national arbitration forum

 

DECISION

 

Blu Media Inc. v. Guido Gobetti

Claim Number: FA0904001260258

 

PARTIES

Complainant is Blu Media Inc. (“Complainant”), represented by Chad Belville, Arizona, USA.  Respondent is Guido Gobetti (“Respondent”), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> registered with Enom, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 4, 2009.

 

On April 30, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> are registered with Enom, Inc. and that Respondent is the current registrant of the names.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 2, 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@broke-straight-boys.net, postmaster@broke-straight-boys.org, postmaster@broke-straight-boys-sex.com, and postmaster@asslickboys.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> domain names are confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM and ASSLICKBOYS.COM marks.

 

2.      Respondent does not have any rights or legitimate interests in the <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> domain names.

 

3.      Respondent registered and used the <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Blu Media Inc., uses the BROKESTRAIGHTBOYS.COM and ASSLICKBOYS.COM marks in conjunction with the advertising and marketing of their corresponding adult-oriented websites since as early as 2003.

 

Respondent registered with Complainant as an affiliate on May 22, 2005.  The terms of Respondent’s Affiliate Program Agreement expressly prohibited cybersquatting.  Respondent registered the <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> domain names between October 2007 and April 2008.  Respondent is using the disputed domain names to resolve to a website containing click-through links, which further resolve to Complainant’s websites and websites of Complainant’s competitors. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

A governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) if Complainant can establish common law rights in the mark through a showing of sufficient secondary meaning.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”). 

 

Complainant asserts that the first use of the BROKESTRAIGHTBOYS.COM mark in commerce occurred in September 2004 when its corresponding adult-oriented website was launched.  Complainant has demonstrated continuous of the BROKESTRAIGHTBOYS.COM mark in print, advertising, and marketing in connection with Complainant’s adult-oriented websites.  Additionally, Complainant registered the BROKESTRAIGHTBOYS.COM mark with the Colorado Secretary of State (Reg. No. 20091215689 issued April 15, 2009).  Therefore, the Panel finds that through extensive and continuous use of the BROKESTRAIGHBOYS.COM mark in commerce, together with the fact that Complainant registered the mark with state trademark authorities, Complainant has established sufficient secondary meaning in the mark to confer common law rights pursuant to Policy ¶ 4(a)(i).  See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP); see also James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”). 

 

Complainant also asserts that it has common law rights in the ASSLICKBOYS.COM mark.  Complainant’s first use of the ASSLICKBOYS.COM mark in commerce occurred in September 2003 when its corresponding adult-oriented website was launched.  Complainant demonstrates continuous use of the mark based on its Internet traffic statistics, advertisements and high rankings among adult-oriented websites.  Thus, the Panel concludes that through extensive and continuous use of the mark in commerce, Complainant has established secondary meaning in the ASSLICKBOYS.COM mark sufficient to confer common law rights under Policy ¶ 4(a)(i).  See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).    

 

Complainant alleges that Respondent’s <broke-straight-boys.net>, <broke-straight-boys.org> and <broke-straight-boys-sex.com> domain names are confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM mark.  The <broke-straight-boys.net> and <broke-straight-boys.org> domain names incorporate the distinctive portion of Complainant’s BROKESTRAIGHTBOYS.COM mark with the addition of hyphens between the terms. Additionally, Respondent’s <broke-straight-boys-sex.com> domain name incorporates the distinctive portion of Complainant’s BROKESTRAIGHTBOYS.COM mark with the addition of hyphens and the generic term “sex,” which describes Complainant’s business.  The Panel concludes that these additions to Complainant’s BROKESTRAIGHTBOYS.COM mark fail to alleviate the confusingly similar characteristics between Respondent’s disputed domain names and Complainant’s mark.  The Panel further concludes that the substitution of the generic top-level domains “.org” or “.net” instead of “.com” fails to sufficiently distinguish Respondent’s domain names from Complainant’s mark.  See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark).  Therefore, the Panel finds that Respondent’s <broke-straight-boys.net>, <broke-straight-boys.org> and <broke-straight-boys-sex.com> domain names are confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM mark. 

 

Respondent’s <asslickboys.net> domain name incorporates the distinctive portion of Complainant’s ASSLICKBOYS.COM mark with the substitution of the generic top-level domain name “.net” for “.com.”  The Panel finds that generic top-level domain names are insufficient to differentiate the disputed domain name from Complainant’s ASSLICKBOYS.COM mark.  See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”).  Therefore, the Panel concludes that Respondent‘s <asslickboys.net> domain name is confusingly similar to Complainant’s ASSLICKBOYS.COM mark. 

 

Complainant has satisfied Policy ¶ 4(a)(i).       

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names.  For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must meet its burden of production for its prima facie case, and then the burden is shifted to Respondent.  Respondent must bring themselves within the purview of Policy ¶ 4(c), or put forward some other reason why it can fairly be said to have relevant rights or legitimate interest in relation to the domain names in question.  Respondent has failed to respond to the allegations against it.  Based on Respondent’s failure, the Panel may accept as true, all reasonable inferences contained in the Complaint.  Complainant has presented a prima facie case and the Panel now chooses to consider whether all the evidence presented produces any rights or legitimate interests for Respondent under Policy ¶ 4(c).  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 Policy ¶ 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). 

 

The WHOIS information corresponding to the disputed domain names lists Respondent as “Guido Gobetti.”  This information suggests that Respondent is not commonly known by the <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> domain names.  Based on Respondent’s failure to respond to the allegations against it, the Panel may accept all reasonable inferences contained in the Complaint as true.  The Panel therefore concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  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 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.”). 

 

Complainant contends that Respondent was a participant in Complainant’s Affiliate Program and has registered the disputed domain names in an attempt to direct Internet users to Complainant’s websites to earn a commission through said program.  The Affiliate Program Agreement expressly prohibits cybersquatting.  The Panel finds that such use of confusingly similar domain names to profit from Complainant through Complainant’s Affiliate Program does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent had no rights or legitimate interests pursuant to Policy  ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to the complainant’s <deluxeforms.com> domain name and to receive a commission from the complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)). 

 

Complainant has satisfied Policy ¶ 4(a)(ii).             

 

Registration and Use in Bad Faith

 

Complainant contends Respondent is using the <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> domain names, which are confusingly similar to Complainant’s BROKESTRAIGHBOYS.COM and ASSLICKBOYS.COM marks, to take advantage of Complainant’s Affiliate Program.  The Panel agrees that such use for commercial gain constitutes bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv).  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program); see also Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program). 

 

Complainant contends that Respondent has engaged in the practice of typosquatting.  According to Complainant, the disputed domain names consist of common mistypings of the BROKESTRAIGHTBOYS.COM and ASSLICKBOYS.COM marks.  The Panel finds Respondent’s registration of common misspellings of Complainant’s marks as evidence of intent to profit on the goodwill of Complainant’s marks and thus further demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). 

 

Complainant has satisfied Policy ¶ 4(a)(iii). 

 

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 <broke-straight-boys.net>, <broke-straight-boys.org>, <broke-straight-boys-sex.com>, and <asslickboys.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  June 18, 2009

 

 

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