BPM Productions, Inc. v. Bog
Claim Number: FA0209000125814
Complainant is BPM Productions, Inc., Salem, MA, USA (“Complainant”) represented by Mark A. Fischer, of Palmer & Dodge LLP. Respondent is Bog, Kemerovo, ESTONIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <salemhauntedhappenings.com>, registered with Stargate Comunications, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 25, 2002; the Forum received a hard copy of the Complaint on September 26, 2002.
On September 26, 2002, Stargate Comunications, Inc. confirmed by e-mail to the Forum that the domain name <salemhauntedhappenings.com> is registered with Stargate Comunications, Inc. and that Respondent is the current registrant of the name. Stargate Comunications, Inc. has verified that Respondent is bound by the Stargate Comunications, 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 September 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 21, 2002 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, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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.
The <salemhauntedhappenings.com> domain name is confusingly similar to Complainant’s HAUNTED HAPPENINGS mark.
Respondent has no rights or legitimate interests in the <salemhauntedhappenings.com> domain name.
Respondent registered and used the <salemhauntedhappenings.com> domain name in bad faith.
Respondent has failed to submit a Response in this proceeding.
Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the HAUNTED HAPPENINGS mark (Reg. No. 1,976,182). Complainant has used the mark since 1982 to identify the source of its Halloween festival, entertainment and related cultural and educational events.
Complainant publicizes its mark at the <hauntedhappenings.org> website. At this website the public is provided more information about the HAUNTED HAPPENINGS festival and related activities. Including this website, considerable sums of money have been spent by Complainant in advertising and promoting the HAUNTED HAPPENINGS mark.
Respondent registered the <salemhauntedhappenings.com> domain name on June 1, 2002. Respondent uses the domain name to display sexually pornographic material. The domain name resolves to a website that purports to offer free porn and provides links to pornographic material.
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 the 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.
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 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 has established its rights in the HAUNTED HAPPENINGS mark through proof of trademark registration with the USPTO and use of the mark since 1982.
Respondent’s <salemhauntedhappenings.com> domain name incorporates Complainant’s entire HAUNTED HAPPENINGS mark with the mere addition of “Salem” as a prefix. Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because “Salem” is the city where Complainant’s Halloween festival takes place. Therefore, “Salem” has an obvious relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly similar to the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term). The mere addition of a geographic prefix or suffix to a registered mark does not prevent the domain name from being found to be confusingly similar. See Texaco, Inc. v. Texaco Domain Canada, FA94869 (Nat. Arb. Forum June 27, 2000) (finding <texacocanada.com> confusingly similar to TEXACO).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward and challenge Complainant’s prima facie Complaint. Complainant contends that Respondent has no rights or legitimate interests in the domain name. Respondent’s failure to answer that contention allows the Panel to presume that Respondent has no such rights or legitimate interests. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Furthermore, the Panel accepts all of Complainant’s allegations as true because they have gone uncontested. Also, the Panel will draw all reasonable inferences in favor of Complainant. See 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”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent uses the <salemhauntedhappenings.com> domain name to resolve to a website that purports to offer free porn. The website contains links to various pornographic related websites. Respondent’s pornographic use of the confusingly similar domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark).
Complainant has never granted Respondent permission to use the HAUNTED HAPPENINGS mark. Respondent has not come forward with any evidence showing it is commonly known by the <salemhauntedhappenings.com> domain name. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <salemhauntedhappenings.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <salemhauntedhappenings.com> domain name in association with pornographic material is harmful to Complainant’s HAUNTED HAPPENINGS mark. Internet users searching for information regarding Complainant’s HAUNTED HAPPENINGS festival are likely to be diverted to Respondent’s pornographic related website. Such graphic material tarnishes the mark and confuses the Internet user as to Complainant’s affiliation with the pornographic website. It may be inferred that Respondent is trading off of Complainant’s HAUNTED HAPPENINGS mark for commercial gain, as this is a classic example of cyber-infringement. Thus, Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <salemhauntedhappenings.com> be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 14, 2002
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