L.F.P., Inc. v. WWE
Claim Number: FA0204000109731
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 WWE, Karachi, Sind, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hustlerhollywood.com>, registered with VeriSign, Inc..
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 17, 2002; the Forum received a hard copy of the Complaint on April 18, 2002.
On April 23, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain name <hustlerhollywood.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 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 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 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
A. Complainant makes the following allegations:
1. Respondent’s domain name <hustlerhollywood.com> is identical to Complainant’s HUSTLER HOLLYWOOD mark and confusingly similar to Complainant’s HUSTLER mark.
2. By diverting Internet users for commercial purposes to a third-party website, <cybererotica.com>, Respondent has no rights or legitimate interests in <hustlerhollywood.com>.
3. Respondent did not register or begin using the contested domain name until long after Complainant’s HUSTLER and HUSTLER HOLLYWOOD marks acquired their fame. Respondent has used the registered domain name to redirect Internet users to an adult website in order to benefit commercially. Thus, Respondent has registered and used the disputed domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant holds U.S. service mark Reg. No. 2,318,186 issued February 2000 for the mark HUSTLER HOLLYWOOD for providing retail store services related to books and pre-recorded video cassettes; French service mark Reg. No. 033 046 366 issued August 2000; and German service mark Reg. No. 300 59 892 issued February 2001. Complainant also holds U.S. service mark Reg. Nos. 2,001,594 and 1,011,001 issued September 1996 and May 1975, respectively, for the mark HUSTLER in International Class 42 for providing a computer on-line magazine relating to adult entertainment and adult subject matter. In connection with its internationally famous HUSTLER mark, Complainant has registered numerous domain names, including <hustler.com> registered April 1997 and <shophustler.com> registered March 1998.
Respondent registered the disputed domain name <hustlerhollywood.com> on December 2, 1998 and has used it to redirect Internet users to <cybererotica.com>, an adult entertainment website.
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has established rights in HUSTLER HOLLYWOOD as a service mark by registration and continuous subsequent use. Respondent’s <hustlerhollywood.com> domain name is identical to Complainant’s registered mark since the addition of the generic top-level domain “.com” is irrelevant when conducting an identical analysis. See Pomellato S.P.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Koninklijke Philips Elec. NV v. Ramazan Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to Complainant’s PHILIPS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its rights to and interests in its marks. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has 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).
Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
By infringing on Complainant’s registered marks and redirecting unsuspecting Internet users to a website devoted to pornographic content, Respondent fails in reaching the threshold established by Policy ¶ 4(c)(i) in making a bona fide offering of goods or services. See Am. Online, Inc. v. 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”); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant).
Respondent has no connection or affiliation with Complainant and has not produced evidence of any license, authorization or consent to use the HUSTLER HOLLYWOOD mark in a domain name or in any other manner. Respondent also fails in making a legitimate noncommercial or fair use of the domain name. Re-routing unsuspecting Internet users to adult websites does not qualify as a legitimate noncommercial or fair use under these circumstances pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).
Additionally, no evidence here suggests that Respondent is commonly known as “hustlerhollywood” or <hustlerhollywood.com> pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel only as WWE. 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and used the disputed domain name, which is confusingly similar and identical to Complainant’s marks, in order to divert Internet users searching for Complainant’s services to a competing adult website. Respondent’s registration and use of Complainant’s well-known marks represent a deliberate attempt to benefit from a perceived affiliation that those who access the Internet will assume that Respondent has with Complainant’s services; thus, indicating bad faith registration and use under Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).
Because of the famous and distinctive nature of Complainant’s HUSTLER and HUSTLER HOLLYWOOD marks, Respondent is thought to have had notice of the existence of Complainant’s mark at the time Respondent registered the infringing <hustlerhollywood.com> domain name. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark, and thus, Respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Given that both Complainant and Respondent are involved in the adult entertainment industry, it is reasonable to infer that Respondent registered and used the contested domain name in order to disrupt Complainant’s business. This demonstrates bad faith under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as “…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements requested under the ICANN Policy, the Panel concludes that the required relief should be hereby GRANTED.
Accordingly, it is Ordered that the <hustlerhollywood.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 5, 2002.
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