General Media Communications, Inc. v.
Spider Entertainment, Inc. c/o Brian
Claim
Number: FA0506000505499
Complainant is General Media Communications, Inc.
(“Complainant”), 2 Penn Plaza, 11th Floor, Suite 1125,
New York, NY 10121. Respondent is Spider Entertainment Inc. c/o Brian (“Respondent”), Toronto, Ontario, ZipRequir, CA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <penthousepictures.com>, registered with R.
Lee Chambers Company 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
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 29, 2005.
On
June 27, 2005, R. Lee Chambers Company Llc confirmed by e-mail to the National
Arbitration Forum that the domain name <penthousepictures.com> is
registered with R. Lee Chambers Company Llc and that Respondent is the current
registrant of the name. R. Lee Chambers
Company Llc has verified that Respondent is bound by the R. Lee Chambers
Company Llc 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
July 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 21, 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@penthousepictures.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 27, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <penthousepictures.com>
domain name is confusingly similar to Complainant’s PENTHOUSE mark.
2. Respondent does not have any rights or
legitimate interests in the <penthousepictures.com> domain name.
3. Respondent registered and used the <penthousepictures.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, General Media Communications, Inc., provides
adult entertainment goods and services under its PENTHOUSE mark. Since 1969, Complainant and its affiliates
have published Penthouse, an adult entertainment magazine distributed
throughout the United States and the world.
The magazine has generated millions of dollars in sales and has attained
widespread popularity. Complainant has
been able to use this popularity to expand the PENTHOUSE mark to several other
product and service areas, including online adult entertainment services at
Complainant’s website at the <penthouse.com> domain name.
Complainant holds several registrations with the United States Patent and
Trademark Office (“USPTO”) for the PENTHOUSE mark (Reg. No. 880,922 issued
November 18, 1969) and other related marks, such as PENTHOUSE FORUM (Reg. No.
1,020,498 issued Septmber 16, 1975) and PENTHOUSE.COM (Reg. No. 2,441,085
issued April 3, 2001.
Respondent registered the <penthousepictures.com> domain name on August 7, 2004. Respondent is using the disputed domain name
to link to an adult-oriented website at the <youngyears.com> domain name.
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. 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.”).
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
asserts rights in the PENTHOUSE mark based on its registration of the mark with
the USPTO. It is well-established under
the Policy that a complainant’s registration of a mark with a federal authority
establishes a prima facie case of the complainant’s rights, which the
respondent may rebut. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of
a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”). Without a response from Respondent, there is
no challenge to Complainant’s prima facie case of rights in the
mark. The Panel, therefore, determines
that Complainant has rights in the PENTHOUSE mark for the purposes of Policy ¶
4(a)(i). See U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003)
(“[O]nce the USPTO has made a determination that a mark is registrable, by so
issuing a registration, as indeed was the case here, an ICANN panel is not
empowered to nor should it disturb that determination.”).
Complainant
argues that the <penthousepictures.com> domain name registered by Respondent is
confusingly similar to Complainant’s PENTHOUSE mark, because the domain name
fully incorporates Complainant’s mark and adds the generic term “pictures,”
which is associated with Complainant’s business. Under the Policy, such minor additions are insufficient to
distinguish the disputed domain name from Complainant’s mark. Therefore, the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Nikon, Inc. v. Technilab, Inc.,
D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark in the domain name rather
than upon the likelihood of confusion test under U.S. trademark law); see
also 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”). Having found that Complainant has met its
initial burden by establishing a prima facie case, the Panel will now
analyze whether Respondent has met its burden to establish rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
According to the
WHOIS information for the <penthousepictures.com> domain name,
Respondent is known as “Spider Entertainment, Inc.” and “Brian.” Because this information is the only
evidence of Respondent’s identity, the Panel does not have any evidence that
Respondent is commonly known by the disputed domain name. Furthermore, the fame of Complainant’s
PENTHOUSE mark suggests that strong evidence would be necessary to prove any
assertion that Respondent is known by the disputed domain name. Without a response from Respondent to rebut
Complainant’s evidence, the Panel finds that Respondent has failed to establish
rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World
Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002)
(finding that the respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Respondent is
using the <penthousepictures.com> domain name to divert Internet
users to an adult-oriented website at the <youngyears.com> domain
name. Due to the nature of
Complainant’s business in the adult entertainment industry, the Panel presumes
that Respondent is making use of Complainant’s famous PENTHOUSE mark to lead
Complainant’s potential clients to Respondent’s competing business. Respondent’s use of Complainant’s mark in a
domain name to redirect Internet traffic likely intended for Complainant to
Respondent’s competing website is neither a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”); see also Glaxo Group Ltd. v. WWW
Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent
was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or
(iii) because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant uses
its PENTHOUSE mark in association with its business as a provider of adult
entertainment services. Respondent is
using the <penthousepictures.com> domain name to divert Internet
users to Respondent’s adult-oriented website.
These circumstances indicate that Respondent competes with Complainant
and registered the domain name that includes Complainant’s mark to disrupt
Complainant’s business. This is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Gen. Media Commc’ns, 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 web site); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Moreover, the <penthousepictures.com>
domain name redirects Internet users searching for Complainant’s PENTHOUSE
products and services to Respondent’s competing adult-oriented website,
creating a likelihood of confusion as to Complainant’s affiliation with the
resulting website. By using
Complainant’s mark in the domain name, Respondent is attempting to attract
Internet users interested in Complainant’s products and services to
Respondent’s website for Respondent’s commercial benefit. Respondent’s activities are evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent
violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website
and offering identical services as those offered by the complainant); see
also Identigene, Inc. v. Genetest
Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the
respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <penthousepictures.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 3, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum