General Media Communications, Inc. v.
Daniel Kunkel
Claim Number: FA0508000544991
PARTIES
Complainant
is General Media Communications, Inc. (“Complainant”),
represented by Joshua R. Bressler, Two Penn Plaza, Suite 1125, New
York, NY 10121. Respondent is Daniel Kunkel (“Respondent”), 14150 NE
20th St. Suite F1, Bellevue, WA 98007.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <penthouse-pet.com>,
registered with Schlund+Partner Ag.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 18, 2005.
On
August 22, 2005, Schlund+Partner Ag confirmed by e-mail to the National
Arbitration Forum that the <penthouse-pet.com>
domain name is registered with Schlund+Partner Ag and that the Respondent is
the current registrant of the name. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
13, 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@penthouse-pet.com by e-mail.
A
timely Response was received and determined to be complete on September 13,
2005.
A
Complainant’s Reply to Respondent’s Response was submitted on September 19,
2005. In addition Respondent submitted a Supplemental Response to Complainant’s
Addendum on September 21, 2005. Both of the additional submissions were
received in a timely manner according to The Forum’s Supplemental Rule Nr. 7.
On September 22, 2005 pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that the Complaint
is based on Complainant’s famous and internationally recognized PENTHOUSE and
PET trademarks and trademark registrations.
Since 1969, Complainant or its licensees, affiliates, parent
corporations or predecessors in interest have published Penthouse, the adult entertainment magazine, and distributed it
throughout the United States and internationally. Since its first publication,
and by virtue of its near-unrivaled popularity, Penthouse has generated many millions of dollars in sales. Since
that time, Complainant has used the famous and internationally recognized PET
OF THE MONTH and PET OF THE YEAR trademarks for features in Penthouse magazine and elsewhere. As a
result, the Complainant and the public have continuously used the term
PENTHOUSE PETS to refer to models featured in Penthouse. Complainant subsequently registered the PENTHOUSE PETS
trademark in 1984.
In addition, Complainant
contends that he has leveraged the popularity of Penthouse magazine to expand the PENTHOUSE brand into numerous
other product and services segments, including the provision of online adult
entertainment services at its PENTHOUSE branded website, accessible at
<www.penthouse.com>. Complainant’s PENTHOUSE branded website is extremely
popular among Internet users and visited frequently. The Company’s PENTHOUSE
branded website, www.penthouse.com, hosted a monthly average of 12.3 million
visits for the months of May 2005, June 2005, and July 2005.
Complainant further contends that it
exclusively owns the following valid and subsisting PENTHOUSE and PET
trademarks and service marks, and registrations issued by the United States
Patent and Trademark Office (hereinafter, the “PENTHOUSE and PET Marks”) (See
Rule 3(b)(viii)): PENTHOUSE; PENTHOUSE PETS; PET OF THE MONTH; PET OF THE YEAR;
PENTHOUSE FORUM; PENTHOUSE LETTERS; THE GIRLS OF PENTHOUSE; THE PENTHOUSE CLUB;
PENTHOUSE MENS CLUB; PENTHOUSE SELECTION; PENTHOUSE.COM: PENTHOUSEMAG.COM:
PENTHOUSE COMIX: PENTHOUSE MEN’S ADVENTURE COMIX; and PETNET, Several of the registrations for the
PENTHOUSE and PET marks are incontestable in accordance with Sections 15 and
33(b) of the Lanham Act, 15 U.S.C. Sections 1065 and 1115(b). Furthermore, Complainant
owns over a hundred international trademark registrations and applications for
registration for its PENTHOUSE and PET marks, including many containing
PENTHOUSE PET(S).
According to Complainant it has used its trademarks
continuously and extensively in interstate and international commerce in
connection with the advertising and sale of Complainant’s products and services
many years prior to Respondent’s registration.
Complainant has invested substantial sums of money in developing and
marketing its products and services using the PENTHOUSE marks. Furthermore,
Complainant has sold and continues to sell many millions of dollars worth of
goods and services under and in connection with the PENTHOUSE and PET marks. As
a result of Complainant’s long, continuous and extensive use and promotion of
its famous PENTHOUSE and PET marks on and in connection with products and
services provided in interstate and international commerce, Complainant has
built up and owns valuable goodwill which is symbolized by the PENTHOUSE and
PET marks. In addition, the Penthouse domain names, including
<penthousepet.com> and <penthousepets.com>, have been in continual
use by Complainant. Accordingly, the PENTHOUSE and PET marks and the PENTHOUSE
branded website are internationally well-known and readily associated
exclusively with Complainant as their exclusive source.
