Larry Flynt and LFP Casino IP and LFP Internet Group LLC v. Valery Nikiforov
Claim Number: FA0809001225389
Complainants are Larry Flynt and LFP Casino IP and LFP Internet Group
LLC (“Complainant”), represented by , of Lipsitz Green Scime Cambria LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laryflynt.com>, registered with Onlinenic, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 24, 2008.
On October 6, 2008, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <laryflynt.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 October 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 5, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <laryflynt.com> domain name is confusingly similar to Complainant’s LARRY FLYNT mark.
2. Respondent does not have any rights or legitimate interests in the <laryflynt.com> domain name.
3. Respondent registered and used the <laryflynt.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Larry Flynt has been well-known since the early 1970s as the publisher and founder of Hustler Magazine. Larry Flynt is also well-known advocate for free speech and his life was the subject of a movie in The People versus Larry Flynt. Complainants, Larry Flynt and LFP Casino IP and LFP Internet Group LLC, run several businesses which include LARRY FLYNT as part of a trademark registered with the United States Patent and Trademark Office (“USPTO”). (i.e., Reg. No. 3,006,902 issued October 18, 2005 for LARRY FLYNT’S GRAND SLAM OF POKER).
Respondent registered the <laryflynt.com> domain name on May 11, 2004. Complainant’s investigation of Respondent’s use of the disputed domain name indicates that the <laryflynt.com> domain name resolves to an adult site neither run nor controlled by Complainant.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 must first establish that it has rights to the
mark included in the disputed domain name.
Under Policy ¶ 4(a)(i) registration of a
trademark is not necessary to establish that Complainant has rights in the
mark. See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the Policy);
As Complainant has been famous since the early 1970s as the publisher of Hustler Magazine and as the subject of the movie The People versus Larry Flynt, the Panel finds that Complainant has common law rights to the LARRY FLYNT mark pursuant to Policy ¶ 4(a)(i). See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist); see also Sade v. Quantum Computer Servs., Inc., D2000-0794 (WIPO Sept. 26, 2000) (finding that although the complainant did not register the word “SADE” either as a trademark or as a service mark the complainant adapted the word “SADE” as the complainant’s stage-name and as a trademark and service mark and therefore the complainant established that it had common law rights in the mark). In addition, the fact that Complainant has registered other marks that include the LARRY FLYNT mark suggest that Complainant has an interest and rights in the mark. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Respondent’s <laryflynt.com> domain name is confusingly
similar to Complainant’s LARRY FLYNT mark because Respondent’s doamin name
incorporates the dominant features of Complainant’s mark, omitting one letter
“r” and adding the generic top-level domain “.com.” The Panel finds that such a minor misspelling
and the addition of a generic top-level domain does not negate the confusingly
similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly similar
to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder &
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
No Response has been submitted to the Complaint. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the <laryflynt.com> domain name, however, the Panel will still examine the record in consideration of the factors listed under Policy ¶ 4(c). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <laryflynt.com> domain name. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the LARRY FLYNT mark, and the WHOIS information identifies Respondent as “Valery Nikiforov.” Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent is using the <laryflynt.com> domain name to resolve to an adult entertainment website not affiliated with Complainant’s business. Respondent’s use of a domain name that is confusingly similar to Complainant’s LARRY FLYNT mark to redirect Internet users to a competing website is not a bona fide offering of goods or services under Policy ¶ (4)(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s LARRY FLYNT mark in the <laryflynt.com> domain name to redirect Internet users to competing adult-entertainment sites suggests that Respondent registered the disputed domain name intending to disrupt Complainant’s business. The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Under Policy ¶ 4(b)(iv), Respondent is acting in bad faith when using a confusingly similar domain name to attract Internet users for commercial gain. In this case, Respondent is using the <laryflynt.com> domain name to attract users to an adult-orientated website in competition to Complainant’s business. The Panel infers that Respondent is after commercial gain through advertisements which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel finds that the disputed domain name is capable of creating a likelihood of confusion with Complainant’s mark and that Respondent has sought to profit from this confusion through click-through fees. The Panel finds Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laryflynt.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 24, 2008
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