DECISION

Barrett Enterprises Group v. Modern Limited - Cayman Web Development

Claim Number:  FA0306000162191

PARTIES

Complainant is Barrett Enterprises Group, Carson City, NV (“Complainant”) represented by Allan B. Gelbard of The Law Offices of Allan B. Gelbard.  Respondent is Modern Limited - Cayman Web Development, George Town, Grand Cayman, Cayman Islands, British West Indies (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <moonlightbunnyranch.com>, registered with Address Creation.

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 June 12, 2003; the Forum received a hard copy of the Complaint on June 12, 2003.

On June 18, 2003, Address Creation confirmed by e-mail to the Forum that the domain name <moonlightbunnyranch.com> is registered with Address Creation and that Respondent is the current registrant of the name. Address Creation verified that Respondent is bound by the Address Creation 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 June 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 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@ moonlightbunnyranch.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 July 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 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, <moonlightbunnyranch.com>, is identical to Complainant’s MOONLIGHT BUNNY RANCH mark.

2. Respondent has no rights to or legitimate interests in the <moonlightbunnyranch.com> domain name.

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

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

FINDINGS

Complainant, Barrett Enterprises Group, does business as the MOONLIGHT BUNNY RANCH, a world famous legal brothel in Carson City, Nevada.  Complainant provides online and other entertainment services under the MOONLIGHT BUNNY RANCH mark.  Furthermore, Complainant’s business operation has received wide publicity in the media.

Complainant’s first commercial use of the MOONLIGHT BUNNY RANCH mark occurred December 4, 1992, and Complainant has been known exclusively under that mark and the shortened version, BUNNY RANCH, since then.  In addition, Complainant filed for a federally registered trademark with the United States Patent and Trademark Office for the MOONLIGHT BUNNY RANCH mark.

Respondent registered the <moonlightbunnyranch.com> domain name November 19, 2001.  Respondent is using the disputed domain name to offer various adult entertainment services that are similar to services offered by 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

Respondent established in this proceeding that it has common law rights in the MOONLIGHT BUNNY RANCH mark through Complainant’s pending trademark application and by continuous use in commerce since 1992 pursuant to licenses issued by the State of Nevada.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

The domain name registered by Respondent, <moonlightbunnyranch.com>, is identical to Complainant’s MOONLIGHT BUNNY RANCH mark because Respondent merely adds the top level domain name “.com” to Complainant’s entire mark.  The Panel finds that simply adding “.com” to Complainant’s mark is not sufficient to distinguish Respondent’s domain name from Complainant’s mark since a top level domain name is required of all domain name registrants.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark).

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

Rights to or Legitimate Interests

Complainant established that it had rights to and legitimate interests in the mark contained in the domain name Respondent registered.  Complainant also alleges that Respondent has no such rights and Respondent did not file a Response in this proceeding to controvert those allegations.  Thus, the Panel accepts as true all reasonable inferences and allegations submitted in the Complaint.  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); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); 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’s WHOIS contact information for the <moonlightbunnyranch.com> domain name lists its name to be Modern Limited – Cayman Web Development.  Based on the WHOIS contact information and the fact that no evidence before the Panel indicates otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent has no rights in a domain name when Respondent is not known by the mark).

Respondent is using the <moonlightbunnyranch.com> domain name, which is identical to Complainant’s mark, to attract Internet users to its website.  The website associated with the disputed domain name offers online entertainment services similar to adult entertainment services offered by Complainant on the Internet.  Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and Respondent is not making a legitimate noncommercial or fair use of the site under Policy ¶ 4(c)(iii).  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services).

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

Registration and Use in Bad Faith

Complainant has alleged that Respondent acted in bad faith.  Respondent registered a domain name that contains in its entirety Complainant’s mark and Respondent is offering services that are similar to the services Complainant offers on the Internet but at Respondent’s website hosted at the <moonlightbunnyranch.com> domain name.  Thus, the Panel finds that Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s MOONLIGHT BUNNY RANCH mark as to the sponsorship of its website and the services being offered at said website.  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant).

Accordingly, 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 <moonlightbunnyranch.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 28, 2003.

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