L.F.P., Inc. v. MSR Marketing
Claim
Number: FA0508000540023
Complainant is L.F.P., 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 MSR Marketing (“Respondent”) rackham
house, rh20 2eu, West Sussex, Great Britain.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hustlerathome.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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 August
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 16, 2005.
On
August 14, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the <hustlerathome.com>
domain name is registered with Melbourne It, Ltd. d/b/a Internet Names
Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names
Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a
Internet Names Worldwide 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
August 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 8, 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@hustlerathome.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 16, 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 <hustlerathome.com>
domain name is confusingly similar to Complainant’s HUSTLER mark.
2. Respondent does not have any rights or
legitimate interests in the <hustlerathome.com> domain name.
3. Respondent registered and used the <hustlerathome.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
L.F.P., Inc., is a worldwide provider of adult entertainment, whose products
and services include magazines, videotapes, DVDs, clothing, novelties, toys and
other consumer products. Complainant
offers these products under the HUSTLER mark (Reg. No. 2,001,594 issued
September 17, 1996), which is registered with the United States Patent and
Trademark Office (“USPTO”).
Respondent
registered the <hustlerathome.com> domain name on September 6,
2001. Respondent’s domain name resolves
to a website that features Complainant’s trademark and purports to sell
Complainant’s products.
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 has
established rights in the HUSTLER mark through registration with the
USPTO. See 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.”); see also 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.”).
Complainant
contends that Respondent’s <hustlerathome.com> domain name is
confusingly similar to Complainant’s mark.
The disputed domain name features Complainant’s entire HUSTLER mark and
adds the generic terms “at” and “home.”
Panels have long held that the addition of generic terms to an established
mark fails to sufficiently distinguish the disputed domain name pursuant to
Policy ¶ 4(a)(i). 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 the complainant combined with a generic word or
term); 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent lacks rights or legitimate interests in the disputed
domain name. Complainant’s assertion
creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the
burden of proof onto Respondent. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (stating that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”). Because Respondent failed to respond, the
Panel infers that no rights or legitimate interests exist pursuant to Policy ¶
4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
Respondent is
using the confusingly similar domain name to engage in the unauthorized selling
of Complainant’s products. Such
unauthorized and competing use of Complainant’s mark is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Caterpillar
Inc. v. Huth, FA 169056 (Nat. Arb. Forum
Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because
Respondent competes with Complainant by selling Complainant's used parts
without a license from Complainant to do so.”); see also G.D.
Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002)
(finding the respondent’s use of the disputed domain name to solicit
pharmaceutical orders without a license or authorization from the complainant
does not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i)).
Furthermore, no
affirmative evidence has been set forth showing that Respondent is commonly
known by the <hustlerathome.com> domain name. As a result, Respondent has failed to show
evidence of rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <hustlerathome.com> domain name to operate a website
that sells Complainant’s products without authorization.. Such use constitutes a disruption of
Complainant’s business and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Fossil,
Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the
<fossilwatch.com> domain name from the respondent, a watch dealer not
otherwise authorized to sell the complainant’s goods, to the complainant); see
also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508
(Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX
mark to sell Complainant’s products represents bad faith use under Policy ¶
4(b)(iii).”).
Furthermore,
Respondent’s use of the confusingly similar disputed domain name to operate a
website featuring Complainant’s mark and offering Complainant’s goods and
services for sale will likely confuse Internet users as to Complainant’s
sponsorship of or affiliation with the resulting website. Such commercial use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See World
Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001)
(concluding that the respondent registered and used the <wwfauction.com>
domain name in bad faith because the name resolved to a commercial website that
the complainant’s customers were likely to confuse with the source of the
complainant’s products, especially because of the respondent’s prominent use of
the complainant’s logo on the site); see also Hunter
Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum
Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain
name to sell the complainant’s products without permission and mislead Internet
users by implying that the respondent was affiliated with the complainant).
Finally,
Respondent registered the <hustlerathome.com> domain name with
actual or constructive knowledge of Complainant’s rights in the HUSTLER
mark. Complainant’s registration of the
HUSTLER mark with the USPTO confers constructive knowledge of Complainant’s
rights in the mark upon Respondent. See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072). Furthermore, due to the obvious connection between the goods and
services offered on Respondent’s website and the business in which Complainant
engages, the Panel infers that Respondent had actual knowledge of Complainant’s
rights in the HUSTLER mark at the time of registration. Registration of a confusingly similar domain
name with actual or constructive knowledge of Complainant’s rights constitutes
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between the complainant’s mark and the content advertised on
the respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
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 <hustlerathome.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 28, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum