General Media Communications, Inc. v.
Wear Products, Inc.
Claim Number: FA0205000114406
PARTIES
Complainant
is General Media Communications, Inc.,
New York, NY (“Complainant”). Respondent is Wear Products Inc., Gulf Breeze, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <penthousetoys.com>,
registered with Network Solutions, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 22, 2002; the Forum received a hard copy of the Complaint
on May 25, 2002.
On
May 24, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the
domain name <penthousetoys.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
May 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 17,
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@penthousetoys.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
June 26, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) 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
1. Respondent’s <penthousetoys.com>
domain name is confusingly similar to Complainant’s PENTHOUSE mark.
2. Respondent has no rights or legitimate
interests in the <penthousetoys.com> domain name.
3. Respondent registered and used the <penthousetoys.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is the holder of numerous
registrations with the U.S. Patent and Trademark Office (“USPTO”), such as:
Reg. No. 880,922 for the PENTHOUSE mark, registered June 30, 1999; Reg. No.
1,020,498 for the PENTHOUSE FORUM mark; and, Reg. No. 2,441,085 for the
PENTHOUSE.COM mark.
Since 1969, Complainant has published and
distributed a well-known magazine using the trademark PENTHOUSE throughout the
United States and internationally. Complainant’s publication has generated many
millions of dollars of sales. Complainant has capitalized on the popularity of
its mark by expanding to a number of other products and services, including
distributing various adult sexual toys bearing the PENTHOUSE trademark.
Complainant operates from its
<penthouse.com> website, which receives a significant amount of Internet
traffic.
Respondent registered the disputed <penthousetoys.com>
domain name on March 19, 2002. Respondent’s domain name corresponds with a
website that offers the sale of adult oriented sexual merchandise, the majority
of which are sold by some of Complainant’s largest competitors. Respondent is
not licensed or authorized to use Complainant’s PENTHOUSE mark. Following Complainant’s second cease and
desist letter, Respondent placed a disclaimer on its website.
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.
Complainant has established its rights in
the PENTHOUSE mark by listing its mark on the Principal Register of the USPTO
and subsequent continuous use.
Respondent’s <penthousetoys.com>
domain name is confusingly similar to Complainant’s mark. Respondent
incorporates Complainant’s entire PENTHOUSE mark in its domain name. The
addition of an industry-related word, such as “toys,” fails to detract from the
overall presence of Complainant’s PENTHOUSE 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). The likelihood of confusion is further
increased because Respondent is operating in the same industry as Complainant.
See Slep-Tone Entm't Corp. v.
Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000)
(stating that “likelihood of confusion is further increased by the fact that
the Respondent and [Complainant] operate within the same industry”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a
Response in this proceeding, the Panel may presume it has no rights or
legitimate interests in respect of 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, Respondent’s failure to respond allows all
reasonable inferences made by Complainant to be deemed true. 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”).
Respondent’s disputed domain name directs
unsuspecting Internet users to a competing website offering the same goods and
services as Complainant’s website. Respondent’s use of the PENTHOUSE mark in
conjunction with topics related to sexuality suggests opportunistic tactics
aimed at ensnaring Internet users interested in Complainant’s goods and
services. Therefore Respondent is not using the disputed domain name in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i). See N. Coast Med., Inc.
v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona
fide use where Respondent used the domain name to divert Internet users to its
competing website); see also State
Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27,
2000) (finding that “unauthorized providing of information and services under a
mark owned by a third party cannot be said to be the bona fide offering of
goods or services”).
Respondent also fails to make a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). Respondent is commercially benefiting from Complainant’s mark by
using it as a tool to sell sex toys to people looking for Complainant’s goods. See
MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using the
Complainant’s mark by redirecting Internet traffic to its own website); see
also Chip Merch., Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to Complainant’s mark and that Respondent’s use
of the domain names to sell competing goods was illegitimate and not a bona
fide offering of goods).
Additionally, there is no evidence that
suggests that Respondent is commonly known as PENTHOUSETOYS.COM or by <penthousetoys.com>
pursuant to Policy ¶ 4(c)(ii). Respondent is not licensed or authorized to use
Complainant’s PENTHOUSE mark in order to solicit orders for competing goods.
Thus, Respondent fails to demonstrate rights and legitimate interests in the
domain name. See 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); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant’s PENTHOUSE family of marks
are listed on the Principal Register of the USPTO and enjoy the protection that
accompanies such registration. Respondent is thought to have had constructive
notice of Complainant’s interests and rights in its PENTHOUSE family of marks
when Respondent registered the disputed domain name. Respondent’s registration
of the domain, despite knowledge of Complainant’s preexisting rights in its
marks, represents bad faith registration and use under the Policy. See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); 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).
Respondent opportunistically traded on
the fame of Complainant’s mark and solicited orders, thereby commercially
benefiting from Complainant’s previous and ongoing development of its PENTHOUSE
mark. Respondent’s registration of a confusingly similar domain name offering
the same goods in the identical industry represents bad faith under Policy ¶
4(b)(iv). Respondent intentionally attempted to attract, for commercial gain,
Internet users searching for Complainant’s goods and services by creating
confusion with Complainant’s PENTHOUSE mark. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb.
Forum Oct. 11, 2000) (finding that the Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the web site without permission
from Complainant); see also Busy
Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding
bad faith where Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant).
Lastly, Respondent’s addition of a
disclaimer on its website fails to address the primary problem that accompanies
domain names that infringe on famous marks, namely, initial interest confusion.
See Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000)
(finding that since a disclaimer does not, and could not, accompany the domain
name, then the “domain name attracts the consumer’s initial interest and the
consumer is misdirected long before he/she has the opportunity to see the
disclaimer”); see also Las Vegas
Sands, Inc. v. Red Group,
D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that Respondent
wishes to trade on the fame of Complainant’s trademark, regardless of the
presence of a small-print disclaimer that is unavailable to Internet users
until they have already entered the gambling site, because the disclaimer fails
to remedy initial confusion).
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
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 <penthousetoys.com> domain name be
TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 3, 2002
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