DECISION

LFP, Inc. v. Tobias Schreyer

Claim Number:  FA0303000149190

PARTIES

Complainant is LFP, Inc., Beverly Hills, CA, USA (“Complainant”) represented by Paul J. Cambria, Jr. of Salisbury & Cambria LLP. Respondent is Tobias Schreyer, Muenchen, Bavaria, II, GERMANY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hustler-beavers.com>, registered with Cronon Ag Berlin, Niederlassung Regensburg.

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, 2003; the Forum received a hard copy of the Complaint on March 14, 2003.

On March 14, 2003, Cronon Ag Berlin, Niederlassung Regensburg confirmed by e-mail to the Forum that the domain name <hustler-beavers.com> is registered with Cronon Ag Berlin, Niederlassung Regensburg and that Respondent is the current registrant of the name. Cronon Ag Berlin, Niederlassung Regensburg has verified that Respondent is bound by the Cronon Ag Berlin, Niederlassung Regensburg 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 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 7, 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@hustler-beavers.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 14, 2003, 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 assertions:

1. The domain name registered by Respondent, <hustler-beavers.com>, is confusingly similar to Complainant’s HUSTLER and BEAVER HUNT marks.

2. Respondent has no rights or legitimate interests in the <hustler-beavers.com> domain name.

3. Respondent registered and used the <hustler-beavers.com> domain name in bad faith.

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

FINDINGS

Complainant, L.F.P., Inc., holds numerous trademark registrations reflecting the HUSTLER mark. More specifically, Complainant is the owner of U.S. Patent and Trademark Office (“USPTO”) Reg. No. 1,011,001 for the HUSTLER mark registered on the Principal Register of the USPTO on May 20, 1975. Complainant’s registration indicates that the HUSTLER mark denotes Complainant’s “entertainment magazine” and that Complainant’s first use of the mark occurred in 1972. Complainant also holds USPTO Reg. No. 2,001,594 for the HUSTLER mark and registration number 1,910,016 for the BEAVER HUNT mark, registered on the Principal Register on August 8, 1995.

As stated, in 1972, Complainant adopted and commenced using its HUSTLER trademark in interstate and international commerce to designate its famous Hustler Magazine. Complainant is an international provider of adult entertainment, the dissemination of which is accomplished via various media. Complainant’s adult products and services include videotapes, magazines, DVDs and online entertainment.

In 1979, Complainant adopted and commenced using the BEAVER HUNT trademark internationally in conjunction with its Beaver Hunt Magazine.

In connection with its marks, Complainant established in this proceeding that it has numerous Internet websites, including, inter alia, <hustler.com>, which was registered on April 12, 1997, and <beaverhunt.com>, which was registered on February 18, 1998.

Respondent, Tobias Schreyer, registered <hustler-beavers.com> July 24, 2001. Complainant’s investigation of Respondent’s use of the domain name indicates that the subject domain name resolves to a “fee-based, ‘adult entertainment’ Web site offering goods and services in the field of adult entertainment, in direct competition with Complainant.”

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 will draw such inferences as the Panel 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 established in this proceeding that it has rights in the HUSTLER and BEAVER HUNT marks through registration and by continuous use of the marks in commerce. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The domain name registered by Respondent, <hustler-beavers.com>, is confusingly similar to Complainant’s HUSTLER mark. Respondent’s domain name incorporates Complainant’s famous HUSTLER mark in its entirety, and deviates only by the addition of “-beavers,” a word of particular significance to Complainant. Respondent’s addition of a generic word that describes an aspect of Complainant’s business fails to create a distinguishable domain name for the purpose of Policy ¶ 4(a)(i). Further, Respondent’s domain name appears to be a combination of Complainant’s HUSTLER and BEAVER HUNT marks, with some variation. Because top-level domains, such as “.com,” are inconsequential in determining whether a domain name is confusingly similar to a mark under the Policy, Respondent’s domain name is rendered confusingly similar. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant’s evidence and corresponding assertions are unanswered and uncontested. Respondent’s failure to respond suggests that it lacks rights and legitimate interests in the <hustler-beavers.com> domain name. Further, Respondent has not successfully rebutted Complainant’s prima facie case; therefore, all reasonable inferences made by Complainant will be accepted as true unless clearly contradicted by the evidence. 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”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

The domain name registered by Respondent, <hustler-beavers.com>, resolves to a commercial website where Respondent offers products and services that compete with Complainant’s offerings. Respondent’s use of an infringing domain name to sell goods and services in competition with Complainant fails to create or demonstrate rights under Policy ¶¶ 4(c)(i) or (iii). Respondent’s actions evidence opportunistic use of Complainant’s HUSTLER and BEAVER HUNT marks because Respondent is capitalizing on the Internet confusion its domain name creates. Registrants of infringing domain names cannot be allowed to commercially profit from diverting Internet users to their websites by way of unauthorized use of another’s famous mark. 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 realized commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Respondent is not connected or affiliated with Complainant and has not received any license, authorization or consent, express or implied, to use Complainant’s famous HUSTLER or BEAVER HUNT marks. Additionally, no evidence in Respondent’s WHOIS information suggests that Respondent is commonly known by the domain name that includes Complainant’s marks under Policy ¶ 4(c)(ii). Circumstances indicate that Respondent is opportunistically benefiting from a perceived affiliation with Complainant’s famous HUSTLER mark; therefore, Respondent fails to demonstrate valid rights in the domain name. 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 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.  

Registration and Use in Bad Faith

Respondent’s bad faith registration and use of the domain name is articulated under Policy ¶ 4(b)(iv). Specifically, Respondent’s domain name resolves to an adult website, which seeks to ensnare unsuspecting Internet users who are searching for Complainant’s offerings. Unrefuted evidence indicates that Respondent derives a “fee” from its enterprise, thus bringing Respondent’s actions within the scope of Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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).

As a competitor of Complainant’s in the adult entertainment industry, Respondent’s opportunistic registration and use of a domain name that incorporates Complainant’s famous marks evidences bad faith not only under Policy ¶ 4(b)(iv), but also under Policy ¶ 4(b)(iii) because Respondent is disrupting Complainant’s business. Respondent’s actions regarding the subject domain name are expressly addressed by the Policy, namely, Respondent is attempting to profit from the unauthorized exploitation of a famous mark. As illustrated, numerous provisions of the Policy proscribe such use. 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 website).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <hustler-beavers.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 24, 2003.

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