L.F.P. INC. v. HUSTLERTV.COM
Claim Number: FA0201000104134
PARTIES
Complainant is L.F.P. INC., Beverly Hills, CA (“Complainant”) represented by Paul Cambria, Jr., of Lipsitz, Green, Fahringer, Roll, Salisbury
& Cambria, LLP. Respondent is HUSTLERTV.COM,
Belize City, BELIZE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hustlertv.com>,
registered with BulkRegister.com.
PANEL
On
March 4, 2002 pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 30, 2002; the Forum received a hard copy of the
Complaint on January 31, 2002.
On
February 4, 2002, BulkRegister.com confirmed by e-mail to the Forum that the
domain name <hustlertv.com> is
registered with BulkRegister.com and that Respondent is the current registrant
of the name. BulkRegister.com has
verified that Respondent is bound by the BulkRegister.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
February 4, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 25, 2002 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@hustlertv.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.
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
Complainant
is a worldwide provider of “adult” entertainment in various media under, inter
alia, its famous HUSTLER trademark.
Its adult products and services include magazines, videotapes, DVDs and
online entertainment. Complainant owns
the mark HUSTLER and has numerous registrations of this mark in the United
States and elsewhere. Complainant uses
its HUSTLER mark in association with the promotion, advertisement and sale of a
wide variety of goods and services, including those in the entertainment and
computer industries. It also markets
the HUSTLER mark on apparel, accessories and other products sold throughout the
world, in stores, through catalogs, and on-line through the internet.
Complainant
has, since 1972, used the trademark HUSTLER in interstate and international
commerce to designate its world-famous “Hustler Magazine” for adult
entertainment.
On
or about December 31, 1993, Complainant adopted and commenced use of the
service mark HUSTLER in interstate and international commerce for the purpose
of designating an on-line version of its HUSTLER magazine at
<hustler.com>.
Complainant
owns various additional marks incorporating the expression “HUSTLER” in
numerous countries around the world.
In
connection with its marks, Complainant has established numerous internet websites, including
<hustler.com>, registered on April 12, 1997.
The
domain name at issue is being used for goods and services which are the same as
or are related to Complainant’s goods and services, resulting in consumers
actually or potentially being misled to believe that Respondent’s Internet
sites are presented, sponsored or endorsed by Complainant.
B.
Respondent
No
Response was received.
FINDINGS
Trademark/Service
Mark Information:
i.
Complainant
holds United States Service Mark
Registration No. 2001594 issued September 17,1996 for the mark HUSTLER in
International Class 42 for providing a computer on-line magazine relating to
adult entertainment and adult subject matter.
ii.
Complainant
holds United States Trademark Registration No. 1011001 issued May 20, 1975 for
the mark HUSTLER in International Class 16 for an entertainment magazine.
Respondent
registered the disputed domain name on April 11, 2000, and uses the domain name
as a portal for adult material.
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 the 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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the 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.
The domain name <hustlertv.com>
contains Complainant’s HUSTLER mark in its entirety, combined with the generic
“tv”. The addition of “tv” to
Complainant’s famous mark does not change the mark, but renders the disputed
domain name confusingly similar to Complainant’s HUSTLER mark. See Victoria's Secret et al v Plum
Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“[t]he mere addition
of the generic term ‘tv’ does not reduce the likelihood of confusion under
Policy 4(a)(i)”).
Therefore, the Panel finds that Policy ¶
4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent
has not established rights or legitimate interests by using a domain name
confusingly similar to the Complainant’s mark by redirecting the domain name to
the Respondent’s pornographic web site.
See Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3,
2000) (finding no rights in the domain name where Respondent has an intention
to divert consumers of Complainant’s products to Respondent’s site by using
Complainant’s mark); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests
where the Respondent diverted Complainant’s customers to his websites).
It
is especially difficult to find a bona fide offering of goods when the
Respondent uses a domain name confusingly similar to a competitor’s mark. See America Online, Inc. v. Xianfeng 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).
Lastly,
because of the Complainant’s notoriety in the adult entertainment business, it
would not be likely that the Respondent is also commonly known by a confusingly
similar name. See Nike, Inc. v. B.
B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or
legitimate interests where one "would be hard pressed to find a person who
may show a right or legitimate interest" in a domain name containing
Complainant's distinct and famous NIKE trademark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
The
evidence permits the inference that Respondent registered the <hustlertv.com>
domain name with either actual notice or constructive knowledge of
Complainant’s famous HUSTLER marks.
Indeed, it is inconceivable that Respondent, owner of an online adult
entertainment website was unaware of Complainant’s famous marks and website
prior to his registration of the <hustlertv.com> domain name. This is evidence of bad faith
registration. See Northwest
Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) ("the
selection of a domain name [northwest-airlines.com] which entirely incorporates
the name of the world’s fourth largest airline could not have been done in good
faith").
Respondent
also registered the <hustlertv.com> domain name for the purpose of
disrupting the business of Complainant, Respondent’s competitor. Respondent’s intent to disrupt Complainant’s
business is evident by Respondent’s presence in the Internet adult-entertainment
industry, his knowledge of Complainant’s famous mark before he registered the <hustlertv.com>
domain name, and Respondent’s creation of an active adult entertainment web
site intending to divert consumers looking for Complainant’s
<hustler.com> website to Respondent’s <hustlertv.com>
site. 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 the Complainant’s marks
suggests that the Respondent, the Complainant’s competitor, registered the
names primarily for the purpose of disrupting the Complainant’s business).
Respondent
also is using the <hustlertv.com> domain name in bad faith for the
purpose of attracting for commercial gain Internet users to its adult website <hustlertv.com>.
See Busy Body, Inc. v. Fitness
Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the
Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and creating confusion by offering similar
products).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <hustlertv.com> be transferred from
Respondent to Complainant.
James P. Buchele, Panelist
Dated: March 11, 2002
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