LFP IP, LLC v. Ken Belden / N/A
Claim Number: FA1404001553335
Complainant is LFP IP, LLC (“Complainant”), represented by Jonathan W. Brown of Lipsitz Green Scime Cambria LLP, New York, USA. Respondent is Ken Belden / N/A (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <barelylegalporn.com>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2014; the National Arbitration Forum received payment on April 9, 2014.
On April 9, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <barelylegalporn.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@barelylegalporn.com. Also on April 15, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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
Complainant made the following contentions.
a) Complainant is one of the largest manufacturers, wholesalers, and retailers of adult entertainment goods and services in the United States and throughout much of the world. Complainant owns numerous domain names, including <barelylegal.com>.
b) Complainant has rights in the BARELY LEGAL mark, used in connection with adult entertainment goods and services. Complainant owns registrations for the BARELY LEGAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,872,472 registered January 10, 1995).
c) Respondent’s <barelylegalporn.com> domain name is confusingly similar to Complainant’s BARELY LEGAL mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive term “porn.”
d) Respondent does not have any rights or legitimate interests in the <barelylegalporn.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BARELY LEGAL mark in any way.
b. The <barelylegalporn.com> domain name resolves to a page providing links to adult entertainment videos, which is in direct competition with Complainant. See Complainant’s Exhibit 7.
e) Respondent registered and is using the <barelylegalporn.com> domain name in bad faith.
a. Respondent is attempting to attract Internet users to the disputed domain name for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s BARELY LEGAL mark. The <barelylegalporn.com> domain name resolves to a website that features links to adult entertainment content in direct Competition with Complainant. See Complainant’s Exhibit 7.
b. Respondent had knowledge of Complainant’s BARELY LEGAL mark prior to registering the <barelylegalporn.com> domain name because Complainant’s mark has long been in existence in the adult entertainment industry and Respondent chose to include the word “porn” in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is one of the largest manufacturers, wholesalers, and retailers of adult entertainment goods and services in the United States and throughout much of the world. Complainant owns numerous domain names, including <barelylegal.com>.
2. Complainant has rights in the BARELY LEGAL mark, used in connection with adult entertainment goods and services. Complainant owns registrations for the BARELY LEGAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,872,472 registered January 10, 1995).
3. Respondent registered the <barelylegalporn.com> domain name August 14, 2013.
4. The <barelylegalporn.com> domain name resolves to a page providing links to adult entertainment videos, which is in direct competition with Complainant.
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."
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends it has rights in the BARELY LEGAL mark, used in connection with adult entertainment goods and services. Complainant states it owns registrations for the BARELY LEGAL mark with the USPTO (e.g., Reg. No. 1,872,472, registered January 10, 1995). Therefore, the Panel finds that Complainant has rights in the BARELY LEGAL mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns several valid registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BARELY LEGAL mark. Complainant alleges that Respondent’s <barelylegalporn.com> domain name is confusingly similar to Complainant’s BARELY LEGAL mark. Complainant states that the disputed domain name incorporates Complainant’s mark in its entirety while adding the descriptive term “porn.” Complainant urges that the term “porn” is a slang adult-content term that is related to Complainant’s efforts in the adult entertainment industry. The Panel notes that the disputed domain name also removes the space that exists between the words in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of a descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Next, the Panel finds that removing a space from a trademark and adding a gTLD in a disputed domain name does not establish distinctiveness from the incorporated trademark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <barelylegalporn.com> domain name is confusingly similar to Complainant’s BARELY LEGAL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s BARELY LEGAL trademark and to use it in its domain name, adding only the descriptive word “porn”;
(b) Respondent has then caused the <barelylegalporn.com> domain name to resolve to a page providing links to adult entertainment videos, which is in direct competition with Complainant;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant contends that Respondent does not have any rights or legitimate interests in the <barelylegalporn.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use its BARELY LEGAL mark in any way. The Panel notes that the WHOIS record for the disputed domain names lists “Ken Belden” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the BARELY LEGAL mark, and neither the WHOIS information nor the other evidence indicates otherwise, the Panel finds that Respondent is not commonly known by the <barelylegalporn.com> domain name under Policy ¶ 4(c)(ii);
(e)Complainant asserts that the <barelylegalporn.com> domain name resolves to a page providing links to adult entertainment videos, which are in direct competition with Complainant. See Complainant’s Exhibit 7. The Panel notes that the links on the resolving website include “Squirting Vagina Videos,” “Mormon Missionary Studs,” and “Cuckold Wives.” Id. Past panels have concluded that using a confusingly similar domain name to promote links of a complainant’s competitors does not constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant under ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent registered and is using the <barelylegalporn.com> domain name in bad faith. Complainant states that Respondent is attempting to attract Internet users to the disputed domain name for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s BARELY LEGAL mark. Complainant observes that the <barelylegalporn.com> domain name resolves to a website that features links to adult entertainment content in direct Competition with Complainant. See Complainant’s Exhibit 7. The Panel notes that the links on the resolving website include “Squirting Vagina Videos,” “Mormon Missionary Studs,” and “Cuckold Wives.” Id. In previous cases, panels have determined that using a confusingly similar domain name to display links to a complainant’s competitors constitutes bad faith via attraction for commercial gain under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <barelylegalporn.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant claims Respondent had knowledge of Complainant’s BARELY LEGAL mark prior to registering the <barelylegalporn.com> domain name because Complainant’s mark has long been in existence in the adult entertainment industry and Respondent chose to include the word “porn” in the disputed domain name. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, as the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BARELY LEGAL mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barelylegalporn.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 8, 2014
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