National Arbitration Forum

 

DECISION

 

La Touraine, Inc. v Nextdoorcash

Claim Number: FA0505000479579

 

PARTIES

Complainant is La Touraine, Inc. (“Complainant”), represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria, LLP, 42 Delaware Avenue, Suite 300, Buffalo, NY 14202.  Respondent is Nextdoorcash (“Respondent”), represented by John Berryhill, of Dann, Dorfman, Herrell, and Skillman P.C., 1601 Market Street, Suite 2400, Philadelphia, PA 19103-2307.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hotmomnextdoor.com>, registered with Tucows Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Mr. Jacques A. Léger, Q.C., Mr. M. Kelly Tillery and Ms. Anne Wallace as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 20, 2005.

 

On May 19, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <hotmomnextdoor.com> is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 May 25, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 14, 2005 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@hotmomnextdoor.com by e-mail.

 

A timely Response was received and determined to be complete on June 14, 2005.

 

On June 30, 2005 pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Mr. Jacques A. Léger, Mr. M. Kelly Tillery and Ms. Anne Wallace as Panelists

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the substitution of the words “myfriends” with “nextdoor” does not substantially alter its mark and hence renders Respondent’s domain name confusingly similar to Complainant’s mark.

 

Complainant asserts that Respondent is in no way affiliated with it and has not received any authorization or consent to use Complainant’s trademark.  Respondent’s website at <hotmomnextdoor.com> offers goods and services in the field of adult entertainment, therefore directly competing with Complainant’s website at <myfriendshotmom.com>. This competition fails to demonstrate a bona fide offering of goods or services.  Furthermore, Complainant asserts this attitude is intended to divert Internet users in search of Complainant’s site and does not constitute a legitimate noncommercial use or fair use of Complainant’s domain name.  Respondent’s unfair registration is causing damage to Complainant’s business since Respondent has no right or legitimate interest in respect of the <hotmomnextdoor.com> domain name.

 

Complainant contends Respondent is offering goods and services identical or substantially similar to its own, therefore attracting, for commercial gain, Internet users that are likely confused by the source of the products. The confusingly similar domain name disrupts and weakens Complainant’s trademark.  In no circumstances would Respondent not know the existence of Complainant’s famous trademark and hence the registration of <hotmomnextdoor.com> and its usage are done in bad faith.

 

B. Respondent

Respondent contends that since Complainant’s MY FRIEND’S HOT MOM mark has just recently been filed and has not even been examined and that Respondent’s domain name was registered less than two months after Complainant’s domain name registration, it is impossible that the latter’s domain name has achieved world fame in this short period of time.

 

Respondent asserts that <hotmomnextdoor.com> is not confusingly similar to Complainant’s pending mark, as only the words “hot mom” are the same. The other word groups “my friend’s” and “next door” are completely different and the first group precedes the common words whereas the second is placed after the common words “hot mom.”

 

Respondent has been operating a legitimate business prior to any notification of dispute and therefore submits that it has a legitimate interest in the continuation of its operations. In January 2004 it had developed a network of websites with the theme “next door” such as <nextdoorcash.com>, <hotmomnextdoor.com>, <blowjobnextdoor.com>, <hotvirginnextdoor.com>, <fucknextdoor.com> and <ebonynextdoor.com>  which all have a distinctive graphic layout and navigation features.

 

Respondent submits that it has not registered and is not using the domain name in bad faith.  The pattern that it follows is based on the concept of people “next door” and it has no purpose of preventing Complainant from using the trademark or service mark relating to “hot moms.”

 

ISSUES  

The dispute concerns two domain names used in connection with the adult entertainment industry and whose genre involves mature women. Complainant contends that it has used the MY FRIEND’S HOT MOM trademark in interstate and international commerce to designate its world-famous website for adult entertainment.  Complainant has registered the <myfriendshotmom.com> domain name on December 5, 2003 and has been using the mark since at least as early as that date. Respondent’s domain name, <hotmomnextdoor.com>, was registered on January 22, 2004 and according to Complainant, is a subtle variation of the latter’s mark.  Complainant recently filed the trademark registration application on March 30, 2005. 

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 clearly states that the Complainant has the burden of proving cumulatively each of the following three elements on balance of probabilities to obtain an order that a domain name should be cancelled or transferred:

 

(1)    the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(1)    the Respondent has no rights or legitimate interests in respect of the domain name; and

(2)    the domain name has been registered and is being used in bad faith.

 

Failure to prove one of the previous criteria forces the Panel to deny the complaint.

 

Identical and/or Confusingly Similar

 

Paragraph 4(a)(i) of the Policy provides that an applicable dispute is one where a domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights (emphasis added)”. It is trite law that a Complainant needs not necessarily have a registered trademark or service mark in order to seek the remedies contemplated in the Policy, as they are also open to those who have common law rights to such marks. Therefore, a Complainant clearly has the burden of demonstrating that it holds such rights to a trademark or service mark, whether it be a registered mark or a common law one. In the case of a registered mark, such burden is alleviated as the owner benefits of legal presumptions. In the case of a common law mark, it is incumbent upon Complainant to actually show that it has acquired such rights through use. In this case Complainant being only able to rely on common law rights, it is incumbent upon it to actually show acquisition of such rights through use.

 

Van Vleck Homes, Inc. v. Kirk, FA 414680 (Nat. Arb. Forum Apr. 1, 2005).

 

The Panel believes Respondent’s domain name is not confusingly similar to Complainant’s mark as only the words “hot mom” are the same.  The identical part, “hotmom,” is not likely to cause confusion, those terms being common in the adult entertainment industry (<hotmom.com>, <hotmom.net>, <hornyhotmom.com>, <onehotmom.com>, <hotmoms.com>, etc.) as mentioned by Respondent. “Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002).

 

In Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000), the Panel found that the <hot18to30.com> domain name is neither identical nor confusingly similar to the respondent’s CLUB 18-30 trademark.  In Dollar Fin. Group, Inc. v. Oakridge, FA 94977 (Nat. Arb. Forum July 17, 2000), the Panel decided the <tillpaydayloan.com>, <tillpaydayloans.com>, <untilpaydayloan.com>, and <untilpaydayloans.com> domain names are not identical or confusingly similar to the complainant’s CASH ‘TIL PAYDAY and CASH ‘TIL PAYDAY LOANS trademarks and service marks.

 

In the two previously mentioned decisions, there are common elements between the domain names in dispute with the trademark.  However, as in the present case, the different component (hot v. CLUB in the first one and the addition of the word CASH in the second one) makes it difficult to establish confusion.

 

Since Complainant has failed to prove the first prong of the first criterion required by paragraph 4(a)(i) of the Policy, there is no need for the Panel to pursue its inquiry as to the second prong of the first criterion, i.e. acquisition of common law rights and as to the criteria required by paragraphs 4(a)(ii) and (iii).  See Ricom, Inc. v. Ricom, FA 348012 (Nat. Arb. Forum Dec. 16, 2004).

 

 

DECISION

The Complainant has failed to satisfactorily establish, on a balance of probabilities, the first element required under the ICANN Policy, i.e. identical or confusing similarity of the <hotmomnextdoor.com> domain name with Complainant’s MY FRIEND’S HOT MOM mark.

 

Consequently, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel concludes that relief sought shall be DENIED.

 

 

 

 

 

Jacques A. Léger, Q.C. presiding Panelist

Anne Wallace and M. Kelly Tillery, Panelists

Dated: July 13, 2005

 

 

 

 

 

National Arbitration Forum