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Generic Top Level Domain Name (gTLD) Decisions |
Clifton T. Britt, p/k/a Lexington Steele,
and Mercenary Pictures, Inc. v. Russian Communications
Claim
Number: FA0411000362115
Complainants are
Clifton T. Britt, p/k/a Lexington Steele and Mercenary Pictures, Inc. (collectively
“Complainant”), represented by Holly
Pranger, of Pranger Law Group, 3223 Webster Street, San Francisco,
CA 94123. Respondent is Russian Communications (“Respondent”),
Post Box 4075, Moscow, na 333000, RUSSIA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <lexingtonsteele.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
8, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 10, 2004.
On
November 9, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that
the domain name <lexingtonsteele.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the name. Intercosmos
Media Group, Inc.
d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com
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
November 10, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
November 30, 2004 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@lexingtonsteele.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 7, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lexingtonsteele.com>
domain name is identical to Complainant’s LEXINGTON STEELE mark.
2. Respondent does not have any rights or
legitimate interests in the <lexingtonsteele.com> domain name.
3. Respondent registered and used the <lexingtonsteele.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainants are
Clifton T. Britt, a famous adult film actor, director and producer,
professionally known as “Lexington Steele,” and
Mercenary Pictures, Inc., a
California corporation wholly owned by Clifton T. Britt. Mercenary Pictures, Inc. is the exclusive
licensee of the LEXINGTON STEELE mark.
Complainant has
made continuous use of the LEXINGTON STEELE mark in connection with the adult
film industry since May 1997. For
nearly a decade, Complainant, as “Lexington Steele,” has performed as a feature
actor in over 700 adult films.
Additionally, Complainant has produced and directed 44 adult films.
In recognition
of his achievements, Complainant was awarded the title of “Male Performer of
the Year,” in 2000, 2002 and 2003, at
the Adult Video News awards. Complainant was also listed as “Number 31”
on the “Power Fifty,” which is a list of the 50 most powerful people in adult
entertainment
compiled by Arena Magazine. The list also includes such recognized names as Hugh Hefner and
Larry Flynt.
Complainant has
registered the LEXINGTON STEELE mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,796,870,
issued December 23, 2003).
Respondent
registered the <lexingtonsteele.com> domain name on June 2,
1999. Respondent’s domain name resolves
to a commercial website that makes prominent use of Complainant’s name and
likeness to sell videos
and DVDs.
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.
Registration of
a mark with a governmental authority is unnecessary for a complainant to
establish rights in a mark if a common law
mark has been established. See
McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002)
(The ICANN dispute resolution policy is “broad in scope” in that “the reference
to a trademark or service
mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark
or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not
require “that a
trademark be registered by a governmental authority for such
rights to exist”).
Complainant
has established rights in the LEXINGTON STEELE mark through ownership of a common
law mark. Complainant established that
through Complainant’s long-term
commercial use of the mark since 1997, Complainant and Complainant’s mark have
acquired secondary
meaning and become distinctive of Complainant’s goods and
services. Thus, Complainant has established secondary meaning in the LEXINGTON
STEELE mark through its continued and exclusive use for the last seven years. See
Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary
meaning was
established); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“On 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.”); see
also BroadcastAmerica.com, Inc. v.
Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common
law rights in BROADCASTAMERICA.COM, given extensive use of
that mark to
identify Complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition
with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
Additionally,
Complainant has established rights in the LEXINGTON STEELE mark through
registration with the USPTO. See
Men’s Wearhouse, Inc. v. 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.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie
evidence of validity, which creates a rebuttable presumption that the mark is
inherently distinctive. Respondent has
the burden of refuting this assumption).
Respondent’s <lexingtonsteele.com>
domain name is identical to Complainant’s mark because it incorporates
Complainant’s mark in its entirety and merely deviates with
the addition of the
top-level domain “.com.” Incorporating Complainant’s mark in its entirety with
the mere addition of a top-level
domain renders a domain name identical to a
Complainant’s mark with regard to Policy ¶ 4(a)(i). See Fed’n of
Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark
GAY
GAMES); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY
BY
VICTORIA mark); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the <lexingtonsteele.com>
domain name. Due to Respondent’s failure to respond to the Complaint, the Panel
assumes that Respondent lacks rights and legitimate
interests in the disputed
domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once
Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has
no rights or legitimate interests is sufficient
to shift the burden of proof to Respondent to demonstrate that such rights or
legitimate
interests do exist); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted
a Response. 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 Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that Respondent’s failure to respond allows all reasonable
inferences of fact in
the allegations of Complainant to be deemed true).
Respondent is
using the <lexingtonsteele.com> domain name to divert Internet
traffic to a website that offers and promotes products featuring Complainant.
Respondent’s use of
a domain name that is identical to Complainant’s LEXINGTON
STEELE mark to redirect Internet users interested in products that feature
Complainant to a website that offers and promotes Complainant’s products is not
a use in connection with a bona fide offering of
goods or services pursuant to
Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name
pursuant to Policy
¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO
Jan. 18, 2001) ("Use of complainant’s entire mark in infringing domain
names makes it difficult to infer a
legitimate use."); see also Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell
Complainant’s goods without Complainant’s authority, as
well as others’ goods,
is not bona fide use); see also Clear Channel Commun,, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a
competitor of Complainant, had no rights or legitimate interests
in a domain
name that utilized Complainant’s mark for its competing website); see also 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).
Furthermore,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by
the <lexingtonsteele.com>
domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name 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 Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <lexington.com> domain name for its own commercial
gain. Respondent’s domain name diverts Internet users, who intend to search
under Complainant’s
well-known mark, to a website sponsored by Respondent that
offers Complainant’s products. Respondent’s practice of diversion, motivated
by
commercial gain, through the use of an identical domain name evidences bad
faith registration and use pursuant to 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 Fossil Inc. v. NAS, FA 92525
(Nat. Arb. Forum Feb. 23, 2000) (finding that 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing
with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration
and use pursuant to Policy 4(b)(iv)); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s
well-known marks,
thus creating a likelihood of confusion strictly for commercial gain).
Additionally,
Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) by registering
a domain name confusingly similar
to Complainant’s mark and using it to market competing adult material. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered
the names primarily for the
purpose of disrupting Complainant's business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <lexingtonsteele.com> domain name be TRANSFERRED
from Respondent to Complainants.
James A. Carmody, Esq., Panelist
Dated:
December 20, 2004
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