L.F.P., Inc. v. Charles Yarbrough
Claim Number: FA0205000114420
PARTIES
The
Complainant is L.F.P., Inc., Beverly
Hills, CA (“Complainant”) represented by Paul
J. Cambria, of Lipsitz, Green,
Fahringer, Roll, Salisbury & Cambria.
The Respondent is Charles
Yarbrough, Santa Barbara, CA (“Respondent).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <xxxbarelylegal.com>,
registered with ItsYourDomain.com.
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.
Edward
C. Chiasson, Q.C. as Panelist.
PROCEDURAL HISTORY
The
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on May 28, 2002; the Forum received a hard copy of the
Complaint on May 29, 2002.
On
May 29, 2002, ItsYourDomain.com confirmed by e-mail to the Forum that the
domain name <xxxbarelylegal.com>
is registered with ItsYourDomain.com and that the Respondent is the current
registrant of the name. ItsYourDomain.com
has verified that the Respondent is bound by the ItsYourDomain.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
May 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 19,
2002 by which the Respondent could file a Response to the Complaint, was
transmitted to the Respondent via e-mail, post and fax, to all entities and
persons listed on the Respondent’s registration as technical, administrative
and billing contacts, and to postmaster@xxxbarelylegal.com by e-mail.
A
timely Response was received and determined to be complete on May 31, 2002.
The
Complainant submitted a timely Additional Submission on June 6, 2002.
On June 26, 2002, pursuant to the Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Edward C.
Chiasson, Q.C. as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
BACKGROUND AND PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant is a worldwide provider of “adult” entertainment in various media
under, inter alia, its famous BARELY LEGAL trademark. Its adult products and services include
magazines, videotapes, DVDs and online entertainment.
Since
1993, the Complainant has used the trademark BARELY LEGAL in interstate and
international commerce to designate its famous “Barely Legal” Magazine for
adult entertainment.
Since
September 14, 1999, the Complainant has marketed pre-recorded videotapes and
DVDs, under the trademark BARELY LEGAL.
The
Complainant owns the mark BARELY LEGAL and has numerous registrations of this
mark in the United States and elsewhere and uses it in association with the
promotion, advertisement and sale of a wide variety of goods and services,
including the operation of an Internet Web Site at <barelylegal.com>
offering adult entertainment.
The Complainant holds the following:
United States Service Mark Registration No. 1872472 issued January 10, 1995
for the mark BARELY LEGAL in International Class 16 for printed publications,
namely, an adult entertainment magazine;
United States Trademark Registration No.
2060025 issued May 6, 1997 for the mark BARELY LEGAL in International Class 42
for computer services, namely, providing access time to an interactive computer
database in the field of adult entertainment and subject matter;
United States Trademark Registration No.
2435911 issued March 13, 2001 for the mark BARELY LEGAL in International Class
9 for pre-recorded videotapes and discs in the field of adult entertainment
Complainant holds registrations for the
mark BARELY LEGAL in Germany, Czech Republic, Slovak Republic, Sweden,
Argentina, Australia, Canada, Chile, Columbia, Denmark, Finland, Greece, Hong
Kong, Italy, Japan, Mexico, New Zealand, Norway, Panama, Peru, Poland, Russian
Federation, South Africa, Spain, Switzerland, Taiwan, Ukraine, United Kingdom,
and Venezuela, all for the printing and publication of its famous “BARELY
LEGAL” magazine in the field of adult entertainment.
On
or about February 25, 1996, the Complainant adopted and commenced use of the
service mark BARELY LEGAL in interstate and international commerce for the
purpose of designating an on-line, Web-based version of its “Barely Legal”
magazine.
In
connection with its marks, the Complainant has established numerous internet web sites, including one at <barelylegal.com>,
registered on May 15, 1998
The
subject domain name was registered by the Respondent on February 27, 2002.
The
Respondent’s Web site to which the subject domain name resolves offers goods
and services in the field of adult entertainment in competition with the
Complainant’s goods and services offered at its Web site.
On
April 5, 2002, the Complainant’s counsel issued a letter to the Respondent
demanding, inter alia, that the subject domain name be transferred to
the Complainant.
In
response, the Respondent issued an E-mail on April 19, 2002, to the
Complainant’s counsel offering, inter alia, to sell the subject domain
name to the Complainant at a price that was “negotiable”.
The
Respondent’s registration and use to sell goods in competition with the
Complainant fails to create or demonstrate a bona fide offering of
goods. It is an illegitimate use of
subject domain name and the Complainant’s BARELY LEGAL mark.
The
Respondent is using a domain name confusingly similar to the Complainant’s
trademark as a way to divert Internet users to the Respondent’s competing adult
Web site for commercial benefit. This
is not a legitimate, non-commercial fair use of the subject domain name.
Respondent
is not commonly known by the subject domain name.
Through
his registration and use of the subject domain name the Respondent is causing
damage to the Complainant’s BARELY LEGAL trademarks and service marks.
The
minor degree of variation from the Complainant’s famous BARELY LEGAL marks
suggests that the Respondent, the Complainant’s competitor, registered the name
primarily for the purpose of disrupting the Complainant’s business.
There
is no plausible circumstance in which the Respondent could legitimately use
Complainant’s BARELY LEGAL mark and no plausible situation in which the
Respondent would have been unaware of the Complainant’s BARELY LEGAL marks at
the time of registration of the subject domain name.
B.
Respondent
The
subject domain name is not based on the website Barelylegal it is based on a
genre on the adult website market that has been around since the beginning of
the Internet. Barelylegal being the name of the genre, but is generic. The
subject domain name says exactly what it is: xxx meaning sex and Barelylegal
meaning barely legal. This site is not in anyway a misinterpretation of
Barelylegal. “[I]t is stating there is
xxxbarelylegal in the domain it represents and that is what it has.”
The
subject domain name is stating what is offered by the site to which it resolves
and is not in any way connected with the Complainant.
In
a popular web search tool Google, the term Barelylegal shows 35,700 websites
available with that term, not sites necessarily affiliated with the
Complainant.
The
Respondent did not register the subject domain name to confuse with the
Complainant. It was purchased to
describe the services available only.
C.
Additional Submissions
The
Complainant delivered a Reply.
The
Respondent cannot refute that the subject domain name is confusingly similar to
the Complainant’s Barely Legal registered
mark and <barelylegal.com> domain name.
The
Respondent's placement of "xxx" in front of the Complainant's
registered service mark does not in any substantive way change the registered
mark. In fact, "xxx" is
simply a colloquial code referring to explicit sex.
Even
if the Respondent did not intend to cause confusion between the names, the test
is whether there is a likelihood of confusion, not whether the Respondent
deliberately intended the same.
If Barely
Legal were a generic term, it would not have been registered as a
trademark and service mark by the United States Patent and Trademark Office.
The
Complainant noted that the Respondent had failed to respond to many of the
allegations in the Complainant.
DISCUSSION AND FINDINGS
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.
It
is clear that the Complainant has rights to the words “barely legal” both
through long use and registration. The
Respondent says that the words are generic.
This is an attack on the validity of the Complainant’s registrations and
is not a matter to be resolved in this proceeding.
The
subject domain name differs from the Complainant’s mark only by the addition of
“xxx”. This is not a distinguishing
addition. In the context of the
Complainant’s use of its mark, xxx merely suggests a closer link to the
Complainant.
The
Complainant points to the usual indicia of a lack of legitimate interest: for
example, not known by the subject domain name; confusion with the Complainant;
exploitation of the Complainant’s goodwill etc. The Respondent says that the subject domain name merely describes
the content of the website to which the subject domain name resolves.
The
subject domain name is being used in direct competition with the
Complainant. It contains the
Complainant’s mark. The addition of xxx
merely suggests the sexual content of the relevant websites.
Using
the mark of another to attract business generally is not a legitimate use. This is all the more true when the
businesses essentially are identical.
The
Respondent’s willingness to sell the subject domain name also suggests that he
does not have a legitimate interest in it.
The
finding that a Respondent does not have a legitimate interest in a domain name
that is confusingly similar to the mark of another, does not automatically lead
to a conclusion of bad faith, but the facts that support the finding are
relevant to the bad faith issue.
In
this case the conduct of the Respondent suggests bad faith. He does not quarrel with much of the
Complainant’s assertions against him and appears to use the subject domain name
to attract the same customers as the Complainant.
In
addition, his offer to sell the subject domain name, albeit at an undisclosed
amount, supports an inference of evidence of bad faith to which he made no
comment in his Response.
Identical and/or Confusingly Similar
The
Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(i)
Rights or Legitimate Interests
The
Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(ii)
Registration and Use in Bad Faith
The
Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(iii)
DECISION
Based on the information provided to it
and on its findings, the Administrative Panel concludes that the Complainant
has established its claim.
The Complainant asked that the subject
domain name be transferred to it. The
Administrative Panel so orders.
Edward C. Chiasson, Q.C., Panelist
Dated: July 9, 2002
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