Decades subsequent to Complainant’s
adoption and first use of the PENTHOUSE and PET marks, and no doubt to trade
off of the valuable and extensive goodwill developed and represented by the
PENTHOUSE and PET marks, Respondent registered <penthouse-pet.com>. This
domain name registration came to Complainant’s attention on or about January 1,
2005, whereupon Complainant discovered that Respondent was using the <penthouse-pet.com>
domain to provide links to a variety of Internet services including
adult-content services.
Respondent’s unauthorized use of the
PENTHOUSE and PET marks to market and promote Internet services including adult
content services is not merely likely, but certain,
to cause confusion in the minds of members of the relevant trade and
public, causing them to believe mistakenly that Complainant has licensed,
authorized, sponsored or otherwise affiliated itself with Respondent and its
goods and services, when this in fact is not the case. Respondent had in fact
deliberately registered the <penthouse-pet.com> domain name in bad
faith with the calculated intent to (a) illegally capitalize, benefit from and
trade on the international reputation and substantial goodwill built up and
represented by the PENTHOUSE and PET marks by providing links to Internet
services including adult-content services, a clear and flagrant violation of
Complainant’s exclusive PENTHOUSE and PET trademark rights; (b) prevent Complainant
from using the <penthouse-pet.com> domain name in connection with
its own business; and (c) disrupt Complainant’s business.
Complainant contends that he notified
Respondent on April 5, 2005, Complainant via e-mail and postal mail sent to the
address identified in the WHOIS record that Registrant’s use of the subject
domain name dilutes the distinctive quality of the PENTHOUSE Marks, violates
the Federal Trademark Dilution Act and the Federal Anticybersquatting Consumer
Protection Act, and constitutes federal and state trademark infringement,
unfair competition, and deceptive trade practices. Complainant also requested that Respondent agree to transfer
immediately the <penthouse-pet.com> domain name to
Complainant.
On April
5, 2005 and April 7, 2005 Respondent suggested that the Complainant make a
monetary offer to purchase the domain name. Complainant offered Respondent
fifty dollars ($50) to compensate Respondent for any out-of-pocket expenses
incurred for its registration. Respondent refused this offer and Complainant’s
request to transfer the domain name.
On June 15, 2005, Complainant called
Respondent via the phone number identified in the WHOIS record. Complainant
offered two hundred dollars for the domain name and informed Respondent that
Complainant would institute a domain name dispute resolution proceeding if he
did not transfer the domain name. Respondent inquired if the UDRP filing fee
exceeded one thousand dollars and Respondent then refused Complainant’s two
hundred dollar offer upon learning that the fee did exceed $1,000.
As a result Respondent’s <penthouse-pet.com>
domain name is confusingly similar to Complainant’s PENTHOUSE and PET marks. A
determination that a domain name is confusingly similar under the Policy does
not require confusion in a trademark infringement sense; rather, the standard
is whether the domain name is similar enough in light of the purpose of the
Policy to justify moving on to the other elements of a claim for cancellation
or transfer of a domain name. For the
purposes of the Policy, when a domain name includes a Complainant’s registered
mark regardless of the other terms in the domain name, such inclusion is
sufficient to establish confusing similarity. In the present action,
Respondent’s <penthouse-pet.com> domain name not only include the
PENTHOUSE trademark, but also the <penthouse-pet.com> domain is
virtually identical to the PENTHOUSE PETS trademark. As such, Complainant
readily satisfies the “confusingly similar” element.
Additionally Complainant contends that he
owns the PENTHOUSE PETS trademark and uses the <penthousepet.com> and
<penthousepets.com> domain names to promote its PENTHOUSE branded
website. The Respondent’s <penthouse-pet.com> domain name is
confusingly similar to the Complainant’s PENTHOUSE PETS trademark and the
<penthousepet.com> and the <penthousepets.com> domain names. As
such, the Respondent’s <penthouse-pet.com> domain name will usurp
Complaint’s visitors who misspell the Complainant’s trademark or domain names
by inserting a hyphen.
