MRA Holding LLC v. RaveClub Berlin
Claim Number: FA0301000140622
PARTIES
Complainant is MRA Holding, LLC, Santa Monica, CA, USA (“Complainant”) represented by Victor T. Fu, of Pollet Richardson & Patel ALC. Respondent is RaveClub Berlin, Nassau, BS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <girlsgonewil.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 8, 2003; the Forum received a hard copy of the Complaint on January 15, 2003.
On January 9, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <girlsgonewil.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a 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 January 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 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@girlsgonewil.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 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 <girlsgonewil.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 <girlsgonewil.com> domain name.
3. Respondent registered and used the <girlsgonewil.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MRA Holding, LLC, owns 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.
Complainant operates under its GIRLS GONE WILD name as a retailer 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. In conjunction with its sales and promotional efforts, Complainant registered the <girlsgonewild.com> domain name on January 21, 1999.
Respondent, RaveClub Berlin, registered the <girlsgonewil.com> domain name on February 26, 2001, and is not licensed or authorized to use Complainant’s mark for any purpose. Respondent uses the disputed domain name to redirect Internet users to an adult-oriented website at <hanky-panky-college.com>. The disputed domain name also hosts a series of pop-up advertisements.
Respondent has been brought before previous administrative Panels on numerous occasions (e.g. FA 97361; FA 101507; and FA 101819), and is also known to the Panel as the notorious cybersquatter John Zuccarini.
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 the GIRLS GONE WILD mark through proof of registration on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark.
Respondent’s <girlsgonewil.com> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark. Respondent has merely deleted the letter “d” from the word “wild” in Complainant’s mark, an alteration that does not reduce the confusing similarity between the domain name and Complainant’s mark. 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 <girlsgonewil.com> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark under Policy ¶ 4(a)(i).
Complainant has the initial burden of proving that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant can meet its burden with a showing that Respondent’s activities do not demonstrate rights and legitimate interests in the domain name. Showing that Policy ¶¶ 4(c)(i)-(iii) are not applicable to Respondent is sufficient for Complainant to meet its burden. 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 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 <girlsgonewil.com> domain name is a one-character misspelling of Complainant’s GIRLS GONE WILD mark. Moreover, Respondent uses the infringing domain name to redirect Internet users attempting to reach Complainant’s website to a commercial, adult-entertainment website at <hanky-panky-college.com>. Appropriating Complainant’s mark for this purpose 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 pursuant to 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 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); 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)
Respondent lists its name as “RaveClub Berlin” in its WHOIS contact information. Moreover, the disputed domain name is a simple misspelling of Complainant’s famous mark, and is nonsensical in its own right. Finally, Respondent is known to the Panel as the notorious cybersquatter John Zuccarini. All these facts permit the Panel to infer that Respondent is not “commonly known by” the name GIRLS GONE WIL or <girlsgonewil.com>. Thus, 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 will view Respondent’s failure to respond to the Complaint as additional evidence that it lacks rights and legitimate interests in the domain name. See 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); see also 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)
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <girlsgonewil.com> domain name under Policy ¶ 4(a)(ii).
Respondent registered and used the <girlsgonewil.com> domain name in bad faith. Specifically, Respondent registered an infringing variation of Complainant’s GIRLS GONE WILD mark, creating a likelihood of confusion as to the source or sponsorship of the disputed domain name. Respondent uses this likelihood of confusion to redirect Internet users to a commercial website at <hanky-panky-college.com>, presumably for a referral fee or a portion of advertising revenue. This evidences bad faith use and registration of the domain name 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 <girlsgonewil.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 <girlsgonewil.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: February 24, 2003
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