BPM Productions, Inc. v. Bog
Claim Number: FA0209000125814
PARTIES
Complainant
is BPM Productions, Inc., Salem, MA,
USA (“Complainant”) represented by Mark
A. Fischer, of Palmer & Dodge
LLP. Respondent is Bog, Kemerovo, ESTONIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <salemhauntedhappenings.com>,
registered with Stargate Comunications,
Inc.
PANEL
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 25, 2002; the Forum received a hard copy of the
Complaint on September 26, 2002.
On
September 26, 2002, Stargate Comunications, Inc. confirmed by e-mail to the
Forum that the domain name <salemhauntedhappenings.com>
is registered with Stargate Comunications, Inc. and that Respondent is the
current registrant of the name. Stargate
Comunications, Inc. has verified that Respondent is bound by the Stargate
Comunications, 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
September 30, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 21, 2002 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@salemhauntedhappenings.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
November 8, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<salemhauntedhappenings.com>
domain name is confusingly similar to Complainant’s HAUNTED HAPPENINGS mark.
Respondent
has no rights or legitimate interests in the <salemhauntedhappenings.com> domain name.
Respondent
registered and used the <salemhauntedhappenings.com>
domain name in bad faith.
B.
Respondent
Respondent has failed to submit a
Response in this proceeding.
FINDINGS
Complainant holds a registered trademark
with the United States Patent and Trademark Office (“USPTO”) for the HAUNTED
HAPPENINGS mark (Reg. No. 1,976,182).
Complainant has used the mark since 1982 to identify the source of its
Halloween festival, entertainment and related cultural and educational
events.
Complainant publicizes its mark at the
<hauntedhappenings.org> website.
At this website the public is provided more information about the
HAUNTED HAPPENINGS festival and related activities. Including this website, considerable sums of money have been
spent by Complainant in advertising and promoting the HAUNTED HAPPENINGS mark.
Respondent registered the <salemhauntedhappenings.com> domain
name on June 1, 2002. Respondent uses
the domain name to display sexually pornographic material. The domain name resolves to a website that
purports to offer free porn and provides links to pornographic material.
DISCUSSION
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 the 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 the 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 HAUNTED HAPPENINGS mark through proof of trademark registration with the
USPTO and use of the mark since 1982.
Respondent’s <salemhauntedhappenings.com> domain name incorporates
Complainant’s entire HAUNTED HAPPENINGS mark with the mere addition of “Salem”
as a prefix. Respondent’s addition of
“Salem” does not distinguish the domain name from Complainant’s mark because
“Salem” is the city where Complainant’s Halloween festival takes place. Therefore, “Salem” has an obvious
relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly
similar to the mark. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO
Mar. 23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of Complainant combined with a generic word or
term). The mere addition of a
geographic prefix or suffix to a registered mark does not prevent the domain
name from being found to be confusingly similar. See Texaco, Inc. v.
Texaco Domain Canada, FA94869 (Nat. Arb. Forum June 27, 2000) (finding
<texacocanada.com> confusingly similar to TEXACO).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Respondent has failed to come forward and
challenge Complainant’s prima facie Complaint. Complainant contends that Respondent has no rights or legitimate
interests in the domain name.
Respondent’s failure to answer that contention allows the Panel to
presume that Respondent has no such rights or legitimate interests. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately apparent to the Panel and
Respondent did not come forward to suggest any right or interest it may have); see
also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (holding where a Complainant has asserted that Respondent has no rights
or legitimate interests in respect of 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”).
Furthermore, the Panel accepts all of
Complainant’s allegations as true because they have gone uncontested. Also, the Panel will draw all reasonable
inferences in favor of Complainant. 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).
Respondent uses the <salemhauntedhappenings.com> domain name to resolve to a
website that purports to offer free porn.
The website contains links to various pornographic related websites. Respondent’s pornographic use of the
confusingly similar domain name is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate fair
use pursuant to Policy ¶ 4(c)(iii). See
Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent
had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where Respondent linked
these domain names to its pornographic website); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11,
2000) (finding that it is not a bona fide offering of goods or services to use
a domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material where such use is
calculated to mislead consumers and to tarnish Complainant’s mark).
Complainant has never granted Respondent
permission to use the HAUNTED HAPPENINGS mark.
Respondent has not come forward with any evidence showing it is commonly
known by the <salemhauntedhappenings.com>
domain name. Therefore, Respondent has
no rights or legitimate interests in the 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 Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Respondent
has no rights or legitimate interests in the <salemhauntedhappenings.com> domain name; thus, Policy ¶
4(a)(ii) has been satisfied.
Respondent’s use of the <salemhauntedhappenings.com>
domain name in association with pornographic material is harmful to
Complainant’s HAUNTED HAPPENINGS mark.
Internet users searching for information regarding Complainant’s HAUNTED
HAPPENINGS festival are likely to be diverted to Respondent’s pornographic
related website. Such graphic material
tarnishes the mark and confuses the Internet user as to Complainant’s
affiliation with the pornographic website.
It may be inferred that Respondent is trading off of Complainant’s
HAUNTED HAPPENINGS mark for commercial gain, as this is a classic example of
cyber-infringement. Thus, Respondent
registered and used the domain name in bad faith under Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that the association of a confusingly similar domain name with a
pornographic website can constitute bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148
(WIPO Apr. 26, 2000) (finding that “this association with a pornographic web
site can itself constitute bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <salemhauntedhappenings.com>
be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: November 14, 2002
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