national
arbitration forum
DECISION
Blu Media Inc. v. Domain Registrar c/o Global Web Development, LLC
Claim Number: FA0908001280215
PARTIES
Complainant is Blu Media Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <straightboysarebroke.com>, registered with Moniker.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2009.
On August 19, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <straightboysarebroke.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 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@straightboysarebroke.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <straightboysarebroke.com> domain name is confusingly similar to Complainant’s BROKESTRAIGHTBOYS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <straightboysarebroke.com> domain name.
3. Respondent registered and used the <straightboysarebroke.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant operates websites which offer adult-oriented material to paying customers on the Internet. Complainant registered the BROKESTRAIGHTBOYS.COM mark with the Colorado Secretary of State on April 15, 2009 (Reg. No. 2,009,121,689). Complainant has used the BROKESTRAIGHTBOYS.COM mark continuously in commerce since at least as early as June 28, 2005. Complainant’s website promoted by the BROKESTRAIGHTBOYS.COM mark has received awards and reviews by numerous websites and magazines, where the BROKESTRAIGHTBOYS.COM mark also appears in print and online ads to hundreds of thousands of readers and Internet users.
Respondent registered the <straightboysarebroke.com> domain name on June 11, 2007. The disputed domain name resolves to a website that features adult-oriented material that competes with Complainant for business.
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
Complainant contends that it has established rights in the BROKESTRAIGHTBOYS.COM mark through its trademark registration with the Colorado Secretary of State on April 15, 2009 (Reg. No. 2,009,121,689). The Panel finds that this state registration confers upon Complainant rights in the BROKESTRAIGHTBOYS.COM mark pursuant to Policy ¶ 4(a)(i), at least from the date of registration. See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also 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).
Complainant also contends that it
has established common law rights in the BROKESTRAIGHTBOYS.COM mark through its
continuous and extensive use of the mark in commerce, since at least as early
as June 28, 2005, to promote its websites.
The Panel finds that, pursuant to Policy ¶ 4(a)(i), Complainant has
established common law rights in the BROKESTRAIGHTBOYS.COM mark since at least
as early as June 28, 2005. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000)
(finding that the complainant has common law rights in BROADCASTAMERICA.COM,
given extensive use of that mark to identify the complainant as the source of
broadcast services over the Internet, and evidence that there is wide
recognition with the BROADCASTAMERICA.COM mark among Internet users as to the
source of broadcast services); see also
Fishtech, Inc. v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law
rights in the mark FISHTECH that it has used since 1982).
Complainant contends that
Respondent’s <straightboysarebroke.com>
domain name is confusingly similar to its BROKESTRAIGHTBOYS.COM mark. The <straightboysarebroke.com> domain name differs from Complainant’s mark only in that
the term “broke” has been moved to the end of the mark, and the term “are” has
been inserted into the mark. The Panel
finds that because the modifying effect of placing the terms “are broke”
immediately after the terms to be modified (in this case, “straight boys”) is
essentially the same as placing the term “broke” before the terms to be
modified, a domain name which only alters a mark in this way remains
confusingly similar to that mark.
Therefore, the Panel finds that because the meaning of the disputed
domain name is essentially the same as Complainant’s
BROKESTRAIGHTBOYS.COM mark, the <straightboysarebroke.com> domain name is confusingly similar to its BROKESTRAIGHTBOYS.COM mark pursuant to Policy ¶ 4(a)(i). See
Down E. Enter. Inc. v. Countywide
Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name
<downeastmagazine.com> confusingly similar to the complainant’s common
law mark DOWN EAST, THE MAGAZINE OF MAINE); see
also Am. Eagle Outfitters, Inc. v.
Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the
<americaneaglestores.com> domain name to be confusingly similar to the
complainant’s AMERICAN EAGLE OUTFITTERS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant contends that Respondent lacks all rights and legitimate interests in the <straightboysarebroke.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to respond to these proceedings. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant contends that Respondent is not commonly known
by the <straightboysarebroke.com>
domain name nor has it ever been the owner or licensee of the
BROKESTRAIGHTBOYS.COM mark. The WHOIS
record for the disputed domain name lists Respondent as “Domain Registrar c/o Global Web Development, LLC.” Because there is no evidence contrary to
Complainant’s contentions that Respondent is not known by any variant on the
BROKESTRAIGHTBOYS.COM mark, the Panel finds that Respondent is not commonly
known by the <straightboysarebroke.com>
domain name pursuant to
Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark).
The <straightboysarebroke.com> domain name resolves to a website that features
adult-oriented content that competes with Complainant’s own websites’ content
for business. Respondent’s use of
the disputed domain name to direct Internet users to a competitor of
Complainant is not a bona fide offering of
goods or services nor a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the
disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use under 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 Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant contends that because of the confusion between
Complainant’s BROKESTRAIGHTBOYS.COM mark and the <straightboysarebroke.com> domain name (registered June 11, 2007), Internet users are being diverted to the website of one of
Complainant’s competitors. Complainant
also contends that Respondent is intentionally causing this diversion in order
to disrupt Complainant’s business by taking potential customers to another
competing website. The Panel finds that
Respondent has been intentionally disrupting Complainant’s business, and that
this disruption is evidence that Respondent registered and is using the <straightboysarebroke.com> domain name in bad faith pursuant to Policy
¶ 4(b)(iii). See 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).”); see also 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).
Complainant also contends that Respondent is gaining commercially from the diversion of Internet customers to Respondent’s website that resolves from the <straightboysarebroke.com> domain name, through the profits Respondent receives from Internet users who access the adult-oriented content on Respondent’s competing website. As Respondent is intentionally using the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark, the Panel finds that, pursuant to Policy ¶ 4(b)(iv), Respondent’s use of the <straightboysarebroke.com> domain name for commercial gain is evidence of Respondent’s registration and use in bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <straightboysarebroke.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 12, 2009
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