L.F.P., Inc v. B and J Properties
Claim Number: FA0204000109697
PARTIES
The
Complainant is L.F.P., Inc., Beverly
Hills, CA (“Complainant”) represented by Paul
J. Cambria, of Lipsitz, Green,
Fahringer, Roll, Salisbury & Cambria, LLP. The Respondent is B and J
Properties, Las Vegas, NV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hustlerstore.com>,
registered with Melbourne IT.
PANEL
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.
Mr.
Peter L. Michaelson, Esq. as Panelist.
PROCEDURAL HISTORY
The
Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution
Policy (“Policy”), available at http://www.icann.org/services/udrp/udrp‑policy‑24oct99.htm,
which was adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999, and approved on October 24, 1999, and in
accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution
Policy (“Rules”) as approved on October 24, 1999, as supplemented by the
National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy then in effect (“Supplemental Rules”).
The
Complainant submitted a Complaint, together with Exhibits A‑I, 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 15, 2002, Melbourne IT confirmed by e‑mail to the Forum that the
domain name <hustlerstore.com>
is registered with Melbourne IT and that the Respondent is the current
registrant of the name. Melbourne IT
has verified that Respondent is bound by the Melbourne IT 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 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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@hustlerstore.com by e‑mail.
A
timely Response was received and determined to be complete on May 6, 2002.
In
accordance with paragraph 7 of the Supplemental Rules, the Complainant timely filed
an additional submission, specifically a Reply, on May 13, 2002 with the Forum.
On May 16, 2002, pursuant to the Complainant’s request
to have the dispute decided by a single‑member
Panel, the Forum appointed Mr. Peter L.
Michaelson, Esq. as Panelist and set
a due date of May 30, 2002 to receive the decision from the Panel.
RELIEF SOUGHT
The
Complainant requests that the disputed domain name be transferred from the
Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Confusing similarity/identicality
The
Complainant contends that the disputed domain name is confusingly similar to
Complainant’s "HUSTLER" marks.
Specifically, the Complainant states that the disputed domain name
incorporates the Complainant's mark "HUSTLER" in its entirety
combined with a generic word "store".
Hence,
the Complainant concludes that the requirements of paragraph 4(a)(i) of the
Policy are satisfied.
2. Rights and legitimate interests
The Complainant contends that the
Respondent has no rights or legitimate interests in the disputed domain name.
In that regard, the Complainant states
that the Respondent has no connection or affiliation with Complainant, and has
not received any license, authorization or consent, express or implied, to use
the Complainant's "HUSTLER" mark in a domain name or in any other
manner. Hence, the Complainant
concludes that there is no plausible circumstance under which the Respondent
could legitimately use Complainant’s "HUSTLER" mark, ostensibly even
as part of the disputed domain name
Further, the Complainant states that
there is no operational web site resolvable through the disputed domain name
and, in that regard, the Respondent has not made any preparations to use the
domain name for any legitimate purpose, or made a bona fide offering of goods or services through that name.
In addition, the Complainant contends
that the Respondent is not commonly known by the disputed domain name, and that
the Respondent is not making any legitimate non‑commercial or fair use
(or, indeed, any use at all) of the disputed domain name.
Thus, the Complainant concludes that the
Respondent cannot demonstrate any rights or legitimate interests in the
disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
3. Bad faith use and registration
The Complainant contends that the
Respondent registered and is using the disputed domain name in bad faith.
First,
the Complainant states that since the date, February 11, 2000, on which the
Respondent registered the disputed domain name, there is no indication, now for
more than two years hence, that the Respondent made any actual use or
contemplates making any use of the disputed domain name.
Further,
the Complainant contends that the Respondent registered the disputed domain
name in the speculative hope that the Complainant ‑‑ as the owner
of the mark "HUSTLER", or a third party, would seek to purchase that
name from the Respondent for an amount that exceeds the Complainant’s out‑of‑pocket
costs for having registered that name.
In that regard, the Complainant takes the position that there is no
plausible situation in which the Respondent would have been unaware of
Complainant’s "HUSTLER" marks at the time the Respondent registered
the disputed domain name.
