MRA Holding, LLC v. Computer Catering Service, Inc.
Claim Number: FA0301000140599
PARTIES
Complainant is MRA Holding, LLC, Santa Monica, CA (“Complainant”) represented by Victor T. Fu, of Pollet, Richardson & Patel, ALC. Respondent is, Computer Catering Service, Inc., La Mesa, CA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <girlsgonewild.org>, registered with Network Solutions, 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.
Judge Harold Kalina (Ret.) 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 14, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <girlsgonewild.org> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 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@girlsgonewild.org 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 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 <girlsgonewild.org> domain name is identical to Complainant’s GIRLS GONE WILD mark.
2. Respondent does not have any rights or legitimate interests in the <girlsgonewild.org> domain name.
3. Respondent registered and used the <girlsgonewild.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the GIRLS GONE WILD mark (Reg. No. 2,411,851, issued
December 12, 2000). Complainant has used the GIRLS GONE WILD mark in commerce
since December 1998.
Complainant
uses the mark in relation to prerecorded videotapes featuring adult
entertainment. Complainant has advertised and sold its goods throughout the
United States and foreign countries via television promotions, printed
publications and Internet advertising. Complainant has maintained a website at
<girlsgonewild.com> since January 21, 1999.
Respondent registered the <girlsgonewild.org> domain name on February 17, 2000. Initially Respondent used the domain name to redirect Internet users to a website that featured an escort service for individuals in the area of San Diego. Following a cease-and-desist letter sent from Complainant, Respondent removed the escort service site. Currently the website contains only an index page.
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 its rights in the GIRLS GONE WILD mark through registration
with the USPTO and continuous use of the mark since December 1998.
Respondent’s
<girlsgonewild.org> domain
name is plainly identical to Complainant’s GIRLS GONE WILD mark because
Respondent has merely removed the spaces between the words of Complainant’s
mark and added the generic top-level domain (gTLD) name “.org” to the end of
the mark. See Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see
also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that "the addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use of a gTLD is required
of domain name registrants").
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has not submitted a Response in this proceeding. Thus, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See 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”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Furthermore, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name because Respondent has failed to come forward with a Response. See 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); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the Respondent’s failure to respond: (1) the Respondent does not deny the facts asserted by the Complainant, and (2) the Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).
Prior to the cease-and-desist letter sent from Complainant, Respondent used the disputed domain name to divert Internet traffic to a website that featured an escort service for individuals in the San Diego area. The use of a plainly identical domain name in order to divert Internet users from Complainant’s website to Respondent’s website and its services is neither a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); 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 has presented no evidence to establish that it is commonly known by either GIRLS GONE WILD or <girlsgonewild.org>. Thus, Respondent has failed to establish that it has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent used the <girlsgonewild.org> domain name to divert Internet users to a website that featured an escort service for individuals in the San Diego area. The Panel may infer that Respondent made a profit from the Internet traffic that was diverted to this website. Thus, Respondent has used a plainly identical domain name intentionally to create Internet-user confusion for Respondent’s commercial benefit, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also 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)).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <girlsgonewild.org> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 18, 2003
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