L.F.P. INC. v. HUSTLERTV.COM
Claim Number: FA0201000104134
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
No Response was received.
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.
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.
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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