Consequently, the Complainant concludes
that the Respondent’s activities demonstrate bad faith use and registration of
the disputed domain name pursuant to paragraph 4(a)(iii) of the Policy.
B. Respondent
1. Confusing similarity/identicality
The
Respondent takes the position that the disputed domain name is not confusingly
similar to the Complainant's "HUSTLER" mark because the Respondent
will not market or sell goods similar to those marketed and sold by the
Complainant under its mark.
Specifically,
the Respondent, as indicated by apparently a letter signed by a third party,
Robert Hiegel, intended to market a furniture line, on‑line through the
disputed domain name, "that caters to those who live a twenty‑four
hour lifestyle".
Further,
the Respondent states that she has registered the disputed domain name on
February 11, 2000 which is before the February 15, 2000 date on which the
Complainant's mark "HUSTLERHOLLYWOOD" was itself registered (by the
United States Patent and Trademark Office ‑‑ PTO).
Additionally,
the Respondent states that the mark "HUSTLER" is "owned by a
variety of people marketing a variety of retail goods, from lawn mowers to
machine propellers, etc. There are
also trademarks with a combination of words which include the term
'hustler'. Others have registered the
HUSTLER trademark long before L.F.P., INC."
The
Respondent further states that "[t]he term hustler is a generic word
having its own definition in the English language and does not necessarily have
to stand for L.F.P., INC."
Hence,
the Respondent appears to contend that the Complainant has failed to satisfy
paragraph 4(a)(i) of the Policy.
2. Rights and legitimate interests
The
Respondent contends that she has a legitimate interest in the disputed domain
name, hence negating the Complainant’s assertion that she has no rights or
legitimate interest under paragraph 4(a)(ii) of the Policy.
In
particular, the Respondent states that there has not been an operational web
site accessible through the disputed domain name because of "circumstances
beyond the Respondent's control".
In that regard, the Respondent states that on July 25, 2000 ‑‑
shortly after she registered the disputed domain name, she was injured in a
motor vehicle accident. As a result of
the accident, the Respondent states that she suffered significant spinal injury
which rendered her unable to work from that date forward to the filing date of
the Response.
She
also states that she is "known by some" by the disputed domain name.
3. Bad Faith
The
Respondent contends that her activities do not amount to bad faith use and
registration.
Specifically,
the Respondent states that she is not causing damage to the Complainant's
"HUSTLER" mark and to the Complainant. Further, she states that she did not register the disputed domain
name with any intention of "waiting for Complainant, or third party"
to purchase it. She also states that
she had not solicited either the Complainant or any third party to purchase the
disputed domain name from her.
Further,
the Respondent states that she initially registered the disputed domain name on
February 11, 2000 and then re‑registered it (renewed it) during February,
2002 because she has a "legitimate purpose" in doing so. That purpose, so the Respondent states, is
to sell "home furnishings" as the Respondent has "a college
education in interior architecture".
In that regard, the Respondent states that "the English definition
of the word hustler is what the Respondent had in mind when developing her home
store theme." Hence, the
Respondent states that her idea of providing a "home store" was the
reason underlying her registration of the disputed domain name.
Consequently,
the Respondent apparently concludes that the Complainant has failed to show bad
faith use and registration as required by paragraph 4(a)(iii) of the Policy.
C. Complainant's Reply
Inasmuch
as the Reply was timely filed, the Panel has considered it.
1. Confusing similarity/identicality
As
to the Respondent's contention that the disputed domain name is not confusingly
similar to the Complainant's ''HUSTLER" marks, the Complainant states
that:
(a)
although its federal registration for its mark "HUSTLER HOLLYWOOD"
issued slightly after the Respondent's registration of the disputed domain
name, the Complainant's trademark rights, based on its intent‑to‑use
filing date of July 23, 1998 (first use having been shown), in that mark and
for that matter its trademark rights in its registered mark
"HUSTLER", dating back to 1975, all well predate February 11, 2000 ‑‑
the date on which the Respondent registered the disputed domain name; and
(b)
the Complainant began use of its domain names <hustler.com> on or about
December 31, 1993 and <shophustler.com> on March 4, 1998 ‑‑
again preceding the February 11, 2000 registration date of the disputed domain
name.