As a further result Respondent has no
legitimate rights or interests in the <penthouse-pet.com> domain
name. Complainant having used one or more of the PENTHOUSE and PET marks
continuously for decades, Respondent cannot establish valid rights in a
PENTHOUSE or a PENTHOUSE PET designation. Accordingly, Respondent has not used
the penthouse-pet.com domain name in connection with the bona fide offering of
goods or services and Respondent acknowledged that the domain name is more
valuable to the Complainant than to the Respondent.
Additionally, Respondent is using the
subject domain name to trade on Complainant’s PENTHOUSE and PET marks for
commercial purposes, namely to usurp Complainant’s visitors to expose them to
banner advertisements and to redirect them to various internet businesses.
According to Complainant this is the quintessential specimen of commercial
exploitation.
As a final result Respondent has
registered and is using the <penthouse-pet.com> domain name in bad
faith for the impermissible purposes of usurping website visitors from
Complainant’s website for its own commercial gain, obstructing Complainant’s
own use of the subject domain, and disrupting Complainant’s business, and with
constructive and actual knowledge of Complainant’s exclusive and extensive
PENTHOUSE and PET marks and the goodwill represented thereby.
Additionally, Respondent’s bad faith is
further evidenced from his offer to sell the domain name for a price that
exceeds his out-of-pocket expenses. Respondent suggested Complainant make an
offer for the domain name and Respondent refused Complainant’s two hundred
dollar ($200) offer after learning that the UDRP filling fee exceeds one
thousand dollars ($1,000). Respondent’s discussion of the point with the
Complainant evidences not that the Respondent had a right to the domain name
but rather that Respondent thought he should be able to extract more money from
Complainant for the requested transfer because seeking relief via UDRP would
cost the Complainant hundreds of dollars more than the money it was willing to
pay Respondent having been pushed to offer it.
Based on the foregoing, Complainant
finally requests that this Administrative Panel determine that: (a) the <penthouse-pet.com>
domain name is confusingly similar to Complainant’s PENTHOUSE and PET
marks; (b) Respondent has no legitimate interests or rights in or to the <penthouse-pet.com>
domain name; (c) Respondent registered the <penthouse-pet.com> domain
name in bad faith for the impermissible purposes of usurping website visitors
from Complainant’s website for its own commercial gain, obstructing
Complainant’s own use of the subject domain name, and disrupting Complainant’s
business, all with constructive and actual knowledge of Complainant’s exclusive
and extensive PENTHOUSE and PET marks and the goodwill represented thereby; and
(d) Respondent has used the <penthouse-pet.com> domain name in bad
faith for the impermissible purposes of usurping website visitors from
Complainant’s website for its own commercial gain, obstructing Complainant’s
own use of the subject domain, and disrupting Complainant’s business, all with
constructive and actual knowledge of Complainant’s exclusive and extensive
PENTHOUSE and PET marks and the goodwill represented thereby.
Respondent
denies each and every allegation made by Complainant in its Complaint,
especially that the domain name at issue is identical or confusingly similar to
a trademark or service mark in which Complainant alleges it has rights.
Respondent further denies that the domain name at issue has been used in bad
faith. Respondent asserts rights and has demonstrated a legitimate business
interest in the contested domain name. Respondent finally contends that
Complainant’s Complaint was brought in bad faith by Complainant for the
purposes of reverse domain name hijacking and in order to harass Respondent.
On
October 9, 2003 Respondent registered <Fun-Puzzles.com> a website which
eventually was created using a custom proprietary Content Management System
(CMS). The goal of this system is to provide an easy method of creating
websites.
During
August through October 2004, Respondent registered hundreds of domains for
future development, including a number of domains for pets and pet owners,
including, but not limited to, <Supplies-Pet.com>,
<Dog-Calendar.com>, <K9Toys.com>, and
<BreedAnimals.com>.
In
October 2004 Respondent hired a consultant, Barbara Bowen to assist in normal
business as well as help in developing the content and the CMS. One of her
tasks included organizing and renaming thousands of “stock” photographs for use
on various websites including <penthouse-pet.com>. A letter from Ms. Bowen is provided as
proof of her website development activities occurring prior to Respondent’s
contact from Complainant. Invoices from Ms. Bowen detail the transactions.
