General Media Communications, Inc. v. Web
Master c/o AAA Hosting 101
Claim
Number: FA0508000540027
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 Web Master c/o AAA Hosting 101 (“Respondent”), 300 South Worcester Rd., Westboro,
MA, 01581.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <penthousepersonals.com>, registered with Moniker
Online Services, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin 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 14, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the <penthousepersonals.com>
domain name is registered with Moniker Online Services, Inc. and that
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, 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 17, 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@penthousepersonals.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 12, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Sandra Franklin 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 <penthousepersonals.com>
domain name is confusingly similar to Complainant’s PENTHOUSE mark.
2. Respondent does not have any rights or
legitimate interests in the <penthousepersonals.com> domain name.
3. Respondent registered and used the <penthousepersonals.com>
domain name 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.
Respondent
registered the <penthousepersonals.com> domain name on October 12,
2004. The domain name resolves to a
website featuring links to online dating services, including some with adult
content and adult chat line services.
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 mark with the USPTO
are sufficient to establish Complainant’s rights in the mark.
Complainant
contends that the disputed domain name is confusingly similar to its PENTHOUSE
mark, as the disputed domain name wholly incorporates Complainant’s mark and
adds the common term “personals.” The
Panel holds that the addition of a common term is insufficient to distinguish
Respondent’s domain name from Complainant’s mark. 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.
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. 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 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 name. 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
it does not have rights or legitimate interests in the <penthousepersonals.com>
domain name. 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 name to divert
Internet users looking for Complainant’s website to Respondent’s website that
features links to online dating services and adult chat line services. The Panel infers from the evidence provided
by Complainant that Respondent commercially benefits from these links whenever
Internet users click on them. 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
argues that Respondent is using the disputed domain names to divert Internet
users to websites that features links to services similar to those that
Complainant provides and to profit from diverting such Internet users to
various websites. 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 mark at the time Respondent registered
the disputed domain name. 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 mark 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 <penthousepersonals.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
September 19, 2005
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