Further,
the Complainant contends that the Respondent's expressed intentions of not
marketing or selling similar goods were not given under oath and merely relate
to a "purported current intent with respect to future acts" and as
such "does not and can not relate to Respondent's plans for the domain
name at issue from time to time in the future".
In
addition, in view of the Respondent's contentions that the term
"hustler" is generic, the Complainant points to its trademark
registration for that term and states that if that term were generic then the
PTO would not have registered it to the Complainant.
Lastly,
the Complainant notes that the mere addition of a suffix or generic term, such
as "store", to a disputed domain name does not suffice to overcome a
likelihood of confusion between that name and a registered mark.
2. Rights and legitimate interests
As
to the Respondent's contention that it has legitimate rights and interests in
the disputed domain name, the Complainant responds, by way of its Reply:
(a)
the Respondent admits that admits that she has “no affiliation or connection
with” Complainant; and
(b)
the Respondent has not refuted the Complainant’s assertion in its Complaint
that the Respondent has received no license, authorization or consent, express
or implied, to use Complainant’s "HUSTLER" mark in a domain name or
in any other manner.
In
addition, the Complainant states that the Respondent fails to dispute the
Complaint's statement that the Respondent registered the disputed domain name
<hustlerstore.com> long after the Complainant’s adoption of its
"HUSTLER" mark, and subsequent to the Complainant’s adoption and
registration of its domain names <hustler.com> and <shophustler.com>, and subsequent to the adoption by
the Complainant of its "HUSTLER HOLLYWOOD" mark in connection with
the operation of retail stores.
Further,
the Complainant, in responding to the Respondent's reason (her continuing
disability resulting from a motor vehicle accident) for not having posted an
operational web site accessible through the disputed domain name, notes that
the accident in July 2000 occurred some 5 1/2 months after the February
11, 2000 date on which that name was registered. Further, the Complainant states that the listed registrant of the
disputed domain name, B and J Properties, not being a natural person, "can
not sustain injuries in a car accident".
In that regard, the Complainant states that it has no information
regarding the registrant, B and J Properties, or the relationship between it and
Ms. Hiegel, except that the latter is named as Administrative Contact for the
disputed domain name but is not the listed registrant of that name.
In
addition, though the Respondent contends that it is "known by some as <hustlerstore.com>,
the Complainant states that the Respondent has offered no evidence to support
its contention.
As
to the Respondent's assertion that it is not causing any damage to the
Complainant's "HUSTLER" mark, the Complainant takes the position that
trademark infringement constitutes damage in and of itself (per se).
3. Bad Faith
With
respect to the Respondent's contention that her acts do not evince bad faith
use and registration, the Complainant states even if the Respondent initially
had, as asserted, a legitimate purpose at the time the disputed domain name was
registered to sell home furnishings through a web site accessible through that
name, the Respondent, some two years later, offers no evidence of its purpose
other than an unsworn statement.
Further,
as to the Respondent's contention that “[t]he English definition of the word
hustler is what the Respondent had in mind when developing her home store
theme”, the Complainant is not aware of any such definition relating the word
“hustler” to a “home store theme” in any respect whatsoever.
Lastly,
as to the Respondent's assertion that the Complainant "is one of many
companies who share the same trademark word HUSTLER offering different goods
and services, some of whom carried the mark long before L.F.P., Inc.”, the
Complainant states that its review of the PTO’s records indicates that the only
United States trademark registrations issued for the term "HUSTLER"
for use with an internet web site are those owned by the Complainant.
FINDINGS
A copy of the WHOIS registration record
for the disputed domain name appears in Exhibit H to the Complaint. As indicated on that record, the Respondent
registered that name with Melbourne IT on February 11, 2000.
A.
