L.F.P., Inc. v. Corp Moishe
Claim Number: FA0302000146622
Complainant is
L.F.P., Inc., Beverly Hills, CA, USA (“Complainant”) represented
by Paul J. Cambria of Lipsitz, Green, Fahringer, Roll, Salisbury
& Cambria. Respondent is Corp Moishe, San Pedro, COSTA RICA
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at
issue are <sportshustlers.com> and <sportshustler.com>
registered with Network Solutions, Inc.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on February 24, 2003; the Forum received a hard copy of the
Complaint on February 25, 2003.
On February 26, 2003, Network
Solutions, Inc. confirmed by e-mail to the Forum that the domain names <sportshustlers.com>
and <sportshustler.com> are registered with Network Solutions,
Inc. and that Respondent is the current registrant of the names. 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 March 4, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of March 24, 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@sportshustlers.com and postmaster@sportshustler.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 March 31, 2003,
pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sportshustlers.com>
and <sportshustler.com> domain names are confusingly similar
to Complainant’s HUSTLER and HUSTLER CASINO marks.
2. Respondent does not have
any rights or legitimate interests in the <sportshustlers.com> and
<sportshustler.com> domain names.
3. Respondent registered
and used the <sportshustlers.com> and <sportshustler.com>
domain names 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 HUSTLER mark (Reg. No. 1,022,001 registered on May 20, 1975)
related to adult entertainment in various media, including magazines,
videotapes, DVDs and online entertainment. Complainant also holds a trademark
registration with the USPTO for the HUSTLER CASINO mark (Reg. No. 2,279,911
registered on August 21, 2001) in relation to providing gaming casino
facilities.
Respondent registered
the <sportshustler.com> domain name on April 21, 2001. Respondent
registered the <sportshustlers.com> domain name on September 21, 2002.
Both of Respondent’s
disputed domain names resolve to the same website, which reads “Where Sex and
Sports Collide,” offering adult entertainment and Internet gambling.
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 that it has rights in the HUSTLER mark and the HUSTLER CASINO mark
through registration with the USPTO.
Respondent’s <sportshustlers.com>
and <sportshustler.com> domain names are confusingly similar
to Complainant’s HUSTLER mark because the domain names incorporate
Complainant’s entire mark and merely add the descriptive term “sports” to the
beginning of Complainant’s mark and the generic top-level domain (“gTLD”)
“.com” to the end of the mark. Respondent’s <sportshustlers.com>
domain name also adds the letter “s” to the end of Complainant’s mark. The
Panel finds that neither the addition of the descriptive term “sports,” the
gTLD “.com” nor the letter “s” sufficiently distinguish the disputed domain
names from Complainant’s registered mark pursuant to Policy ¶ 4(a)(i). See
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding
that “[n]either the addition of an ordinary descriptive word . . . nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied); see also Blue Cross & Blue Shield Ass’n v. InterActive
Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a
domain name which merely adds the letter ‘s’ to Complainant’s mark is
sufficiently similar to the mark to cause a likelihood of confusion among the
users of the Complainant’s services and those who were to view a website
provided by the Respondent accessed through the contested domain name).
The phrase
"confusingly similar" is shorthand for saying that concurrent use of
conflicting marks will create a likelihood of confusion. McCarthy on
Trademarks and Unfair Competition, § 23:4 (4th ed. 2000). The Panel is well
aware other panels have held that a Complainant’s failure to establish a
likelihood of confusion between a registered mark and a domain name bars the
transfer of the domain name registration when the term signified by the mark is
also a term of common usage. See Trump v. olegevtushenko a/k/a Oleg
Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that
“although Complainant is a well known personage whose name is internationally
recognized,” the word “trump” predates Complainant and has a myriad of common
uses, therefore, <porntrumps.com> should not be transferred to
Complainant). The Panel also fully understands that Complainant does not have
the exclusive right to every form of the term “hustler.” See Trump v.
olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11,
2001) (finding that <porntrumps.com> does not infringe on Complainant’s
famous mark TRUMP, since Complainant does not have the exclusive right to use
every form of the word “trump”).
However, on its facts,
the Trump decision is distinguishable from this proceeding. In the Trump
decision, the Panel found that there was no likelihood of confusion between
the TRUMP mark and the <porntrumps.com> domain name because the
web-surfing public would not readily associate Mr. Trump’s distinguished
moniker and service mark with “porn.” In contrast, Complainant holds trademark
registrations in relation to both the adult entertainment industry and gaming
casino facilities. By referencing both “sex” and “sports” on its web page,
Respondent has created a likelihood of confusion between Complainant’s
registered trademark and Respondent’s web-related services. The likelihood of
confusion resulting from Respondent’s offer of similar services to those that
Complainant provides mandates this Panel to find that the disputed domain names
are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec.
18, 2000) (finding that confusion would result when Internet users, intending
to access Complainant’s website, think that an affiliation of some sort exists
between Complainant and Respondent, when in fact, no such relationship would
exist); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO
Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s
registered mark is sufficient to establish identical or confusing similarity
for purposes of the Policy despite the addition of other words to such marks”).
Furthermore, Respondent
has not provided this Panel with a Response to the Complaint. Had Respondent
presented a case to establish that the <sportshustlers.com> and <sportshustler.com>
domain names were not confusingly similar to Complainant’s registered marks,
the Panel may have been receptive to such an argument. However, in the face of
Complainant’s establishment of a prima facie case and Respondent’s
failure to respond in this proceeding, the Panel is forced to find in favor of
the party that presents its case to the Panel. See 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 assertion in this regard”); 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”).
The Panel finds that
Policy ¶ 4(a)(i) has been established.
The Panel is permitted
to presume that Respondent lacks any rights to or legitimate interests in the <sportshustlers.com>
and <sportshustler.com> domain names because of Respondent’s
failure to respond to the Complaint. See Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interests in the domain name because the Respondent never submitted
a response nor provided the Panel with evidence to suggest otherwise); 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).
Respondent is using the
disputed domain names to divert Internet traffic to its website that features
adult entertainment and gambling services, both activities in which Complainant
is also engaged. The use of a domain name confusingly similar to a registered
mark to engage in competing activity is neither 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 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 Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally and misleadingly
diverting users away from Complainant's site to a competing website).
Respondent has not come
forward with any proof and there is no evidence in the record to establish that
Respondent is commonly known by SPORTS HUSTLERS, <sportshustlers.com>,
SPORTS HUSTLER or <sportshustler.com>. Therefore, Respondent has
failed to establish that it has any rights to or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also 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").
The Panel finds that
Policy ¶ 4(a)(ii) has been established.
Respondent is using the
disputed domain names to redirect Internet users to its website, which offers
similar services as Complainant, making Respondent a competitor of Complainant.
The registration and use of a confusingly similar domain name for the purpose
of disrupting the business of a competitor is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc.
v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also General Media Communications,
Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad
faith where a competitor of Complainant registered and used a domain name
confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic
website).
Moreover, the Panel may
infer that Respondent is profiting from its registration and use of the
disputed domain names because the domain names resolve to a website that offers
adult entertainment and gambling services. Respondent’s attempt to attract
Internet users to its website for commercial gain by creating a likelihood of
confusion between Respondent’s website and Complainant’s services is evidence of
bad faith registration and use 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 Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain).
The Panel finds that
Policy ¶ 4(a)(iii) has been established.
Having established all
three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is
Ordered that the <sportshustlers.com> and <sportshustler.com>
domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: April 8, 2003
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