Blu Media Inc. v. Rost Goldman
Claim Number: FA1004001321153
Complainant is Blu Media Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <brokestraightguys.org>, registered with Moniker.
The undersigned certifies that he or she 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 electronically on April 26, 2010.
On April 27, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <brokestraightguys.org> 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 May 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@brokestraightguys.org. Also on May 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2010, 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" through submission of a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <brokestraightguys.org> domain name is confusingly similar to Complainant’s BROKESTRAIGHTGUYS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <brokestraightguys.org> domain name.
3. Respondent registered and used the <brokestraightguys.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blu Media Inc., has used its BROKESTRAIGHTGUYS.COM mark in connection with adult entertainment online, dating to the registration of its <brokestraightguys.com> domain name on September 8, 2004. Complainant’s first published instance of intent to use in commerce was on June 28, 2005. Complainant has been the subject of blog reviews in relation to its mark, and has purchased significant advertising space in numerous magazines throughout its use of the mark.
Respondent, Rost Goldman, registered the <brokestraightguys.org> domain name on August 21, 2009. Respondent is a member of Complainant’s affiliate program. The disputed domain name resolves to a website that displays Complainant’s mark as a hyperlink to Complainant’s business.
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.
Complainant does not have a
trademark registraton for the BROKESTRAIGHTGUYS.COM mark with the United States Patent and Trademark Office
(“USPTO”). However, the Panel finds trademark registration unnecessary where
Complainant has established common law rights in the mark pursuant to Policy
¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum
July 18, 2006) (finding that the complainant need not own a valid trademark
registration for the ZEE CINEMA mark in order to demonstrate its rights in the
mark under Policy ¶ 4(a)(i)); see also Hiatt
v. personal fan & official site builders : we build great sites, FA
881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark
authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark
has gained secondary meaning through extensive commercial use and common law
rights have been established ….”).
Complainant asserts it has common
law rights in the BROKESTRAIGHTGUYS.COM mark through its continuous use
in commerce since 2004 and the subsequent secondary meaning it has acquired
through its use of the mark. Complainant operates a website resolving from the
mark, and promotes and advertises the website through online, radio, and print
magazine advertisements. The Panel finds Complainant has provided sufficient
evidence of its continuous use and acquired secondary meaning in the mark to
establish common law rights in the BROKESTRAIGHTGUYS.COM mark under Policy ¶
4(a)(i) dating back to September 8, 2004. See
Complainant contends that Respondent’s <brokestraightguys.org> domain name is confusingly similar to Complainant’s mark because it merely removes the generic top-level domain (“gTLD”) from the mark (“.com”) and adds a gTLD (“.org”). The Panel finds these minor alterations are insufficient to distinguish the disputed domain name from Complainant’s mark. Therefore, the Panel finds Respondent’s <brokestraightguys.org> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Previous panels have found this allegation sufficient to establish a prima facie case against Respondent under Policy ¶ 4(a)(ii). Once the prima facie case is established, the burden shifts to Respondent to prove its rights or legitimate interests in the disputed domain name. Respondent has failed to respond to this proceeding. The Panel has the discretion to view Respondent’s failure to respond as evidence of Complainant’s allegation or to view the evidence in the record under Policy ¶ 4(c) to determine if Respondent has rights or legitimate interests in the disputed domain name.
See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information for the registrant lists “Rost Goldman” which does not refute Complainant’s contention. The Panel finds no evidence to contradict Complainant’s contention, and therefore finds that Respondent is not commonly known by the <brokestraightguys.org> domain name. 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Furthermore, Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name due to its failure to provide a bona fide offering of goods or services or to provide a legitimate noncommercial or fair use. Respondent’s disputed <brokestraightguys.org> domain name resolves to a website that displays a link to Complainant’s website under its BROKESTRAIGHTGUYS.COM mark and receives a commission when Internet users click the link on Respondent’s site. The Panel finds this use of a website resolving from a confusingly similar domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Lastly, Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name due to Respondent’s disregard for the affiliation agreement that specifically does not confer rights in Complainant’s mark. The Panel previously held that Respondent’s <brokestraightguys.org> domain name is confusingly similar to Complainant’s BROKESTRAIGHTGUYS.COM mark. The Panel finds Respondent’s disregard of the Affiliate Terms of Service in registration and use of the confusingly similar disputed domain name is further evidence of Respondent’s lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (concluding that the respondent had no rights or legitimate interests in disputed domain names containing the complainant’s marks even though it was a part of the complainant’s affiliate program, as the affiliate agreement expressly stated that affiliates could not register domain names containing the CRICKET mark); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent’s disregard for the
affiliation program terms of service, agreed to by Respondent, is evidence of
Respondent’s bad faith registration and use of the disputed domain name.
Complainant contends that Respondent was aware of Complainant’s mark, and such
awareness is evidenced in the affiliation agreement and subsequent use of
Complainant’s mark on the website resolving from the disputed domain name.
Complainant argues that Respondent created confusion for Internet users seeking
Complainant and then profited from this confusion by receiving a commission
from each click-through. The Panel finds that Respondent registered the confusingly
similar disputed domain name for commercial gain, which constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Deluxe Corp. v.
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brokestraightguys.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 8, 2010
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