LFP Publishing Group LLC; LFP Video Group LLC; LFP Internet Group LLC; LFP IP LLC; L.F.P. Inc. v. Interactive Global Media
Claim Number: FA0810001228371
Complainant is LFP Publishing Group LLC; LFP Video Group LLC; LFP
Internet Group LLC; LFP IP LLC; L.F.P. Inc. (“Complainant”), represented by Lipsitz
Green Scime Cambria LLP, New York, USA. Respondent is Interactive Global Media (“Respondent”),
REGISTRAR
The domain name at issue is <barelylegalbabysitter.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 9, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <barelylegalbabysitter.com> domain name is registered with Godaddy.com, Inc. and that 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 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 postmaster@barelylegalbabysitter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <barelylegalbabysitter.com> domain name is confusingly similar to Complainant’s BARELY LEGAL mark.
2. Respondent does not have any rights or legitimate interests in the <barelylegalbabysitter.com> domain name.
3. Respondent registered and used the <barelylegalbabysitter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LFP Publishing Group LLC, is an entity of Hustler Group of Companies which have been successfully publishing and marketing the “Barely Legal” Magazine throughout the world. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BARELY LEGAL mark (Reg. No. 1,872,472 issued January 10, 1995).
Respondent registered the <barelylegalbabysitter.com> domain name on April 2, 2007. Respondent’s disputed domain name resolves to a website displaying adult-oriented materials, some of which are materials produced 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 contends that rights in the BARELY LEGAL mark
have been established pursuant to Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. The Panel finds that Complainant has
established rights in the mark pursuant to Policy ¶ 4(a)(i)
due to Complainant’s registration with the USPTO. See
Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see
also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under
Complainant asserts that Respondent’s <barelylegalbabysitter.com> domain name is confusingly
similar to Complainant’s BARELY LEGAL mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds the generic term “babysitter,” and
adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a
generic term with an obvious relationship to a complainant’s business to the
complainant’s registered mark neither circumvents the complainant’s rights in
the mark, nor avoids confusing similarity.
See Space Imaging
LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Christie’s
Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001)
(finding that the domain name
<christiesauction.com> is confusingly similar to the complainant's
mark because it merely adds the word “auction” used in its generic sense). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
a registered mark. 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).
Therefore, pursuant to Policy ¶ 4(a)(i),
Respondent’s <barelylegalbabysitter.com> domain name is confusingly
similar to Complainant’s BARELY LEGAL mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain name. When a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). In this case, the Panel finds that Complainant has established a prima facie case and the burden is shifted to Respondent. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (in general 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).
By failing to respond to the Complaint, the Panel may assume
that Respondent fails to meet its burden of establishing rights or legitimate
interests in the disputed domain name. See Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum
Complainant implies that Respondent is neither commonly
known by, nor licensed to register the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “Stan Ostrinky,
Interactive Global Media.” The Panel
finds that Respondent’s failure to respond to the Complaint and WHOIS
information suggests that Respondent is not commonly known by the disputed
domain name. Therefore, pursuant to
Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the
disputed domain name. See Gestmusic Endemol, S.A. v.
operaciontriunfo.us, FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though Respondent’s WHOIS information lists Respondent’s
name as ‘o. operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’
there is no evidence before the Panel that Respondent was actually commonly
known by the [<operaciontriunfo.us>] domain
name.”).
Complainant evidences that Respondent’s <barelylegalbabysitter.com> domain name resolves to a website offering adult-oriented materials. The Panel finds that this type of use is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
In addition, Complainant asserts that Respondent is using the
disputed domain name to pass itself off as an authorized seller of BARELY LEGAL
products. The Panel finds that
Respondent’s attempt to pass itself off as Complainant is further proof that
Respondent lacks rights and legitimate interests in the disputed domain
name. See American Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the
respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name); see also Crow
v. LOVEARTH.net, FA 203208 (Nat. Arb.
Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <barelylegalbabysitter.com> domain name to display adult-oriented materials is itself evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a adult-oriented site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
In addition, the Panel finds that Respondent’s use of the
disputed domain name to commercially benefit by creating a likelihood of
confusion with Complainant’s goodwill is further evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum
Lastly, Complainant presents evidence that Respondent is passing itself off as an authorized source to buy Complainant’s goods. The Panel finds that Respondent’s registration and use of the disputed domain name to pass itself off as Complainant is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
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 <barelylegalbabysitter.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: November 24, 2008
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