LFP IP, LLC and L.F.P., Inc. v. Gallery Traffic Service c/o Mark Hurson
Claim Number: FA0801001128245
Complainant is LFP IP, LLC and L.F.P., Inc. (“Complainant”), represented by John
P. Hains, of Lipsitz Green Scime Cambria LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hustlertube.com>, registered with GoDaddy.com
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 11, 2008.
On January 9, 2008, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <hustlertube.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 January 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 7, 2008 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@hustlertube.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 assertions:
1. Respondent’s <hustlertube.com> domain name is confusingly similar to Complainant’s HUSTLER mark.
2. Respondent does not have any rights or legitimate interests in the <hustlertube.com> domain name.
3. Respondent registered and used the <hustlertube.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LFP IP, LLC and L.F.P., Inc., provide a variety of adult entertainment services through print, television and online mediums. Complainant markets and advertises these services under its HUSTLER mark. Complainant’s predecessor first registered the HUSTLER mark with the United State Patent and Trademark Office (“USPTO”) on February 2, 1988 (Reg. No. 1,474.758). Additionally, Complainant or its predecessors have registered the HUSTLER mark with multiple other governmental authorities, including the Canadian Intellectual Property Office (“CIPO”) and the Office for Harmonization in the Internal Market (“OHIM”).
Respondent registered the <hustlertube.com> domain name on October, 10, 2006. The website that resolves from Respondent’s disputed domain name contains Complainant’s trademarked and copyrighted material and provides a link to Complainant’s website. Respondent had a former affiliation with Complainant regarding another website, but Complainant ended that affiliation. Respondent has never been authorized to utilize Complainant’s mark in connection with the <hustlertube.com> domain name. Based upon the facts alleged in the Complaint, the Panel infers that Respondent was attempting to elicit an affiliation with Complainant by registering and using the disputed domain 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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 registered the HUSTLER mark with multiple governmental authorities, including the USPTO, the CIPO and the OHIM. The Panel finds Complainant’s registrations of its mark with these authorities are sufficient to establish Complainant’s rights in the HUSTLER mark pursuant to Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <hustlertube.com> domain name fully incorporates Complainant’s HUSTLER mark with the descriptive term “tube,” which presumably refers to television, one of the mediums Complainant uses to deliver its services under the HUSTLER mark. The Panel finds Respondent’s <hustlertube.com> domain name is confusingly similar to Complainant’s HUSTLER mark pursuant to Policy ¶ 4(a)(i) because it incorporates Complainant’s mark with a descriptive term and generic top-level domains such as “.com” are irrelevant when evaluating whether a domain name is confusingly similar to a mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).
The Panel finds Policy 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case in support of its
allegations, the burden shifts to Respondent to establish that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has
sufficiently presented a prima facie
case to support its allegations. Since
Respondent has failed to respond to the Complaint, the Panel may assume
Respondent does not have rights or legitimate interests in the disputed domain
name. However, the Panel will examine
the record to determine whether Respondent has rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat.
Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure
to respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”).
Respondent’s disputed domain name resolves to a website that redirects Internet users to Complainant’s website. The Panel infers that Respondent is using this disputed domain name to attempt to elicit an affiliation with Complainant. The Panel finds that Respondent’s use of the disputed domain name to elicit an affiliation is not a use conferring rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
Additionally, neither the record nor WHOIS information indicate Respondent is commonly known by the disputed domain name. Complainant has not authorized Respondent to utilize its HUSTLER mark in connection with the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent possessed actual knowledge of Complainant’s
HUSTLER mark at the time it registered the disputed domain name and was
attempting to create an affiliation with Complainant through the use of the
disputed domain name. The Panel finds
such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am.
Online, Inc. v. Miles, FA 105890 (Nat.
Arb. Forum May 31, 2002) (“Respondent is using the domain
name at issue to resolve to a website at which Complainant’s trademarks and
logos are prominently displayed.
Respondent has done this with full knowledge of Complainant’s business
and trademarks. The Panel finds that this conduct is that which is prohibited
by Paragraph 4(b)(iv) of the Policy.”); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”).
Additionally, Respondent
was using a domain name that was confusingly similar to Complainant’s HUSTLER
mark in an attempt to elicit an affiliation for which Respondent would receive
compensation from Complainant. The Panel
finds this is an attempt by Respondent to profit from the goodwill Complainant
has established in the HUSTLER mark and is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp.
v. Perot.net, FA 95312 (Nat. Arb.
Forum Aug. 29, 2000) (finding bad faith where the domain name in question is
obviously connected with the complainant’s well-known marks, thus creating a
likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the
respondent admittedly used the complainant’s well-known mark to attract users
to the respondent's website).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hustlertube.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 25, 2008
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