The Complainant’s “HUSTLER” marks
The
Complainant owns the following federal registrations for various marks that
include the term "HUSTLER" as a formative, and has provided copies of
the registration certificates, as issued by the United States Patent and
Trademark Office (PTO), in Exhibits A‑C of the Complaint.
1) HUSTLER HOLLYWOOD (block letters)
US
registration 2,318,186; registered February 15, 2000.
This
service mark was registered for use in connection with: "Retail store
services relating to books and prerecorded video cassettes" in
international class 35. This mark
claims first use and first use in inter‑state commerce of
December 3, 1998.
2) HUSTLER (block letters)
US
registration 2,001,594; registered September 17, 1996.
This
service mark was registered for use in connection with: "Providing a
computer on‑line magazine relating to adult entertainment and adult
subject matter" in international class 42. This mark claims first use and first use in inter‑state
commerce of December 31, 1993.
3) HUSTLER (block letters)
US
registration 1,011,001; registered May 20, 1975 (renewed May 20, 1995)
This
trademark was registered for use in connection with: "Entertainment
magazine" in international class 16.
This mark claims first use and first use in inter‑state commerce
of January 1, 1972. Though this mark
was registered to HG Publications, Inc., the Complainant has provided, in
Exhibit D to the Complaint, a copy of an notice of recordation issued by the
PTO stating that this mark has been assigned on April 12, 1995, to L.F.P. Inc.,
which is the present Complainant, through a written assignment recorded in the
PTO and starting at frame 0856 of reel 002320.
B. The Complainant and its activities
The
Complainant is a worldwide provider of “adult” entertainment goods and services
under its mark "HUSTLER".
Those goods and services include adult products, specifically
videotapes, magazines, merchandise and DVDs, and online entertainment. The Complainant uses its mark
"HUSTLER" in association with promotion, advertisement and sale of a
wide variety of goods and services, including those in the entertainment and
computer industries. The Complainant
also uses the mark "HUSTLER" on apparel, accessories and other
products sold throughout the world, in stores, through catalogs, and on‑line
via the internet.
Since
1972, the Complainant has used the mark "HUSTLER" in interstate and
international commerce to designate its “Hustler Magazine” for adult
entertainment.
On
or about 31 December 1993, the Complainant adopted and commenced use of the
mark "HUSTLER" in interstate and international commerce for the
purpose of designating an on‑line version of its "HUSTLER"
magazine (the Complainant has provided a hard‑copy print‑out of the
home page of that web site in Exhibit E of the Complaint).
Further,
in connection with its mark "HUSTLER", the Complainant has
established various web sites, including <hustler.com>, for which it
registered that domain name on 12 April 1997 and <shophustler.com> for
which it registered the latter domain name on 4 March 1998. The Complainant currently sells goods
through both web sites. A hard‑copy
print‑out of the home page of the <hustler.com> web site and its
associated WHOIS registration information appears in Exhibits E and F to the
Complaint, and collectively in Exhibit G for the <shophustler.com> web
site.
On
December 3, 1998, the Complainant commenced use of the its mark "HUSTLER
HOLLYWOOD" in connection with providing retail store services.
C.
The Respondent and its activities
Ms. Sandra Hiegel is listed as the
administrative contact for the disputed domain name for the Respondent
registrant, B and J Properties. While
the record before this Panel does not indicate any other relationship between
Ms. Hiegel and the Respondent, particularly any ownership interest of the
former in the latter, the Response filed in this proceeding by Ms. Hiegel
specifies her as the Respondent.
Therefore, this Panel will assume, consistent with the Response, that
Ms. Hiegel owns the Respondent, hence making her and B and J Properties the
same entity for purposes of this proceeding.
The Respondent has no connection or
affiliation with the Complainant. The
Respondent has not made any offers to sell the disputed domain name whether to
the Complainant or a third party.
Since the disputed domain name was
registered on February 11, 2000, the Respondent has yet to establish an
operational web site resolvable through the disputed domain name. The Respondent renewed the registration for
this name during February 2002. At the
time she first registered the name in February 2000, the Respondent intended to
sell home furnishings through such a site inasmuch as she has academic training
in that field. There is no indication
in the record before this Panel as to if and when the Respondent will ever
establish such a site.
Ms. Hiegel was injured in a motor vehicle
accident on July 25, 2000. As a result
of the accident, she has sustained significant spinal injuries which, to the
date of the Response, have rendered her unable to work. The Respondent has included, with the Response,
copies of a letter dated October 6, 2000 from her insurance company, Allstate
Insurance Company, documenting its receipt of a medical bill which was
submitted in behalf of Ms. Hiegel for medical treatment she received, a
second page ostensibly from a letter or memo dated June 25, 2001 from Dr.
Mark B. Kabins as to an estimate of likely charges for a possible surgical
procedure to be performed on Ms. Hiegel, and what appears to be a consultation
summary from Dr. James R. Hazel (of Tri‑City Orthopaedic Clinic in
Richland, Washington) dated January 3, 2002 regarding her medical condition at
the time.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(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
The Panel finds that confusion would
likely arise as a result of the Respondent’s eventual use of the disputed
domain name ‑‑ when and if that use were ever to occur.
In that regard, the disputed domain name
includes the Complainant's registered mark "HUSTLER", which has
clearly acquired requisite secondary meaning and distinctiveness as a result of
the Complainant's continuous use since 1972.
There
can be no question here that the disputed domain name, by virtue of its
inclusion of the term "HUSTLER", if used in the manner intended by
the Respondent or by a third‑party to which the Respondent might transfer
that name, will likely cause user confusion.
Such
confusion would undoubtedly cause Internet users intending to access the
Complainant's website, but who reach a website through the disputed domain
name, to think that an affiliation of some sort exists between the Complainant
and the Respondent or its third‑party transferee, when, in fact, no such
relationship would exist at all. See,
e.g., Spence‑Chapin Services to
Families and Children v. Wynman, FA100492 (Nat. Arb. Forum Dec. 10, 2001); MPL Communications v LOVEARTH.net,
FA 97086 (Nat. Arb. Forum June 4, 2001); Meijer, Inc. v. Porksandwich Web Services, FA 97186 (Nat. Arb.
Forum July 6, 2001); MPL Communications v
1WebAddress.com, FA 97092 (Nat. Arb. Forum June 4, 2001); American Home Products Corp. v. Malgioglio,
D2000‑1602 (WIPO Feb. 19, 2001);
Surface Protection Indus., Inc. v. The Webposters, D2000‑1613 (WIPO
Feb. 5, 2001); Dollar Financial Group,
Inc. v VQM NET, FA 96101 (Nat. Arb. Forum Jan. 25, 2001); eBAY Inc. v. G L Liadis Computing, Ltd.,
D2000‑1463 (WIPO Jan. 10, 2001); Treeforms,
Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18,
2000) and The Pep Boys Manny, Moe and
Jack of California v. E‑Commerce Today, Ltd., AF‑0145 (eResolution
May 3, 2000).
It is simply inconceivable to the Panel,
given the long‑term use by the Complaint of its "HUSTLER" mark
and the resulting widespread public recognition attained by that mark both
taken in view of the Complainant's activities in providing on‑line
services under its "HUSTLER" marks, that an Internet user familiar
with the "HUSTLER" mark would think that a web site accessible by
<hustlerstore.com> was not affiliated in some manner with the
Complainant.
As
such, the Panel finds that sufficient similarity exists under
paragraph 4(a)(i) of the Policy between the disputed domain name and the
Complainant's "HUSTLER" marks.
Rights or Legitimate Interests
Based
on its federal trademark registrations, the Complainant has acquired exclusive
rights to use its "HUSTLER" marks in connection with the goods and
services recited in those registrations.
Furthermore, by virtue of the registration of these marks, the PTO has
implicitly recognized that each such mark is distinctive and has acquired
appropriate secondary meaning in the marketplace. Therefore, the Panel rejects the Respondent's argument that the
mark "HUSTLER" is generic when used in connection with the goods and
services with which the Complainant has registered each of its
"HUSTLER" marks.
