L.F.P., Inc v. Hotpics International
Claim Number: FA0204000109576
Complainant is L.F.P., Inc., Beverly Hills, CA (“Complainant”) represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria, LLP. Respondent is Hotpics International, Cherry Hill, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hustlervideo.com>, registered with Verisign, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 (the “Forum”) electronically on April 12, 2002; the Forum received a hard copy of the Complaint on April 15, 2002.
On April 17, 2002, Verisign, Inc. confirmed by e-mail to the Forum that the domain name <hustlervideo.com> is registered with Verisign, Inc. and that Respondent is the current registrant of the name. Verisign, Inc. has verified that Respondent is bound by the Verisign, 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 April 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 7, 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.
On May 21, 2002, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The disputed domain name <hustlervideo.com> is confusingly similar to HUSTLER, a mark in which complainant holds rights.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant has been a worldwide provider of “adult” entertainment in various media under its well-known HUSTLER trademark since 1972. From its inception, Complainant has used the HUSTLER mark in relation to interstate and international sales of Hustler Magazine.
Complainant also uses its HUSTLER mark for ancillary products; including videos, apparel, and accessories. In relation to videos, Complainant has marketed its videotapes under the common-law trademark and logo HUSTLER VIDEO since September 14, 1999. Complainant conducts business on multiple websites, including <hustler.com>, registered on April 12, 1997.
Complainant has registered HUSTLER as a trademark and a service mark. On May 20, 1975, Complainant registered the HUSTLER mark with the United States Patent and Trademark Office as Reg. No. 1,011,001. In relation to Complainant’s on-line magazine service, it registered the HUSTLER mark with the United States Patent and Trademark Office as Reg. No. 2,001,594, on September 17, 1996.
Respondent registered the disputed domain name on March 25, 1998, and has made no apparent use of the name.
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.
Identical and/or Confusingly Similar
Complainant has established its rights in the HUSTLER mark through registration with the U.S. Patent and Trademark office and continuous subsequent use.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights to and interests in the HUSTLER mark. Because Respondent has not filed a Response in this matter, the Panel may presume it holds no such rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
There is also no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent is only know to this Panel as Hotpics International. 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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Registration and Use in Bad Faith
Moreover, Respondent’s passive holding of <hustlervideo.com> suggests that it registered the domain name for the purpose of disrupting Complainant’s business. This provides further evidence of bad faith under the policy. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
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 should be hereby granted.
Accordingly, it is Ordered that the <hustlervideo.com> domain name be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 24, 2002
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