General Media Communications, Inc. v.
Challenge Services, Inc. c/o Dave Wright
Claim
Number: FA0507000508942
Complainant, General Media Communications, Inc. (“Complainant”),
is represented by Joshua R. Bressler, 2 Penn Plaza, 11th
Floor, Suite 1125, New York, NY 10121.
Respondent is Challenge Services,
Inc. c/o Dave Wright (“Respondent”), 11821
Buckner Road, Austin, TX 78726.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <penthouseporn.com>, registered with Namesdirect.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
5, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 7, 2005.
On
July 6, 2005, Namesdirect confirmed by e-mail to the National Arbitration Forum
that the domain name <penthouseporn.com> is registered with Namesdirect
and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is
bound by the Namesdirect 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 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 1,
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@penthouseporn.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
August 4, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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 <penthouseporn.com>
domain name is confusingly similar to Complainant’s PENTHOUSE mark.
2. Respondent does not have any rights or
legitimate interests in the <penthouseporn.com> domain name.
3. Respondent registered and used the <penthouseporn.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
General Media Communications, Inc., has been publishing its Penthouse
magazine since 1969. Penthouse
is an adult entertainment magazine and is distributed throughout the United
States and internationally.
Complainant’s magazine has generated millions of dollars in sales. Moreover, Complainant uses the
<penthouse.com> domain name to market and promote the magazine. As a result, Complainant’s website is
extremely popular among Internet users.
The website averaged 10.4 million visits per month in Spring 2005.
Complainant
holds several registrations for its PENTHOUSE mark with the United States
Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 880,992 issued
November 18, 1969; Reg. No. 1,064,636 issued April 26, 1977; Reg. No. 2,686,386
issued February 11, 2003).
Respondent
registered the <penthouseporn.com> domain name on November 20, 2003. On January 11, 2005, Complainant discovered
that Respondent was offering the domain name registration for sale. After monitoring the domain name over the
subsequent months, on April 14, 2005, Complainant discovered that Respondent
was using the <penthouseporn.com> domain name to provide sponsored
links to active adult content websites.
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’s
numerous registrations for its PENTHOUSE mark with the USPTO are sufficient to
establish a prima facie case of rights in the mark. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); 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.”). Respondent’s failure to submit a response leaves undisputed the
presumption that Complainant has rights in the mark. 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.”). The Panel finds that Complainant has
established rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant
alleges that Respondent’s <penthouseporn.com> domain name is
confusingly similar to Complainant’s PENTHOUSE mark. The disputed domain name wholly incorporates Complainant’s mark
and adds the term “porn.” The Panel holds
that the addition of the term “porn” is not sufficient to distinguish the
disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Mattel, Inc. v.
domainsforsalenow@hotmail.com, FA 187609 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has merely added the
descriptive word ‘porn’ to Complainant's registered BARBIE mark, and the
addition of this word does not create a notable distinction between
Complainant's mark and the domain name currently in dispute.”); see also Am.
Online, Inc. v. GSD Pty. Ltd., FA 169083 (Nat. Arb. Forum Sept. 2, 2003)
(finding that the <icqporn.com>
domain
name was confusingly similar
to the complainant's ICQ mark under Policy ¶ 4(a)(i)).
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
contends that Respondent does not have rights or legitimate interests in the
<penthouseporn.com> domain name.
Complainant’s assertion establishes a prima facie case. The burden shifts to Respondent to
demonstrate that it does have rights or legitimate interests in the domain
name. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
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”). The Panel will analyze
whether Respondent could meet its burden of establishing rights or legitimate interests
for purposes of Policy ¶ 4(a)(ii).
Complainant
maintains that Respondent is using the disputed domain name for commercial
purposes by directing Internet users to competing websites that sell content
and advertising and link visitors to other competing adult content
websites. Because Respondent has not
submitted a response, the Panel accepts Complainant’s description of
Respondent’s website as accurate and true.
See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”). The Panel concludes
that such use is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See 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 Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
Moreover,
Respondent has not provided evidence to suggest that it is commonly known by
the disputed domain name. In fact,
Respondent’s WHOIS information states that Respondent is known as “Wright,
Dave.” Without evidence from Respondent
to assert that it is commonly known by the disputed domain name, the Panel
infers that Respondent is not commonly known by the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the panel to draw adverse inferences from the
respondent’s failure to reply to the complaint). Therefore, the Panel concludes that Respondent has not
established rights or legitimate interests under Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent
is not commonly known by the [<awvacations.com>] domain name.”); see
also Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent uses the <penthouseporn.com> domain name
with the purpose of usurping website visitors from Complainant’s website to
Respondent’s for Respondent’s commercial gain.
The Panel holds that Respondent’s diversionary use of a confusingly
similar domain name to commercially benefit from click-through fees is evidence
of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where the respondent registered and
used a domain name confusingly similar to the complainant’s mark to attract
users to a website sponsored by the respondent); see also 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.’”).
Moreover,
Complainant contends that Respondent has been offering to sell the disputed
domain name registration since at least January 11, 2005. The Panel holds that Respondent’s offer to
sell a domain name registration that is confusingly similar to Complainant’s
famous PENTHOUSE mark is evidence of bad faith use and registration under
Policy ¶ 4(b)(i). See CBS Broad. Inc. v. Worldwide Webs, Inc.,
D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the
offer or sale of domain names, without more, such as to justify a finding of
bad faith under the Policy. However, the fact that domain name registrants may
legitimately and in good faith sell domain names does not imply a right in such
registrants to sell domain names that are identical or confusingly similar to
trademarks or service marks of others without their consent”); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <penthouseporn.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: August 18, 2005
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