LFP Video Group LLC and LFP IP LLC and L.F.P. Inc. v. FISS HandelsgmbH
Claim Number: FA0807001216613
Complainant is LFP Video Group LLC and LFP IP LLC and L.F.P. Inc. (“Complainant”), represented by John P. Hains, of Lipsitz Green Scime Cambria LLP, New York, USA. Respondent is FISS HandelsgmbH (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hustler-dvd.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2008.
On July 22, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hustler-dvd.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 July 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 18, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 11, 2008.
On August 15, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hustler-dvd.com> domain name is confusingly similar to Complainant’s HUSTLER mark.
2. Respondent does not have any rights or legitimate interests in the <hustler-dvd.com> domain name.
3. Respondent registered and used the <hustler-dvd.com> domain name in bad faith.
B. Respondent states that it uses the <hustler-dvd.com> domain name to sell Hustler products.
Complainant and its predecessor companies have been using the HUSLTER mark for adult products since 1972 and they have several trademark registrations in the United States, Germany, Australia and OHIM. Respondent uses the <hustler-dvd.com> domain name to sell adult products, including Hustler products, at its own website, presumably <first-internet-sex-shop.at>.
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 has multiple trademark registrations for its HUSTLER marks with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,011,001 issued May 20, 1975), as well as other international trademark authorities (i.e. Reg. No. 2,647,626 issued September 10, 2003 by the Office for Harmonization in the Internal Market (“OHIM”)). The Panel finds these trademark registrations sufficient to establish Complainant’s rights in the HUSTLER mark in accordance with Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <hustler-dvd.com> domain name contains the HUSTLER mark and adds a hyphen and the word “dvd,” followed by the generic top-level domain (“gTLD”) “.com.” The word “dvd” is descriptive of Complainant’s business of selling adult entertainment digital video discs, or what are commonly referred to as “DVDs.” The Panel finds that this addition adds to the confusing similarity of the disputed domain name. The additions of the hyphen and gTLD are inconsequential under an analysis of the Policy. Thus, the Panel finds that Respondent’s <hustler-dvd.com> domain name is confusingly similar to Complainant’s HUSTLER mark pursuant to Policy ¶ 4(a)(i). See Accenture Global Servs. GmbH v. Alok Mishra, D2007-0559 (WIPO June 7, 2007) (“The domain name and the trademark are confusingly similar. It is well established that the gTLD can be ignored for the purpose of this comparison, after which the only difference between the domain name and the trademark is the word “consultants” which is utterly descriptive of the Complainant’s principal business offering ….”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the HUSTLER name, and has not received a license from Complainant to use the mark. Complainant asserts that nothing in the WHOIS information or Respondent’s website resolving from the disputed domain name demonstrate that Respondent is doing business as HUSTLER. The WHOIS information identifies Respondent as “FISS HandelsgmbH.” Based upon this evidence, the Panel concludes that Respondent is not commonly known by the <hustler-dvd.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the <hustler-dvd.com> domain name to advertise HUSTLER videos for sale, as well as other adult products. Respondent is presumably earning profits from these sales. Respondent does not have authorization to register a domain name containing Complainant’s HUSTLER mark. Respondent’s use of the <hustler-dvd.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <hustler-dvd.com> domain name is likely to disrupt Complainant’s business because visitors to the resolving website may be likely to purchase the HUSTLER videos from Respondent rather than Complainant. Such disruption constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Respondent’s use of the <hustler-dvd.com> domain name is likely to confuse Internet users into believing that Complainant is the sponsor of Respondent’s website. As a result, Internet users might purchase DVDs from Respondent thinking they are purchasing them from Complainant. Respondent has created a likelihood of confusion for Respondent’s own commercial gain, indicating bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
The Panel finds that 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 <hustler-dvd.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 29, 2008
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