L.F.P., Inc.; LFP IP, LLC; LFP Publishing
Group LLC; LFP Video Group LLC and LFP Internet Group LLC (all commonly-owned
and managed entities) v. Domain Contact c/o Strategist Research Corp
Claim Number: FA0812001238666
PARTIES
Complainant is L.F.P., Inc.; LFP IP, LLC; LFP Publishing Group LLC; LFP Video Group LLC and LFP Internet Group LLC (all commonly-owned
and managed entities) (“Complainant”), represented by John P. Hains of Lipsitz Green Scime Cambria LLP, New York,
USA. Respondent is Domain Contact c/o
Strategist Research Corp (“Respondent”), represented by Zak Muscovitch of The Muscovitch Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barelylegalteens.com>,
registered with Tucows Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically December 15, 2008; the National Arbitration Forum received a
hard copy of the Complaint December 19, 2008.
On December 15, 2008, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <barelylegalteens.com>
domain name is registered with Tucows Inc. and that Respondent is the current
registrant of the name. Tucows Inc.
verified that Respondent is bound by the Tucows 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 29, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 20, 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 postmaster@barelylegalteens.com by
e-mail.
A timely Response was received and determined to be complete on January
20, 2009.
Complainant filed a Supplementary Submission in Accordance with Article
7 of the NAF Supplementary Rules, which the Forum transmitted to the Arbitrator
noting that it was timely filed pursuant to the Rules.
The Arbitrator has considered all submissions of the parties in
reaching the result set out below.
On January 23, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1. Respondent filed a domain name that is
confusingly similar or identical to a mark in which Complainant has exclusive
rights.
2. Respondent has no rights to or legitimate
interests in the domain name that contains Complainant’s protected mark.
3. Respondent acted in bad faith in registering
and using a domain name that contained Complainant’s protected mark.
B. Respondent filed the following points in
opposition to Complainant’s contentions.
1. Respondent alleges that Complainant has only
common law rights in the mark contained within the disputed domain name.
2. Respondent urges that the disputed domain
name in not identical to or confusingly similar to Complainant’s mark.
3. Respondent alleged its ownership of other
domain names that suggest that the Respondent is in the same area of commerce.
4. Respondent claims the domain name is merely
descriptive and that Respondent has an “inherent legitimate interest” in the
domain.
5. Respondent urges that he registered the
domain name ten years ago and three years before Complainant registered its
mark for “an adult entertainment magazine” and “pre-recorded video tapes and
discs.”
6. Respondent contends that Respondent did not
act in bad faith in registering and using a protected mark owned by
Complainant.
7. Respondent maintains that Complainant is
engaging in reverse domain name hijacking.
C. Additional Submissions
Complainant filed a timely Supplement in
which it noted:
1. Citation to and reliance upon material found
at the Wikipedia Internet site has been refused by the Courts and should not be
considered here.
2. Complainant filed its mark in
3. The BARELY LEGAL mark has been registered in
nearly every English-speaking nation.
4. Complainant has legal and common law rights
in the mark.
5. Respondent had notice through the
international registrations of the BARELY LEGAL mark. Adding “teens” to Complainant’s mark does not
distinguish the disputed domain name from Complainant’s mark.
FINDINGS
Respondent claimed it registered the disputed domain name ten years ago
and that three years before Complainant registered its mark for “an adult
entertainment magazine” and “prerecorded video tapes and discs.” Yet
Respondent’s submission shows the organization of Respondent’s business
structure as September 1, 2000.
Complainant established rights in the mark contained within the
disputed domain name by at least the mid-1990s.
Respondent seeks to compete in the same area of commerce as
Complainant.
Complainant established international registration of its mark and
goodwill associated with the mark.
Complainant established legal and common law rights for the mark.
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 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) Respondent has no rights to or legitimate
interests in the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant asserts rights in the BARELY LEGAL mark (Reg. No. 1,872,472 issued January 10, 1995), through registration with the United States Patent and Trademark Office (“USPTO”). The Panel finds that Complainant has legal rights in the mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that the
disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name differs from the
mark by: (1) removing the spaces between the mark; (2)
adding the generic top-level domain “.com;” and (3) adding the word
“teens.” The Panel finds that addition
of a top-level domain and removal of a space in the mark is not relevant in a
Policy ¶ 4(a)(i) analysis. See
Bond & Co. Jewelers, Inc. v.
While
Respondent contends that the disputed domain name is comprised of common, generic terms and as such
cannot be found to be confusingly similar to Complainant’s mark, the Panel
finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain name is
identical to or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding
that because the complainant had received a trademark registration for its
VANCE mark, the respondent’s argument that the term was generic failed under
Policy ¶ 4(a)(i)); see also David Hall
Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007)
(“Respondent’s argument that each individual word in the mark is unprotectable
and therefore the overall mark is unprotectable is at odds with the
anti-dissection principle of trademark law.”).
The Panel finds that Complainant satisfied
the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima
facie case that Respondent lacks rights to and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). Once Complainant does so, the burden shifts to Respondent to show
that it does have rights to or legitimate interests in the domain name. 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 asserts that Respondent is not
commonly known by the disputed domain name, and that it is unclear as to what
name Respondent is known. The Panel notes
that the WHOIS information lists Respondent as “Domain Contact c/o Strategist Research Corp.” The Panel looks first to a circumstance that
may suggest rights, whether or not Respondent is commonly known by the disputed
domain name under Policy ¶ 4(c)(ii). No evidence is
before the Panel that suggests that Respondent is commonly known by the domain
name and the Panel finds that Respondent does not show rights by this
route. See 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); see also
Complainant alleges that Respondent’s
disputed domain name resolves to a website that offers similar adult-oriented
content on a subscription basis, and that Respondent is merely using the
disputed domain name to “free-rid[e] on the fame of Complainant’s magazines,
website and videos.” The Panel finds
that evidence supports Complainant’s contentions. Respondent has used the alleged confusingly
similar disputed domain name to operate a commercial website in competition
with Complainant in Complainant’s own area of commerce. This and other facts shown support a finding
that Respondent has not made a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and has not
made a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with the complainant, was not a bona fide offering of goods or
services); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel has found above that
Respondent is using the disputed domain name to compete with Complainant’s
business. This finding and the evidence that supported it also permits a
finding under the bad faith section of the Panel’s analysis. Therefore, the Panel concludes that
Respondent is disrupting Complainant’s business in bad faith 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 EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July
7, 2000) (finding bad faith where the respondent’s sites pass users through to
the respondent’s competing business).
Complainant also contends that
Respondent has attempted to attract Internet users to its disputed domain name,
and to Respondent’s competitive website, for its own commercial gain. Complainant has shown considerable goodwill
associated with its commercial endeavors among the section of the population
that enjoys Complainant’s products and services. The Panel finds that Respondent
has sought to trade off of the goodwill surrounding Complainant’s mark, and
finds that Respondent registered and is using the disputed domain name in bad
faith under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan,
FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that
Respondent is capitalizing on the confusing similarity of its domain names to
benefit from the valuable goodwill that Complainant has established in its
marks. Consequently, it is found that Respondent
registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent asserts that Complainant attempts to engage in reverse domain name hijacking by filing the instant UDRP case although Respondent has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant did not engage in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
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 <barelylegalteens.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: February 6, 2009.
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