The
Respondent has yet to provide any basis that would legitimize any claim it has
to the disputed domain name.
Though
the Respondent claims to be known by the name "hustlerstore", she has
not provided any independent, let alone sufficient, evidence to support that
claim. Accordingly, the Panel can not give any credence to her uncorroborated
claim. Hence, the Respondent's actions
are in direct contravention of paragraph 4(c)(ii) of the Policy. See, e.g., Keller Williams Realty, Inc. v. Advantage Realtor,
D2002‑0123 (WIPO Mar. 29, 2002); Viacom
International, Inc. v. Matrix Management cited supra; Park Place Entertainment Corporation v. Bowno, D2001‑1442
(WIPO Mar. 11, 2002); Jones Apparel
Group, Inc. v. Sousa, D2001‑1308 (WIPO Dec. 21, 2001); America Online, Inc. v. Wood, D2001‑0555
(WIPO June 13, 2001); Treeforms, Inc. v.
Cayne Industrial Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18,
2000); MSNBC Cable, LLC v. Tysys.com,
D2000‑1204 (WIPO Dec. 8, 2000); and Cabletron
Systems, Inc. v. DLS Enterprises, D2000‑0571 (WIPO Aug. 18, 2000).
Furthermore,
the Respondent has not only not established any operational web site since she
registered that name now more than two years ago but also has made no showing
whatsoever that: (a) she has made any demonstrable preparations to use that
name in connection with any bona fide offering of goods or services before she
received notice of the dispute during April 2002, or (b) as to when such
preparations are to occur in the future.
In
that regard, the Panel is cognizant of the heavy burden that would be placed on
complainants if in support of their cases on illegitimacy each of those
complainants were to be impressed with a burden of providing detailed proof of
any lack of rights or legitimate interests on behalf of their respondents. Such a burden is particularly problematic
given that the underlying facts more than not are in exclusive or near
exclusive possession and control of the respondents, particularly if they have
not in fact made publicly discernible use ‑‑ as here. As such, the Panel believes that where
allegations of illegitimacy are made, as is the case here, when coupled with
conduct of respondents that evidences bad faith, it is quite reasonable to
shift the burden of proof to each such respondent to adequately show that its use
of the disputed domain name is legitimate, such as by showing that, in
conjunction with the disputed domain name, it is making a bona fide commercial
offering of goods or services or preparations for such offerings, or non‑commercial
or fair use. See Treeforms cited supra; and Playboy Enterprises International, Inc. v. Rodriguez, D2000‑1016
(WIPO Nov. 7, 2000).
In
instances as here, where a respondent has not yet used the disputed domain
name, the burden becomes one of showing, consistent with paragraph 4(c)(i) of
the Policy, that, prior to its receipt of any notice of a dispute concerning
that name, the respondent has made or is making demonstrable preparations to
construct a web site addressable by that name.
See Casual Corner Group Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug.
7, 2000) where a delay of 10 months in developing a site was viewed by the
panel as being too short to signify a lack of bona fide intent to actually use
the name. Compare Wine Biscuits v. Brown, D2000‑0004 (WIPO Feb. 16, 2000)
where the Panel held that a failure to develop a site in two years raised an
inference of a lack of such an intent.
Granted,
in instances where a respondent has not begun its use of a disputed domain
name, the period of time that constitutes reasonable and excusable delay is
highly factually dependent and will greatly depend on the nature of the actions
actually undertaken by the respondent during that time aimed at effectuating
use of the name for an operational web site and ultimately deploying that site. Delay in and of itself does not necessarily
negate the existence of demonstrable preparations. However, as the period of delay lengthens, the duty of the
respondent to engage in some type of affirmative action aimed at undertaking
demonstrable preparations of one sort or another concomitantly increases.
Realistic
practicalities, inherent in business planning and execution in general and web
site development in particular, mandate against setting a single sharp, fixed
period of time, such as, e.g., two months, six months and the like, that is
applicable to each and every situation.
