L.F.P., Inc v. Hotpics International
Claim Number: FA0204000109576
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@hustlervideo.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
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.
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.
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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