DECISION
L.F.P.,
Inc. v. Country Walk a/k/a John Zuccarini
Claim
Number: FA0210000128645
PARTIES
Complainant is L.F.P., Inc., Beverly Hills, CA
(“Complainant”) represented by Paul J.
Cambria, of Lipsitz, Green,
Fahringer, Roll, Salisbury & Cambria, LLP. Respondent is John
Zuccarini a/k/a Country Walk,
Andalusia, PA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <hustlermagizine.com>,
registered with Joker.com.
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.
Hon. Ralph Yachnin as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on
October 17, 2002; the Forum received a hard copy of the Complaint on October
18, 2002.
On October 22, 2002,
Joker.com confirmed by e-mail to the Forum that the domain name <hustlermagizine.com> is
registered with Joker.com and that Respondent is the current registrant of the
name. Joker.com has verified that
Respondent is bound by the Joker.com 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 October 22, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 11, 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
postmaster@hustlermagizine.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 December 4, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The <hustlermagizine.com>
domain name is confusingly similar to Complainant's HUSTLER mark.
Respondent has no
rights or legitimate interests in the disputed domain name.
Respondent registered
and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to
submit a Response.
FINDINGS
Complainant
is a worldwide provider of adult entertainment. Complainant uses its famous HUSTLER trademark in relation to
adult products, magazines, videotapes, DVDs and online entertainment. Complainant has used its HUSTLER mark since
1972. Complainant has held the domain
name registration for <hustler.com> since 1992 and uses the domain name
in relation to adult entertainment and the promotion of its products.
Complainant
holds numerous trademark registrations for HUSTLER with the United States
Patent and Trademark Office, including the following Registration Number
1,011,001 on the Principal Register.
Complainant also holds trademark registrations in various countries
throughout the world incorporating the HUSTLER mark.
Respondent
registered the disputed domain name on October 25, 1999. Respondent is a notorious cybersquatter who
has been a respondent in numerous administrative proceedings for registering
domain names that are misspellings of famous marks. Respondent is using the disputed domain name in order to divert
Internet users to an adult website sponsored by Respondent.
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 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.
Identical
and/or Confusingly Similar
Complainant
has established that it has rights to the HUSTLER mark through continuous use
since 1972 and through its registration on the Principal Register of the United
States Patent and Trademark Office.
Respondent’s
domain name <hustlermagizine.com>
is confusingly similar to Complainant’s HUSTLER mark because it incorporates
Complainant’s entire mark and adds a misspelled version of the descriptive word
“magazine.” The addition of a
descriptive term such as magazine to Complainant’s mark does not create a
distinct mark capable of overcoming a claim of confusing similarity as it
describes Complainant’s business.
Furthermore, the misspelling of the word “magazine” as “magizine” does
not create any distinctive characteristics because it is a common misspelling
of the word and Complainant’s famous mark is still the dominant feature of the
disputed domain name. See Space Imaging
LLC v. Brownwell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name
combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (finding that the domain names,
<davemathewsband.com> and <davemattewsband.com>, are common misspellings
and therefore confusingly similar).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to come forward with a Response.
Therefore, the Panel is permitted to make reasonable inferences in favor
of Complainant and accept Complainant’s allegations as true. See
Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that Complainant’s allegations are
true unless clearly contradicted by the evidence); 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”).
Furthermore,
based on Respondent’s failure to respond, it is presumed that Respondent lacks
all rights and legitimate interests in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests in respect of the domain, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interest in the domain name because Respondent never submitted a
Response nor provided the Panel with evidence to suggest otherwise).
Respondent
is using a confusingly similar domain name in order to divert Internet users to
a website that offers services that compete with Complainant’s adult
entertainment business. The disputed
domain name is similar to Complainant’s mark therefore Internet users who are
looking for Complainant on the Internet will likely be confused as to the
source, sponsorship and affiliation of the disputed domain name. Respondent’s use of the disputed domain name
to compete with Complainant is not considered to be in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000)
(finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that “[I]t would be unconscionable to find a bona fide offering of services in
a respondent’s operation of web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding
no rights in the domain name where Respondent has an intention to divert
consumers of Complainant’s products to Respondent’s site by using Complainant’s
mark).
Respondent
is the notorious cybersquatter John Zuccarini.
Respondent commonly engages in the registration of domain names that
infringe upon other entities’ marks.
There is no evidence on record that Respondent is commonly known as
HUSTLER MAGIZINE, or <hustlermagizine.com>,
and Respondent has failed to establish that it has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Valigene Corp. v. MIC, FA 94860 (Nat.
Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the
non-use of a domain name that was a misspelling of a famous mark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000)
(finding that Respondent has no rights or legitimate interests in the
<nokiagirls.com> domain name because there was no element on website that
would justify use of the word NOKIA within the domain name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
The
bad faith circumstances listed in Policy paragraph 4(b) are not exclusive. Situations that give rise to bad faith can
be based on the totality of circumstances and those listed in the Policy are
meant to illustrative. See Educ. Testing Serv. v. TOEFL,
D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its
listing of bad faith factors is without limitation”); see also CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly
recognizes that other circumstances can be evidence that a domain name was
registered and is being used in bad faith”).
Based
on the fame of Complainant’s mark it can be inferred that Respondent had actual
knowledge of Complainant’s rights when it registered the disputed domain
name. Registration of a domain name,
despite knowledge of Complainant’s rights is evidence of bad faith registration
pursuant to Policy ¶ 4(a)(iii). See Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name
contains Complainant’s mark in its entirety, (2) the mark is a coined word,
well-known and in use prior to Respondent’s registration of the domain name,
and (3) Respondent fails to allege any good faith basis for use of the domain
name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(holding that “there is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively”).
Respondent’s
<hustlermagizine.com> domain
name is confusingly similar to Complainant’s HUSTLER mark. Respondent is using the disputed domain name
in order to divert Internet users to a website that competes with Complainant’s
adult entertainment services. It can be
inferred that Respondent is making a profit from this activity, and therefore,
Respondent is using a confusingly similar domain name in order to cause
Internet user confusion for its own commercial gain. This type of behavior is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used
the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant); see
also Fanuc Ltd v. Mach. Control Serv.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated
Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website
<fanuc.com> because customers visiting the site were confused as to the
relationship between Respondent and Complainant).
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 the requested relief shall be hereby granted.
Accordingly,
it is Ordered that the domain name <hustlermagizine.com>,
be transferred from Respondent to
Complainant.
Hon.
Ralph Yachnin, Panelist
Justice,
Supreme Court, NY ( Ret.)
Dated:
December 5, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page