What constitutes justifiable delay in any factual scenario is assessed
against the nature of the exact actions which the respondent has taken during
that time that are proffered as being "demonstrable preparations" as
well as the length of the period of delay and any extenuating
circumstances. See Treeforms, cited supra.
Given
the present situation now facing this Panel, it is beyond question that the
Respondent's conduct falls considerably short of meeting this burden. There simply is no proof whatsoever of any
usage of the disputed domain name since it was registered on February 11, 2000
(now over two years ago) and no evidence whatsoever of any activities, at all,
having been undertaken by the Respondent between that date and the present
that, could be viewed as "demonstrable preparations", i.e., that are
calculated to result in deployment of an operational web site addressed by that
name.
The
Panel certainly recognizes and appreciates that the Respondent has suffered
significant injuries as a result of her accident ‑‑ though it
occurred some five months after the disputed domain name was registered. However, the Respondent ‑‑ if
she was as unable to actively work as she asserts ‑‑ could well
have engaged another entity or individual to develop an operational web site,
or undertaken some other affirmative effort aimed at having the web site
developed through the assistance of another party. Even if such efforts were, when viewed in isolation, rather
modest, nevertheless the adequacy of those efforts should be assessed, not with
respect to another individual, but illuminated by the respondent's physical
condition and concomitant abilities at the time.
But,
for whatever reason ‑‑ and the record before the Panel is
completely silent as to it, the present Respondent has chosen not to act at all
and, hence, by doing so, is simply letting the disputed domain name lie totally
fallow.
There
is simply no evidence whatsoever in the record before this Panel that the
Respondent's continuing physical impairments during the 2+ years she has held
the name after her accident completely precluded (i.e., incapacitated) her from
taking any such affirmative action at all and when, if ever, the Respondent,
due to her medical condition, will be able to return to her active working
endeavors. Given this, it is quite
conceivable to the Panel that the Respondent's injury will either be permanent
or long‑term in duration; hence significantly extending the delay period,
during which the disputed domain name will still not be used, to some unknown
date out into the future.
If
the Panel were amenable to excusing the Respondent's inaction due to her
injury, the Panel would not only need to excuse the Respondent's past 2+ year
delay but also sanction that delay to extend for an indefinite amount of time
into the future. This the Panel will
not do.
While
the Panel recognizes that in certain instances excusable delays will inevitably
arise, those delays must be quantifiable and limited; they can not extend
indefinitely ‑‑ as the Respondent is implicitly asking this Panel
to do.
This
Panel believes that, where a respondent encounters a lengthy delay in starting
his(her) preparations to use a registered domain name, that respondent must
nevertheless undertake some affirmative action during that time ‑‑
with the adequacy of those actions being measured by the abilities of the
respondent during that time ‑‑ aimed at exploiting that name,
whether it be simply engaging another who is ready, willing and able to
actively undertake appropriate preparations or otherwise. A respondent can not simply do nothing and
effectively "sit on his rights" for an extended period of time when
that respondent might be capable of doing otherwise. Now, rather than drawing a fixed, bright line as to the
acceptable bounds of such action, the Panel recognizes that the bounds and
quanta of such action will clearly need to vary from one situation to another
and be assessed against the relevant facts at hand.
Nevertheless,
given the complete inactivity of the Respondent in undertaking any affirmative
efforts whatsoever aimed at exploiting the disputed domain name for now over a
two‑year period and no reason underlying why the Respondent was incapable
of doing anything more, the Respondent's conduct simply falls way short of
complying with paragraph 4(c)(i) of the Policy.
Furthermore,
in the absence of having used the domain name at all, the Respondent is simply
unable to show that she has made any legitimate noncommercial or fair use of
the disputed domain name sufficient to fall within paragraph 4(c)(iii) of the
Policy.
In
light of the above findings, the Panel is not persuaded that the Respondent has
any or, based on current facts provided to the Panel, is likely to acquire any
rights or legitimate interests in the disputed domain name under any provision
of paragraph 4(c) of the Policy.
