LFP Publishing Group LLC; LFP Apparel LLC, and LFP Internet Group LLC all commonly-owned and managed entities v. Broken Cherry c/o Remey Rozin
Claim Number: FA0812001237602
Complainant is LFP Publishing Group LLC; LFP Apparel
LLC; and LFP Internet Group all
commonly-owned and managed entities (“Complainant”), represented by John
P. Hains of Lipsitz Green Scime Cambria LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hardcoresince74.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 9, 2008; the National Arbitration Forum received a hard copy of the Complaint December 11, 2008.
On December 9, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hardcoresince74.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 2009, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <hardcoresince74.com>, is identical to Complainant’s HARDCORE SINCE 74 mark.
2. Respondent has no rights to or legitimate interests in the <hardcoresince74.com> domain name.
3. Respondent registered and used the <hardcoresince74.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants are three of the “Hustler Companies” that form the largest adult entertainment group in the world (collectively, “Complainant”). Complainant has used the HARDCORE SINCE 74 mark continuously in commerce to market its publications and Internet services since at least July, 2002. The word “hardcore” is used in the adult entertainment industry to describe the type of explicit adult entertainment that Complainant provides and has provided since 1974. Thus, Complainant uses the HARDCORE SINCE 74 mark on its worldwide distributed products and Internet services to indicate to its potential customers that it has been providing explicit adult entertainment for 35 years.
Respondent registered the <hardcoresince74.com> domain name April 20, 2008. The disputed domain name resolves to a website that features links to numerous third-party websites that offer adult-oriented services and seek to compete with Complainant’s business.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 provided that Complainant can
show common law rights through a showing of sufficient secondary meaning. 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); see also
Complainant has used the HARDCORE SINCE 74 mark continuously in commerce to market its publications and Internet services since at least July, 2002. The mark is currently featured on its worldwide distributed products and Internet locations to advertise its adult entertainment services. Consequently, the Panel finds that Complainant has shown common law rights in the HARDCORE SINCE 74 mark pursuant to Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
The Panel finds that Complainant satisfied the Elements of ICANN 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, this 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 made a prima facie showing, and The Panel considers if the evidence on record demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <hardcoresince74.com> domain name. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the HARDCORE SINCE 74 mark, and the WHOIS information identifies Respondent as “Valery Nikiforov.” Furthermore, Respondent has not submitted any evidence to counter Complainant’s assertions. Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); 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 <hardcoresince74.com> domain name to redirect Internet users to adult entertainment websites that compete with Complainant’s business. Respondent’s use of a domain name that is confusingly similar to Complainant’s HARDCORE SINCE 74 mark to redirect Internet users to competing websites is not a bona fide offering of goods or services under Policy ¶ (4)(c)(i), and is it not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); 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 satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s HARDCORE SINCE 74 mark in the <hardcoresince74.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 <hardcoresince74.com> domain name to attract users to adult-orientated websites in competition with Complainant’s business. The Panel infers that Respondent seeks 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 TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); 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 satisfied the elements of ICANN 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 <hardcoresince74.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 23, 2009.
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