On October 21, 2004 Respondent registered the <penthouse-pet.com> domain name in order to provide content for owners of small
pets in apartments, townhouses and penthouses. The registered <penthouse-pet.com> domain name as well as almost all of the
others were used in internet commerce in order to monetize the sites to defray
registration costs during development, and provide valuable information and
links for visitors with DomainSponsor. DomainSponsor is an internet parking
service provider that automatically optimizes the information and content
displayed to maximize the profitability of each domain.)
On
April 5, 2005 Respondent received an e-mail from Talia T. Page representing
Complainant complaining about the unauthorized DomainSponsor content on <penthouse-pet.com>. The DomainSponsor content on <penthouse-pet.com> did not in any way resemble the content
found on the homepage of <Penthouse.com> making it virtually impossible
that anyone would even consider that Complainant had licensed, authorized,
sponsored or was otherwise affiliated with Respondent's website. At no time has
Respondent ever had any intent to infringe on the “Penthouse” trademark for
adult services, air fresheners, cigars, or other goods and services associated
with Complainant.
Minutes
later, on April 5, 2005 Respondent then made a good faith offer to resolve the
domain name dispute with Complainant. In Respondent’s answer, he stated: “Before I put time and energy into
checking how protectable the name might be for my purposes as a non adult
content site or parked page, I wonder if you would be interested in buying the
domain for a nominal sum... Much less
than either of us would pay in time and expenses.”
On
April 5th, 6th and
7th, Respondent, not hearing from
Complainant, took time and energy to research the situation and determined that
a website for pet owners was a completely legal use for the domain name <penthouse-pet.com>.
Penthouse
International has a trademark on the term “Penthouse Pets” from 1981, but only
for Goods and Services related to Air Fresheners. Many other “Penthouse Pets” trademarks had died per the
information displayed at www.uspto.gov. Furthermore, a visit to the
<Penthouse.com> website verified that the term “Penthouse Pet” or
“Penthouse Pets” was apparently not trademarked.
Respondent
believes that a site for pet owners living in small homes, apartments,
townhouses and penthouses is a legal, legitimate and fair use of the domain
name <penthouse-pet.com>
as it would not infringe
upon Complainant’s trademark rights for adult content sites or other product
categories covered in their many trademarks to the best of Respondent's
knowledge. Respondent therefore decided to erect such a site for pet owners.
Respondent used the pictures Barbara Bowen had organized, as well as a new and
improved version of the proprietary CMS system he had developed to erect the
site for pet owners. Please note that the website has special appeal to pet
owners in that many of the pictures are randomly displayed making it fun to
view the same page repeatedly, a feat only possible through the organizational
efforts of Barbara Bowen.
On
April 7th, Respondent heard from Complainant with
a $50 offer for the domain name.
By
April 11, 2005 Respondent in an incredible display of good faith, had largely
completed the site for pet owners, with the intent that such a detailed and
informative site would clearly communicate to the Complainant that the site
would not display adult material henceforth.
On
April 17, 2005 Talia T. Page again contacted Respondent to inquire about their
offer, and received the following reply clearly indicating Respondent's intent
to keep the domain for site for pet owners: “Unfortunately, I am not prepared to accept your offer at
this time. I believe penthouse-pet.com will make a wonderful website for pet
owners in small homes, and intend to take steps to keep the domain for that
purpose. ...”
On
June 15, 2005, Respondent spoke with Joshua R. Bressler, General Counsel for
Complainant. During the conversation Mr. Bressler offered $200 for the domain.
After determining that Complainant’s next action would be use of the UDRP to
arbitrate this matter, a path that included little or no additional costs nor
liability for the Respondent, instead of
going directly to court the Respondent refused the
offer. Respondent then
reaffirmed his intent to keep the site for animal pet owners, and verified that
Mr. Bressler was aware of the changes in website content on <penthouse-pet.com>.
The basis for this decision and reasoning
is further born out when examining the invoices from Sandi Meuir another
BioWaves consultant who wrote additional material for the Penthouse-Pet.com
website in April and May, 2005. Respondent invested
thousands of dollars developing the Penthouse-Pet.com including hundreds of
dollars of out-of-pocket domain in April and May, and would not sell it for
$200 in June.
Therefore,
and based on the facts of the decision, Complainant’s conclusion in his complaint
is harassing, baseless, unfounded, irresponsible, and quite possibly libelous.
Complainant’s
claims that <penthouse-pet.com>
may be causing confusion
in any measurable way simply does not stand up under scrutiny. During the
period of time <penthouse-pet.com>
was connected with
DomainSponsor from October 2004 to early April 2005, a total of 7 visitors were
recorded by DomainSponsor. As <penthouse-pet.com>
starts to get more
visitors, it will solely be by Respondent’s marketing efforts and not from any
association with the generic terms claimed by Complainant.
Respondent
finally contends that Complainant has repeatedly failed to take steps to
protect the term “Penthouse Pet” or “Penthouse Pets.” Furthermore Complainant
clearly states they became aware of the adult content on <penthouse-pet.com> around January 1, 2005, and yet they did
not even e-mail Respondent until April 5, 2005 to request that the content be
removed. The website <penthousepets.net> has displayed adult content
since approximately 1999. The website, “<penthousepet.net>” still
contained links to adult sites not related to Complainant as recently as
September 13, 2005.
Respondent
contends that the mark claimed by the Complainant arises from common law and it
does have the presumption of validity, inherent distinctiveness or a
constructive notice presumption; consequently, Complainant has the burden of
proof to establish with a preponderance of evidence that its mark has acquired
distinctiveness or secondary meaning before any rights under common law are
enforceable. Respondent is of the view that Complainant has failed to provide
evidence within the Complaint of any established secondary meaning such that
consumers are likely to associate penthouse pet solely with the Complainant.
Respondent
further contends that an offer during negotiations for the sale of the domain
name is not evidence of bad faith pursuant to Policy . Furthermore the phrase
penthouse pet is compromised entirely with generic terms to which Complainant
cannot maintain exclusive rights.
Finally, Respondent contends that he is using the domain name, <penthouse-pet.com> in a literal way, for pets and pet
owners in small homes, a legal, legitimate and fair use of the generic terms,
Penthouse and Pet. Furthermore, this use does not infringe on Complainant’s
company, goods, services, or trademarks in any way. This literal use of the
generic terms does not misleadingly divert consumers or tarnish the trademark
or service marks at issue.
Respondent
was developing a Content Management System and organizing photos for the
website since before becoming aware of the Complaint. He was contacted by the
Complainant first, and has shown no bad faith in attempting to profit from the
domain name to the detriment of the Complainant. Respondent has not registered
the domain name to prevent the Complainant from using the generic term, nor has
the Respondent engaged in such a pattern. Respondent has not registered the
domain name to in any way disrupt the business of the Complainant. Respondent
has not registered the domain name to confuse the Complainant’s customers and/or the general public about the
source, sponsorship, affiliation or endorsement of the informational pet
website.
Based
upon the foregoing, Respondent finally requests the Administrative Panel to
deny Complainant’s request to transfer the penthouse-pet.com domain name to
Complainant.
In the Complainant’s Reply to the
Respondent’s Response, Complainant contends that Respondent has failed to
introduce any evidence whatsoever which conclusively establishes that he
registered the subject domain name with the intent of providing content to
owners of small pets. As such, Respondent did not and does not have a
legitimate business interest in the subject domain name. At the time when
Complainant first contacted Respondent about the illegal use of the subject
domain name on April 5, 2005, there was no content provided on the subject
domain relating to pets, or anything else for that matter. Rather, the subject
domain provided links to a variety of Internet services including adult-content
services. Complainant contends that it was not until after he contacted
Respondent that Respondent removed the links to adult-content services and
added content relating to pets. Respondent registered the subject domain name
on October 21, 2004. Because non-adult content was not added to the domain
until after Complainant complained to Respondent (and after six months had
expired), it is clear Respondent did not register the subject domain name for
the alleged legitimate business purpose of providing content to owners of small
pets. Due to Respondent’s statements in its Response it is evident for
Complainant, that Respondent registered the subject domain with the intention of
profiting from its use in connection with adult-content links without
Complainant’s consent.
Complainant
further contends, that Respondent is using the subject domain name to trade on
Complainant’s PENTHOUSE and PET marks for commercial purposes, namely, to usurp
Complainant’s visitors and redirect them to various adult-content internet
businesses. Otherwise, why did Respondent include links to adult-content
services on his website which he claims was registered to provide content for
owners of small pets? For Complainant this is the quintessential specimen of
commercial exploitation. As a result Respondent has no rights or legitimate
interests in the subject domain name.
In addition the Respondent’s argument that
“DomainSponsor is an Internet parking service provider that automatically
optimizes the information and content displayed to maximize the profitability
of each domain” fails as it is Respondent’s responsibility to monitor the
activities, content and links on his domain and he cannot hide behind an
innocent third party’s actions.
Complainant contends that there was and
is no need for Respondent to include the PENTHOUSE mark in his domain name as
the term “penthouse” would seem to imply a large dwelling unit rather than a
small dwelling unit. As such, there were other terms clearly more applicable
and/or appropriate for Respondent to use to attract visitors to a website for
pet owners in small homes, i.e., “<apartmentpets.com>.” Instead,
Respondent chose to use the well-known, famous and internationally recognized
PENTHOUSE and PET marks for the purpose of diverting customers of Complainant
to Respondent’s website, capitalizing on the goodwill and reputation of
Complainant and its various trademarks and service marks and maximizing
the number of visitors to his website for financial gain. As a result
Respondent has failed to demonstrate a legitimate business interest in the
subject domain name and/or that he has any rights in the domain name. Further,
it is clear for Complainant Respondent’s site promote links to adult content on
its home page, which is more than sufficient to create a likelihood of
confusion in the minds of the public and violate Complainant’s exclusive
rights.
Complainant further states that it has
satisfied this requirement as the domain name <penthouse-pet.com>
is not merely confusingly similar to the PENTHOUSE and PET marks owned by
Complainant but, rather, virtually identical to the following marks owned by
Complainant: “PENTHOUSE PET” and “PENTHOUSE PETS” and the following domain
names owned by Complainant: “<www.penthousepet.com>” and
<www.penthousepets.com>.
Regarding Respondent’s allegations
Complainant’s “PENTHOUSE PETS” trademarks have died and that the terms
“Penthouse Pet” and “Penthouse Pets” are not trademarked, Complainant contends,
that the mark “PENTHOUSE PETS” is currently registered in the following
countries: Brazil, Japan, Spain, United Kingdom and the United States, and the
mark “Penthouse Pet” is currently registered in Switzerland. As such,
Respondent’s allegation that these trademarks have died and are not protected
is untrue. In addition the Policy does not require a trademark to be registered
by a governmental authority for such rights to exist. A person can claim common
law trademark or service mark rights.
Because Complainant has been using the PENTHOUSE and PET marks since
1969 and Respondent only registered the subject domain name in 2004,
Complainant has common law trademark rights in the PENTHOUSE and PET marks
which are superior to any rights Respondent could claim. As such, Complainant
has satisfied the requirement that the domain name be identical or confusingly
similar to a trademark or service mark in which the Complainant has rights in
order for the subject domain name to be transferred to Complainant. In this
regard the evidence is clear that the term “penthouse pet” is exclusively
associated with Complainant’s business as it refers to the models featured in Penthouse Magazine and has no other
meaning outside of Complainant’s business. As a result it is clear that
Complainant has proved that the subject domain name is not only confusingly
similar but identical to trademarks or service marks in which Complainant has
rights.
Regarding the bad faith argument it is
clear for Complainant that Respondent rejected the $200 offer because
Respondent was hoping to receive closer to the sum of $1,000 (since it was going to cost Complainant a minimum of
$1,000 to file a UDRP Complaint anyway). This evidences Respondent’s bad faith
in registering and using the subject domain name. Although tendering an offer
alone may not be evidence of bad faith, the fact that domain 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. As such,
Respondent’s actions as described above are sufficient to constitute bad faith.
Based on the above, it is clear for Complainant that Respondent registered the
subject domain name primarily for the purpose of selling it to Complainant for
valuable consideration in excess of Respondent’s documented out-of-pocket costs
directly related to the domain name and, as such, registered and is using the
domain name in bad faith.
Complainant contends that Respondent has
no legitimate business interest in the subject domain name and could have used
any other of a number of domain names to attract people to his website who are
pet owners in small homes. The only logical conclusion for using the term
“penthouse” in his domain name was to capitalize on the goodwill and reputation
of the PENTHOUSE and PET marks, attract people to his website and divert users
from Complainant’s websites for his own commercial gain by creating a
likelihood of confusion with the PENTHOUSE and PET marks as to the source,
sponsorship, affiliation and/or endorsement of Respondent’s website. This is
sufficient evidence to show bad faith on the part of Respondent in registering
and using the subject domain name.
Finally Complainant contends that
Respondent’s argument of reverse domain name hijacking is unfounded and without
merit. Reverse domain name hijacking occurs in cases where someone uses the
Policy in bad faith in an attempt to deprive a registered domain name holder of
a domain name, whereas Complainant has
a legitimate business interest in the subject domain name as it incorporates
the PENTHOUSE and PET marks exclusively owned by Complainant. Furthermore, Complainant has an interest in
preventing infringing uses of its marks and, as such, has an interest in
capturing this domain name. As such,
Respondent has failed to prove that Complainant has instituted these
proceedings in bad faith in an attempt to deprive it of its domain name.
Respondent denies in his Supplemental
Response to Complainant’s Addendum that it has failed to introduce any evidence
whatsoever which conclusively establishes that it registered the subject domain
name with the intent of providing content to owners of small pets.
Regarding the adult-content argument,
Respondent contends that non-adult content was not added after the Complainant
complained, but before at some unknown time, since the content was not added by
the Respondent. The adult content was immediately removed as soon as the
Respondent was made aware of the situation.
Furthermore Respondent has spent months
and tens of thousands of dollars and time preparing to efficiently produce
content for his many domains. It is a process that has taken many months and
has yet to be completed. This is supported by the fact that most of his other
domains continue to host DomainSponsor.com parked pages rather than the content
he intends for the pages. This does not, however, diminish in anyway his proven
efforts to raise content on all of these sites, both before and after April 5,
2005.
Respondent further denies any intention of utilizing Complainant’s
trademarks without consent to profit from the domain name. As a point of fact,
Respondent parked all of his unused domains with DomainSponsor.com, not just
particular domains that might benefit from their automatic optimization system,
and did not even realize there was a trademark issue until contacted by
Complainant. Furthermore, Respondent asserts his intention to be responsive to
Complainant’s trademarks as evidenced by his immediate removal of the
DomainSponsor.com linkage upon notification on April 5, 2005.
Respondent further contends that he did
not provide any links to adult-content sites, but instead only a link to
DomainSponsor.com so that they could provide content and links for the page.
The linkage to DomainSponsor.com was removed immediately upon learning of the
Complainant’s trademark concerns. Respondent has had a site up for small pet
owners since April 11, 2005. More than four months prior to Complainant filing
this complaint for the sole purpose of “Reverse Domain Name Hijacking.” The
current <penthouse-pet.com> clearly shows
that great time and effort has been expended in making it a real and viable
domain name for Respondent. Furthermore Complainant’s assertion that: “It is
clear that Respondent has no rights or legitimate interests in the subject
domain name” is therefore patently false. Respondent has created a valuable
site pertinent to the literal meaning of the generic phrase, “Penthouse Pet.”
Regarding Complainant’s argument that
Respondent could easily have chosen another domain name, Respondent contends,
that he firmly desires to keep the “<penthouse-pet.com>” domain name
for his intended use, especially as it is a complimentary term for owners of
small homes, often living in a city. A penthouse, although sometimes being
large, is normally located in the city, and usually does not have a yard for
pets to play, and is therefore completely appropriate for the Respondent’s
target market. Furthermore Complainant still
has not provided proof as to the common law trademark status for the generic
term “Penthouse Pet.”
Respondent
again
points out that Respondent’s clear and documented proof of his website for pet
owners which has been up and functional since April 11, 2005 and that does not
infringe on Complainant’s trademarks makes this a clear case of Reverse Domain
Name Hijacking. Respondent has had his pet website running for more than four
months prior to Complainant’s filing of this Reverse Domain Name Hijacking
case. This is clearly evidence of Complainant’s intent to use these proceedings
to wrest control of the <penthouse-pet.com> domain name
from Respondent.
Finally
Respondent contends that he is using the domain name in its literal
translation, for pets and pet owners in small homes, this use does not infringe
on Complainant’s company, goods, services, or tarnish their trademarks in any
way. Respondent was developing a Content Management System and organizing
photos prior to contact from the Complainant. Respondent does not want to sell
it to the Complainant, nor was the domain name registered for the primary
purpose of selling it to the Complainant. Respondent has not registered the
domain name to prevent the Complainant from using the term in business.
Respondent has not registered the domain name to in any way disrupt the
business of the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 PETS mark through registration of the mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,289,736
issued August 14, 1984). 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 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 contends that Respondent’s <penthouse-pet.com>
domain name is confusingly similar to Complainant’s PENTHOUSE PETS mark, as the
domain name merely removes the letter “s” from the end of Complainant’s mark,
replaces the space between the terms of the mark with a hyphen and adds the
generic top-level domain “.com.” The
Panel is of the view that such minor changes are insufficient to negate a
finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS
STORE mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it); see also Nintendo of Am.
Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding
<game-boy.com> identical and confusingly similar the complainant’s GAME
BOY mark, even though the domain name is a combination of two descriptive words
divided by a hyphen); see also Nev. State Bank v. Modern Ltd. – Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
As a result the Panel finds that the
domain name <penthouse-pet.com> is confusingly similar to the
Complainant’s mark cited above.
According to the majority of Panel
decisions this Panel also takes the position that while Complainant has the
burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of
production shifts to the Respondent to show by providing concrete evidence that
it has rights to or legitimate interests in the domain name at issue. See
Document Technologies, Inc. v.
International Electronic Communications, Inc., D2000-0270 (WIPO June 6,
2000); see also Inter-Continental
Hotel Corporation v. Khaled Ali
Soussi, D2000-0252 WIPO July 5, 2000); 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”); 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.”).
Complainant
asserts that Respondent’s <penthouse-pet.com> domain name resolves
to a website that features links to various commercial third-party websites,
through which Respondent presumably earns referral fees. The Panel finds that such diversionary use
of a confusingly similar domain name is neither a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); see also Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the disputed
domain names).
Furthermore, Complainant contends that
Respondent is neither commonly known by the disputed domain name nor authorized
to use any variation of Complainant’s PENTHOUSE PETS mark. Thus, the Panel
concludes that Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Moreover, the Panel interprets
Respondent’s willingness to sell the disputed domain name registration as
evidence that Respondent lacks rights and legitimate interests in the <penthouse-pet.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Am. Nat’l Red Cross v.
Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of
rights and legitimate interests in the domain name is further evidenced by
Respondent’s attempt to sell its domain name registration to Complainant, the
rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use).
The Panel finds Complainant has
established this element. Respondent has no rights or legitimate interests in
the disputed domain name.
Furthermore,
Complainant asserts that Respondent has used the disputed domain name to
operate a website that features links to various third-party commercial
websites, through which Respondent earns referral fees. Since the Panel finds that Respondent is
taking advantage of the confusing similarity between its domain name and
Complainant’s PENTHOUSE PETS mark to divert Internet users to various
third-party websites, the Panel is of the view that such commercial use
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain); see
also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21, 2002) (finding that the respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website).
Moreover,
the Panel finds that Respondent registered the <penthouse-pet.com> domain
name with constructive knowledge of Complainant’s
PENTHOUSE PETS mark due to Complainant’s registration of the mark with the
USPTO. The Panel is further of the view
that Respondent registered the domain name with actual knowledge of the mark
because the mark has acquired great fame, both nationally and internationally. Thus, the Panel concludes that Respondent’s
registration of a domain name that is confusingly similar to Complainant’s
mark, despite actual or constructive knowledge of Complainant’s rights in the
mark, is evidence of bad faith registration and use pursuant to 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 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); see also Nintendo
of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the
respondent, at the time of registration, had notice of the complainant’s
POKÉMON and PIKACHU trademarks given their extreme
popularity).
As a result the Panel finds that
Respondent has acted in bad faith both in registration and use of the disputed
domain name. Complainant has established this element.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <penthouse-pet.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard
Schanda, Panelist
Dated: October 12, 2005
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