Thus,
the Panel finds that the Respondent has no rights or legitimate interests in
the disputed domain name within paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
The
Panel firmly believes that the Respondent's actions constitute bad faith
registration and use of the disputed domain name.
While bad faith registration may not exist
at the time the Respondent initially registered the disputed domain name ‑‑
given her expressed intentions to use the domain name at that time in
connection with a future web site directed to home furnishings, it is eminently
clear to this Panel that, at the time she renewed the registration during
February 2002 and given the immediately preceding two‑year period of
continuous non‑use by the Respondent and her likely expectation that this
non‑use would continue indefinitely into the future, the Respondent's
renewal was made in bad faith.
Various
panels have ordered transfer of a domain name after an extended period of non‑use
by its registrant, typically referred to as "passive holding". Passive holding is the antithesis of excused
delay. In cases where passive holding
was found, non‑use was coupled with a complainant having valid trademark
rights commencing prior to the date on which the offending domain name was
registered coupled with the registrant having actual or imputed knowledge of
those rights. See, e.g., Spence‑Chapin Services, cited supra; America Online, Inc. v. Woods, D2001‑0555 (WIPO June 13,
2001); Chip Merchant Inc. v. Blue Star
Electronics d/b/a Memory World, D2000‑0474 (WIPO Aug. 21, 2000); Chernow Communications, Inc. v. Kimball,
D2000‑0119 (WIPO May 18, 2000); America.com
Inc. v PSS InterNet Services, Inc., FA 96784 (Nat. Arb. Forum Apr. 19,
2001); Awesome Kids LLC v. Selavy
Communications, D2001‑0210 (WIPO Apr. 16, 2001) and American Vintage Wine Biscuits, Inc v.
Brown, d/b/a Big Daddy’s Antiques, D2000‑0004 (WIPO Feb. 16, 2000);
as well as Northwest Racing Associates
Limited Partnership v. Quantu Marketing, FA 95506 (Nat. Arb. Forum Oct. 6,
2000); Can't Stop Productions, Inc. v.
Lussie, FA 94966 (Nat. Arb. Forum July 27, 2000); Liberty Public Limited Company v. Guarrera, FA 95103 (Nat. Arb.
Forum Aug. 17, 2000); V & S Vin &
Spirit Aktiebolag v. Gunnar Hedenlans Peev, FA 95078 (Nat. Arb. Forum Aug.
9, 2000); Leland Stanford Junior
University v. Zedlar Transcription & Translation, FA 94970 (Nat. Arb.
Forum July 11, 2000); Georgia Gulf
Corporation v. The Ross Group, D2000‑0218 (WIPO June 14, 2000); Sanrio Company, Ltd.. v. DLI, D2000‑0159
(WIPO Apr. 20, 2000); America Online,
Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar.
16, 2000) and Telstra Corporation Limited
v. Nuclear Marshmallows, D2000‑0003 (WIPO Feb. 18, 2000). Here, in view of the widespread reputation
of the Complainant's mark "HUSTLER" ‑‑ given its use
began some 28 years prior to the initial registration of the disputed domain
name, it would simply be preposterous to think that the Respondent was unaware
of this mark at the time she initially registered (and certainly renewed) the
disputed domain name. In each case
cited immediately above, such passive holding, occurring in view of and in
spite of the respondent's knowledge as to the mark in question, was seen as
sufficient evidence of bad faith use and registration under the general
provisions of paragraph 4(b) of the Policy.
The Panel sees no plausible reason to divert from that view, with the
passive holding here providing the basis for the Panel's finding that the
Respondent's actions constitute bad faith use and registration in contravention
of paragraph 4(a)(iii) of the Policy.
Thus, the Panel concludes that the
Complainant has provided sufficient proof of its allegations to establish a
prima facie case under paragraph 4(a) of the Policy upon which the relief it
now seeks can be granted.
DECISION
In
accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the relief
sought by the Complainant is hereby granted.
The
disputed domain name, namely <hustlerstore.com>,
is ordered transferred to the Complainant.
Peter L. Michaelson, Esq., , Panelist
Dated: May 30, 2002
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