General Media Communications, Inc. v.
Dimitri Mariettakis
Claim
Number: FA0508000540025
Complainant, General Media Communications, Inc. (“Complainant”),
is represented by Joshua R. Bressler of General Media Communications, Inc. c/o Penthouse Media Group Inc., Two Penn Plaza, 11th Floor,
Suite 1125, New York, NY 10121.
Respondent is Dimitri Mariettakis
(“Respondent”), GPO Box 115, Brisbane, 4001 AU.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <australianpenthouse.com> and <australianpenthousepets.com>,
registered with Enom, Inc.
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.
Hon.
Ralph Yachnin 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 15, 2005.
On
August 12, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the <australianpenthouse.com> and <australianpenthousepets.com>
domain names are registered with Enom, Inc. and that Respondent is the current
registrant of the names. Enom, Inc. has
verified that Respondent is bound by the Enom, 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
August 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
6, 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@australianpenthouse.com and
postmaster@australianpenthousepets.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 15, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Ralph Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <australianpenthouse.com>
and <australianpenthousepets.com> domain names are confusingly
similar to Complainant’s PENTHOUSE and PENTHOUSE PETS marks.
2. Respondent does not have any rights or
legitimate interests in the <australianpenthouse.com> and <australianpenthousepets.com>
domain names.
3. Respondent registered and used the <australianpenthouse.com>
and <australianpenthousepets.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
General Media Communications, Inc., is the owner of the famous and
internationally recognized PENTHOUSE mark.
Since 1969, Complainant has published “Penthouse,” an adult
entertainment magazine that has been distributed throughout the United States
and internationally. The magazine has
generated millions of dollars in sales and Complainant has leveraged that
popularity to expand the PENTHOUSE mark to cover other products and services,
including the provision of online adult entertainment services, located at
<penthouse.com>. The website
hosted a monthly average of 11 million visits for the months of April 2005, May
2005, and June 2005.
Complainant
holds numerous registrations for its PENTHOUSE mark with the United States
Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 880,922 issued
November 16, 1969). Complainant has
invested substantial sums of money in developing and marketing its products and
services using the PENTHOUSE mark.
Likewise, Complainant holds numerous registrations for its PENTHOUSE
PETS mark with the USPTO (E.g., Reg. No. 1,289,736 issued September 8,
1982). Complainant has invested
substantial sums of money in developing and marketing its products and services
using the PENTHOUSE and PENTHOUSE PETS marks.
Respondent
registered the <australianpenthouse.com> and <australianpenthousepets.com>
domain names on June 23, 2002. Both
domain names resolve to active adult-content websites, which Respondent has
been using to advertise its own weekly adult-content publication.
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.
Panels have
consistently held that a complainant’s registration of its mark with the USPTO
is sufficient to establish the complainant’s rights in that mark. In Innomed
Techs., Inc. v. DRP Services, FA 221171
(Nat. Arb. Forum Feb. 18, 2004), for example, a panel held that, “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” Id. Likewise, in Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003), a
panel held, “Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”
Id. Thus, the Panel
concludes that Complainant’s registrations of its PENTHOUSE and PENTHOUSE PETS
mark with the USPTO are sufficient to establish Complainant’s rights in the mark.
Complainant
argues that the <australianpenthouse.com> domain name is
confusingly similar to Complainant’s PENTHOUSE mark, as it wholly incorporates
Complainant’s mark and merely adds the geographically descriptive term
“australian.” Likewise, Complainant
argues that the <australianpenthousepets.com> domain name is
confusingly similar to Complainant’s PENTHOUSE PETS mark, as it adds the same
geographically descriptive term. The
Panel holds that the addition of a geographically descriptive term to Complainat’s
marks is insufficient to distinguish Respondent’s domain name from
Complainant’s mark. See VeriSign,
Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing
similarity between the complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where the
respondent added the word “India” to the complainant’s mark); see also JVC
Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the
domain name registered by the respondent, <jvc-america.com>, is
substantially similar to, and nearly identical to the complainant's JVC
mark).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
disputed domain names. The Panel holds
that Complainant’s assertion establishes a prima facie case and shifts
the burden to Respondent. To meet its
burden, Respondent must provide the Panel with evidence that it does have
rights or legitimate interests in the disputed domain names. 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 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).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
avers that Respondent is not commonly known by the disputed domain names. In fact, Respondent’s WHOIS information for
both domain names indicates that Respondent is known as “Dimitri Mariettakis.” Because Respondent did not provide the Panel
with a response, the Panel accepts Complainant’s allegation that Respondent is
not commonly known by the disputed domain names as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence). Because Respondent did not provide any
evidence to prove that it is commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii), the Panel infers that Respondent does not have
rights or legitimate interests in the <australianpenthouse.com>
and <australianpenthousepets.com> domain names. See 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); 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).
Additionally,
Complainant argues that Respondent is using the disputed domain names to divert
Internet users looking for Complainant’s website to Respondent’s website for
Respondent’s commercial gain.
Complainant provides evidence that Respondent is using the domain names
to advertise his competing adult-oriented services. The Panel finds that such diversionary use is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where the
respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
claims that Respondent is capitalizing on the goodwill associated with Complainant’s
marks by using the disputed domain names to advertise his own adult-oriented
services and publication. The Panel
holds that such capitalization disrupts Complainant’s business and is evidence
of bad faith use and registration under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5,
2001) (finding that, given the competitive relationship between the complainant
and the respondent, the respondent likely registered the contested domain name
with the intent to disrupt the complainant's business and create user
confusion); 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).”).
Complainant
argues that Respondent is using the disputed domain names to divert Internet
users to websites that feature services similar to those that Complainant
provides and to profit from diverting such Internet users. The Panel holds that Respondent is creating
a likelihood of confusion for its own commercial gain. Thus, the Panel concludes that such use is
evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See 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); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark).
Moreover,
Complainant contends that Respondent had constructive knowledge of
Complainant’s rights in the PENTHOUSE and PENTHOUSE PETS marks at the time
Respondent registered the disputed domain names. Panels have held that a complainant’s registration of a mark with
the USPTO confers constructive knowledge on respondents. 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.”). The Panel holds
that Respondent had constructive knowledge of Complainant’s rights in the marks
at the time of registration and that such knowledge is evidence of bad faith
use and registration under Policy ¶ 4(a)(iii).
See 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 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)
(finding that the respondent had actual and constructive knowledge of the complainant’s
EXXON mark given the worldwide prominence of the mark and thus the respondent
registered the domain name in bad faith).
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 <australianpenthouse.com> and <australianpenthousepets.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
September 28, 2005
National Arbitration Forum
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