DECISION

L.F.P., Inc. v. Viper Holdings

Claim Number: FA0208000117869

PARTIES

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 Viper Holdings, San Francisco, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hustlergirls.com>, registered with Dotster 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 5, 2002; the Forum received a hard copy of the Complaint on August 6, 2002.

On August 21, 2002, Dotster Inc. confirmed by e-mail to the Forum that the domain name <hustlergirls.com> is registered with Dotster Inc. and that Respondent is the current registrant of the name. Dotster Inc. has verified that Respondent is bound by the Dotster 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 August 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 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@hustlergirls.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 September 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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

The <hustlergirls.com> domain name is confusingly similar to Complainant’s HUSTLER mark.

Respondent has no rights or legitimate interests in the <hustlergirls.com> domain name.

Respondent registered and used the <hustlergirls.com> domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant holds numerous trademarks in various countries for the HUSTLER mark. Complainant’s HUSTLER mark is registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,011,001). Complainant first adopted the HUSTLER mark in 1972 for its entertainment magazine.

Complainant describes itself as “a worldwide provider of ‘adult’ entertainment in various media under, inter alia, its famous HUSTLER trademark.” The Hustler mark is used in connection with Complainant’s adult products and services including videotapes, magazines, DVDs and online entertainment. Complainant has invested substantial resources and business energy into promoting and advertising the HUSTLER mark and related goods for thirty (30) years, which has resulted in the mark gaining worldwide fame and notoriety.

In 1993, Complainant broadened its HUSTLER related services to include an online version of its HUSTLER magazine. The on-line magazine can be found at <hustler.com>. Complainant has also registered various other valuable marks in corresponding domain names in an effort to capitalize on the e-commerce market.

Respondent registered the <hustlergirls.com> domain name on November 13, 2001. Complainant sent a letter to Respondent demanding that Respondent transfer the <hustlergirls.com> domain name to Complainant. Respondent never replied to Complainant’s correspondence but a certified U.S. mail receipt confirms that Respondent received the letter. There is no evidence that shows Respondent uses the <hustlergirls.com> domain name or has preparations to use the domain name.

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.

Identical and/or Confusingly Similar

Complainant has established its rights in the HUSTLER mark through proof of registration with the USPTO and continuous use in commerce since 1972.

Respondent’s <hustlergirls.com> domain name contains Complainant’s entire HUSTLER mark with the addition of the generic, descriptive word “girls.” The use of the word “girls” in connection with Complainant’s HUSTLER mark suggests adult content and therefore the <hustlergirls.com> has an obvious relation to Complainant’s business. Generic words added to famous marks, such as HUSTLER, do not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) analysis, especially when the generic word intimates Complainant’s business. Therefore, Respondent’s <hustlergirls.com> domain name is confusingly similar to Complainant’s HUSTLER mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has successfully alleged a prima facie case, including Complainant’s allegations that Respondent has no rights or legitimate interests in the <hustlergirls.com> domain name. Therefore, Complainant has met its burden under the Policy and the burden shifts to Respondent to demonstrate its rights or legitimate interests in the domain name. Respondent, however, has not come forward to challenge Complainant’s allegations, which allows the Panel to presume that Respondent has no rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also 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).

In addition, because Respondent has not come forward and Complainant’s allegations remain uncontested, the Panel may draw all reasonable inferences from the facts 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”).

Upon notice of Respondent’s registration of the <hustlergirls.com> domain name, Complainant sent a letter to Respondent ordering a transfer of the domain name. Respondent failed to respond to the letter and continues to hold its registration rights in the domain name. Complainant’s investigation revealed that Respondent has never actively used the domain name in connection with a bona fide offering of goods or services, and Respondent has not come forward to notify the Panel otherwise. Furthermore, there is no evidence that Respondent intends to use the domain name in connection with a legitimate offering of goods and services that would not dilute Complainant’s HUSTLER mark. Therefore, Respondent has no rights or legitimate interests in the <hustlergirls.com> domain name under Policy ¶¶ 4(c)(i) or (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Respondent has no business affiliation with Complainant and therefore is not licensed or authorized to use Complainant’s famous HUSTLER mark. Respondent is identified as “Viper Holdings” in its WHOIS information, and there is no evidence indicating that Respondent is commonly known by the <hustlergirls.com> domain name or anything remotely similar to it. Hence, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <hustlergirls.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

A list of circumstances that represents bad faith can be found in Policy paragraph 4(b). However, the circumstances are merely suggested situations of bad faith and are not meant to be exhaustive. The Panel is permitted to look at the totality of circumstances when making the crucial determination of bad faith registration and use. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Complainant’s HUSTLER mark is famous and especially well known in the adult entertainment industry. Respondent’s <hustlergirls.com> domain name is confusingly similar to Complainant’s mark because of its suggestive relationship to Complainant’s business. Thus, it is reasonable to infer that Respondent knew about Complainant’s valuable interest in the HUSTLER mark and therefore registered the domain name to somehow capitalize on that value. Furthermore, Complainant’s HUSTLER mark is registered on the Principal Register of the USPTO, which imparts constructive knowledge upon Respondent. Therefore, not only is it evident that Respondent had actual knowledge of Complainant’s mark, at a minimum, Respondent had constructive knowledge of Complainant’s interest in the HUSTLER mark. Registering a confusingly similar domain name with such knowledge constitutes bad faith registration under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); 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); see also 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).

Respondent has not actively used the <hustlergirls.com> domain name and has not established preparations to use the domain name. It can be reasonably inferred, because the <hustlergirls.com> domain name is indistinguishable from the HUSTLER mark and assorted adult services, that Respondent cannot possibly use the <hustlergirls.com> domain name without causing source or sponsorship confusion with Complainant and its adult entertainment services. Therefore, Respondent’s passive holding of a domain name that substantially reflects Complainant’s HUSTLER mark and related adult entertainment services represents bad faith under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).

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 shall be hereby granted.

Accordingly, it is Ordered that the domain name <hustlergirls.com> be transferred from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: October 11, 2002.

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