DECISION

Health Devices Corporation d/b/a Doc Johnson Enterprises v. Aspen S T C

Claim Number: FA0305000158254

PARTIES

Complainant is Health Devices Corporation d/b/a Doc Johnson Enterprises, North Hollywood, CA (“Complainant”) represented by Paul J. Cambria of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria LLP. Respondent is Aspen S T C, New Port, RI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <doc-johnson-sextoys.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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 20, 2003; the Forum received a hard copy of the Complaint on May 20, 2003.

On May 23, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <doc-johnson-sextoys.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. 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 May 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 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@doc-johnson-sextoys.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 June 19, 2003, 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 makes the following assertions:

1. Respondent’s <doc-johnson-sextoys.com> domain name is confusingly similar to Complainant’s DOC JOHNSON mark.

2. Respondent does not have any rights or legitimate interests in the <doc-johnson-sextoys.com> domain name.

3. Respondent registered and used the <doc-johnson-sextoys.com> domain name in bad faith.

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

FINDINGS

Complainant holds two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DOC JOHNSON mark (Reg. Nos. 2,071,009 and 2,151,117 registered on June 17, 1997 and April 14, 1998, respectively) in relation to a wide variety of adult novelty products and related goods. Complainant also owns registrations for the DOC JOHNSON mark in Italy, Benelux, France, Germany, Canada and the State of California. Complainant registered its domain name, <docjohnson.com>, on October 20, 1998.

Respondent registered the <doc-johnson-sextoys.com> domain name on November 3, 2000. The website that the disputed domain name resolves to offers a wide variety of sex toys, novelty products and related goods in direct competition with Complainant’s business.

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 DOC JOHNSON mark through registration with the USPTO and continuous use in commerce since at least as early as 1976.

Respondent’s <doc-johnson-sextoys.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name appropriates Complainant’s mark and adds two hyphens and the combination of two generic words, “sex” and “toys.” The addition of the hyphens does not significantly distinguish the domain name from the mark because the addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i). See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the Complainant’s mark is identical to and confusingly similar to Complainant’s mark).

Similarly the addition of the generic words “sex” and “toy” does not differentiate the domain name from the mark because the two words relate directly to Complainant’s business of providing sex toys to the consuming public. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); 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 Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Responded has failed to favor the Panel with a Response in this proceeding. Therefore, the Panel may accept all reasonable allegations and inferences in the Complaint as true. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, the Respondent’s failure to contest the allegations of the Complaint permits the Panel to presume that Respondent lacks any rights to or legitimate interests in the disputed domain name for purposes of Policy ¶ 4(a)(ii). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent’s use of the <doc-johnson-sextoys.com> domain name to offer sex toys, novelty products and related goods in direct competition with Complainant’s business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not bona fide use).

Moreover, the Respondent has proffered no proof and no evidence is apparent from the record that suggests Respondent is commonly known by either DOC JOHNSON SEX TOYS or <doc-johnson-sextoys.com>. Thus, Respondent has failed to establish its rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(c)(ii). See 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); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

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

Registration and Use in Bad Faith

Respondent’s registration and use of a domain name confusingly similar to Complainant’s mark to compete directly with Complainant in the sale of sex toys demonstrates Respondent’s registration and use of the <doc-johnson-sextoys.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the record indicates Respondent intended to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Moreover, because Respondent offers the same type of goods in competition with Complainant at a domain name that is confusingly similar to Complainant’s mark, the Panel may presume that Respondent registered the <doc-johnson-sextoys.com> domain name primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from the Complainant to a competitor’s website in violation of Policy 4(b)(iii)); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).

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

DECISION

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

Accordingly, it is Ordered that the <doc-johnson-sextoys.com> domain name be TRANSFERRED from Respondent to Complainant.

                                   

James A. Carmody, Esq., Panelist

Dated:  July 1, 2003

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