MRA Holding, LLC v. Costnet
Claim Number: FA0301000140454
PARTIES
Complainant is MRA Holding, LLC, Santa Monica, CA (“Complainant”) represented by Victor T. Fu, of Pollet, Richardson & Patel, ALC. Respondent is CostNet, San Jose, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <girlsgonwild.com>, registered with Register.com, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 7, 2003; the Forum received a hard copy of the Complaint on January 15, 2003.
On January 7, 2003, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <girlsgonwild.com> is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 January 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 2003 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@girlsgonwild.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 February 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
A. Complainant makes the following assertions:
1. Respondent’s <girlsgonwild.com> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark.
2. Respondent does not have any rights or legitimate interests in the <girlsgonwild.com> domain name.
3. Respondent registered and used the <girlsgonwild.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MRA Holding, LLC, holds a registered trademark for the GIRLS GONE WILD mark (U.S. Reg. No. 2,411,851, registered on the Principal Register of the U.S. Patent and Trademark Office on December 12, 2000). Complainant filed for this mark on February 12, 1999, and has used the mark since December of 1998 in conjunction with its sale of pre-recorded visual media and related products.
Complainant’s goods have been extensively advertised and promoted throughout the United States and other nations, generating considerable goodwill and consumer recognition of the mark. Pursuant to its efforts to promote and sell its products, Complainant registered the <girlsgonewild.com> domain name on January 21, 1999.
Respondent, Costnet, registered the <girlsgonwild.com> domain name on May 22, 1999, and is not licensed or authorized to use Complainant’s mark for any purpose. Respondent uses the domain name to redirect Internet users to another website at <setraffic.com>, where the user is subjected to a series of pornographic pop-up advertisements and links to those pornographic websites.
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.
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 has established rights in its common law GIRLS GONE WILD mark, as well as through its registration of the mark on the Principal Register of the U.S. Patent and Trademark Office.
Respondent’s <girlsgonwild.com> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark. The elimination of the letter “e” from the word “gone” in Complainant’s mark is not a difference that alleviates any confusing similarity. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Accordingly, the Panel finds that the <girlsgonwild.com> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark under Policy ¶ 4(a)(i).
Complainant can meet its burden under Policy ¶ 4(a)(ii) with a showing that Respondent’s activities do not demonstrate rights and legitimate interests in the domain name. If Complainant demonstrates that Policy ¶¶ 4(c)(i)-(iii) are not applicable to Respondent, Complainant will successfully meet its burden. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to 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”); see also 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent’s <girlsgonwild.com> domain name is a mere misspelling of Complainant’s GIRLS GONE WILD mark. Furthermore, Respondent uses the infringing domain name to redirect Internet users attempting to reach Complainant’s <girlsgonewild.com> domain name to a website featuring pornographic pop-up advertisements. This type of commercial redirection does not evidence a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name as stated in Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of the Complainant’s mark in connection with the Respondent’s website is misleading and Respondent is intentionally diverting business from the Complainant).
Respondent lists its name as “Costnet” in its WHOIS contact information. Given that the disputed domain name does not even correctly spell a cognizable phrase, the Panel infers that Respondent is not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>, and finds that Policy ¶ 4(c)(ii) does not apply to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
The Panel also chooses to view Respondent’s failure to respond to the Complaint as evidence that it lacks rights and legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <girlsgonwild.com> domain name under Policy ¶ 4(a)(ii).
Respondent registered and used the <girlsgonwild.com>
domain name in bad faith. The
disputed domain name is a simple, one-character misspelling of Complainant’s
GIRLS GONE WILD mark, and the Panel infers that it was registered with the
intent of ensnaring Internet users attempting to reach Complainant’s
<girlsgonewild.com> website. In creating this likelihood of confusion in
the minds of Internet users so that it could receive commercial gain from
pornographic pop-up advertisements, Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also ESPN,
Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad
faith where the Respondent linked the domain name to another website and the
Respondent presumably received a portion of the advertising revenue from site,
thus using a domain name to attract Internet users for commercial gain).
The Panel thus finds that Respondent registered and used the <girlsgonwild.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <girlsgonwild.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 20, 2003
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