LFP IP, LLC and LFP, Inc. v.
Neswell c/o Jean Rene Dumas
Claim Number: FA0806001210045
PARTIES
Complainant is LFP IP, LLC and LFP, Inc. (“Complainant”), represented by John
P. Hains, of Lipsitz Green Scime Cambria LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hustler.tv>, registered with eNom, 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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically
on
On June 17, 2008, eNom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <hustler.tv> domain name is
registered with eNom, Inc. and that the
Respondent is the current registrant of the name. eNom, Inc.
has verified that Respondent is bound by the eNom,
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 June 25, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 15, 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@hustler.tv by e-mail.
A timely Response was received and determined to be complete on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <hustler.tv> domain name is identical to Complainant’s HUSTLER marks.
2.
Respondent does not have any rights or
legitimate interests in the <hustler.tv>
domain name.
3.
Respondent registered and used the <hustler.tv> domain name in bad
faith.
B. Respondent
1. Complainant’s HUSTLER marks are generic and
widely used on many websites.
2. Respondent registered the <hustler.tv> in 2003 and has legitimately used this domain at
issue.
3. Respondent originally registered the domain
at issue in 2003 and did not re-register the domain in bad faith.
FINDINGS
Complainant holds many
Respondent originally registered <hustler.tv>, the domain name at
issue, in 2003 and apparently had discussions with representatives of
Complainant concerning the domain name in 2004.
Respondent renewed registration in April of 2008. Respondent notes that there are very many
websites associated with the word “hustler” which are not connected with the
Complainant but does not claim rights in the domain name at issue prior to
Complainant’s USPTO registration of the HUSTLER mark in 1975.
There is no evidence that Complainant had
rights in the HUSTLER TV mark as of Respondent’s initial registration of the
domain name at issue. However the issue in this case is not the HUSTLER TV mark
but that of the priority of the HUSTLER mark.
The “.tv” portion of the domain name at issue is not relevant since the
addition of the top-level domain, “.tv,” merely designates
DISCUSSION
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.
Complainant enjoys rights in
several trademark registrations registered with various trademark authorities,
including the United States Patent and Trademark Office (“USPTO”), the United
Kingdom Intellectual Property Organization (“UKIPO”), and the Canadian
Intellectual Property Office (“CIPO”).
In particular, Complainant asserts rights in the USPTO-registered
HUSTLER (Reg. No. 1,011,001 issued May 5, 1975) and HUSTLER TV marks (Reg. No.
3,008,950 issued
Respondent’s <hustler.tv> domain name is
identical to Complainant’s HUSTLER mark.
Respondent’s domain name contains Complainant’s mark in its entirety and
adds the country-code top-level domain (“ccTLD”) “.tv.” The addition of a ccTLD
to an otherwise identical mark is an insufficient means of distinguishing a
domain name from a mark and that Respondent’s domain name is identical to
Complainant’s mark for purposes of Policy ¶ 4(a)(i). See World Wrestling Fed'n Entm't,
Inc. v. Rapuano,
DTV2001-0010 (WIPO May 23, 2001) (“The
addition of the country code top level domain (ccTLD) designation <.tv>
does not serve to distinguish [the disputed domain] names from the
complainant’s marks since ‘.tv’ is a common Internet address identifier that is
not specifically associated with Respondent.”); see also Clairol Inc. v. Fux,
DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name
<clairol.tv> is identical to the complainant’s CLAIROL marks).
Accordingly, Complainant has
satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the <hustler.tv> domain name to operate
a website that contains advertisements for Complainant’s various
competitors. Respondent is receiving click-through fees for each
Internet user redirected to a commercial website unrelated to Complainant. Respondent is not using the <hustler.tv> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR
S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007)
(rejecting the respondent’s contention of rights and legitimate interests in
the <bravoclub.com> domain name as the respondent is merely using the
domain name to operate a website containing links to various competing commercial
websites, which is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)); see also
Meyerson v. Speedy Web, FA
960409 (Nat. Arb. Forum May 5, 2007) (finding that where a respondent has
failed to offer any goods or services on its website other than links to a
variety of third-party websites is not a use in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Further, Respondent has failed to sufficiently establish that it is commonly known by the <hustler.tv> domain name and, as a result, has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent contends
that it was not aware that the hosting service, ENOM, had been displaying a parked
page containing links to various competing adult-oriented websites. However, the Respondent is ultimately
responsible for the content of its website and that it had over five years
since its April 10, 2003 initial registration of the domain name at issue to
develop a website other than the parked page that was displayed during that
time. Respondent has failed to establish
rights or legitimate interests in the <hustler.tv> domain name under
Policy ¶ 4(a)(ii).
See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat.
Arb. Forum Oct. 18, 2007) (“The Panel also notes that
Respondent is responsible for the content of any website using the domain name
at issue, and cannot pass that responsibility off to its registrar or domain
name service provider.”); see also StaffEx
Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum
Accordingly, Complainant has
satisfied Policy ¶ 4(a)(ii).
Respondent is using the <hustler.tv> domain name to operate a website that provides links to
various websites offering services that compete with Complainant’s
adult-oriented business. Accordingly, Respondent is profiting from such use
through the collection of referral fees for each redirected Internet user. Such use constitutes an actual or potential
disruption of Complainant’s business and is therefore evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also EBAY,
Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites).
Moreover, Respondent’s manner of use of the <hustler.tv> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website and disputed domain name. Such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also 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).
Accordingly, Complainant has
satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hustler.tv> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
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