler.com> domain names were not confusingly similar to Complainant’s registered marks, the Panel may have been receptive to such an argument. However, in the face of Complainant’s establishment of a prima facie case and Respondent’s failure to respond in this proceeding, the Panel is forced to find in favor of the party that presents its case to the Panel. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also 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”).

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

Rights or Legitimate Interests

The Panel is permitted to presume that Respondent lacks any rights to or legitimate interests in the <sportshustlers.com> and <sportshustler.com> domain names because of Respondent’s failure to respond to the Complaint. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response nor provided the Panel with evidence to suggest otherwise); 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).

Respondent is using the disputed domain names to divert Internet traffic to its website that features adult entertainment and gambling services, both activities in which Complainant is also engaged. The use of a domain name confusingly similar to a registered mark to engage in competing activity is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Respondent has not come forward with any proof and there is no evidence in the record to establish that Respondent is commonly known by SPORTS HUSTLERS, <sportshustlers.com>, SPORTS HUSTLER or <sportshustler.com>. Therefore, Respondent has failed to establish that it has any rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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 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").

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

Registration and Use in Bad Faith

Respondent is using the disputed domain names to redirect Internet users to its website, which offers similar services as Complainant, making Respondent a competitor of Complainant. The registration and use of a confusingly similar domain name for the purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); 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 website).

Moreover, the Panel may infer that Respondent is profiting from its registration and use of the disputed domain names because the domain names resolve to a website that offers adult entertainment and gambling services. Respondent’s attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion between Respondent’s website and Complainant’s services is evidence of bad faith registration and use 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)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

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

Accordingly, it is Ordered that the <sportshustlers.com> and <sportshustler.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated: April 8, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/343.html