California Exotic Novelties, LLC v.
Fantasia Party Store
Claim
Number: FA0509000552271
Complainant is California Exotic Novelties, LLC (“Complainant”),
represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria LLP, 42 Delaware Avenue Suite 300,
Buffalo, NY 14202. Respondent is Fantasia Party Store (“Respondent”) 149
Alaska Street, Staten Island, New York 10310.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <californiaexoticnovelties.net>,
registered with Go Daddy Software, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 2, 2005.
On
September 6, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <californiaexoticnovelties.net> domain
name is registered with Go Daddy Software, Inc. and that Respondent is the
current registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, 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
September 9, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 29, 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@californiaexoticnovelties.net
by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 6, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <californiaexoticnovelties.net>
domain name is identical to Complainant’s CALIFORNIA EXOTIC NOVELTIES mark.
2. Respondent does not have any rights or
legitimate interests in the <californiaexoticnovelties.net> domain
name.
3. Respondent registered and used the <californiaexoticnovelties.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
California Exotic Novelties, LLC, is a manufacturer and worldwide provider of
adult toys and novelties. Since its
founding in 1994, Complainant has continuously used the CALIFORNIA EXOTIC
NOVELTIES mark in association with the manufacture and sale of its
products. In addition, Complainant has
a pending trademark application (Serial No. 76,174,397 filed December 1, 2000)
with the United States Patent and Trademark Office (“USPTO”).
Respondent
registered the <californiaexoticnovelties.net> domain name on
April 17, 2005. Respondent’s domain
name resolves to a website that features the sale of Complainant’s products as
well as competing 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.
Under Policy ¶
4(a)(i), a complainant need not hold a registered trademark to establish rights
in a mark. Complainant’s CALIFORNIA
EXOTIC NOVELTIES mark has acquired secondary meaning through Complainant’s
continuous use of the mark in commerce since 1994 in connection with
Complainant’s adult novelty products.
Thus, Complainant has established common law rights in the CALIFORNIA
EXOTIC NOVELTIES mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the complainant’s trademark or service mark be
registered by a government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name [<keppelbank.com>]
in connection with its banking business, it has acquired rights under the
common law).
Complainant
contends that Respondent’s <californiaexoticnovelties.net> domain
name is identical to Complainant’s CALIFORNIA EXOTIC NOVELTIES mark. The disputed domain name contains
Complainant’s mark in its entirety and adds the generic top-level domain
(“gTLD”) “.net.” The Panel finds that
the addition of a gTLD such as “.net” is an insufficient distinguishing
characteristic pursuant to Policy ¶ 4(a)(i).
See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a
“well established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”).
The Panel finds
that Policy ¶ 4(a)(i) is satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <californiaexoticnovelties.net>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel infers that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on 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 Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <californiaexoticnovelties.net> domain name to operate a
website that features the unauthorized sale of Complainant’s products, as well
as the sale of competing products. The Panel
finds that such competing use for commercial benefit is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec.
10, 2000) (finding that domain names used to sell the complainant’s goods
without the complainant’s authority, as well as others’ goods, is not bona
fide use); see also Chanel,
Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of
the complainant’s mark to sell the complainant’s perfume, as well as other
brands of perfume, is not bona fide use).
Furthermore, no
affirmative evidence has been set forth showing that Respondent is commonly
known by the disputed domain name. In
the absence of such evidence, the Panel finds that Respondent has failed to
establish rights or legitimate interests 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <californiaexoticnovelties.net> domain name to operate a
website that sells Complainant’s products in addition to similar competing
products. The Panel finds that the
unauthorized sale of Complainant’s products constitutes a disruption of
Complainant’s business and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See 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).”); see
also 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).
Furthermore,
Respondent’s use of the disputed domain name to sell Complainant’s products
will likely cause confusion as to Complainant’s sponsorship of and affiliation
with the resultant website. Such
attraction for commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb.
Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in
direct competition with Complainant, and giving the impression of being
affiliated with or sponsored by Complainant, this circumstance qualifies as bad
faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Finally,
Respondent registered the <californiaexoticnovelties.net> domain name with actual knowledge of
Complainant’s rights in the CALIFORNIA EXOTIC NOVELTIES mark, as Respondent has
been selling Complainant’s products.
Respondent’s registration of the disputed domain name with actual knowledge
of another’s rights in a trademark amounts to 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 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”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat.
Arb. Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge
of Complainant’s rights in the CELEBREX mark because Respondent is using the
CELEBREX mark as a means to sell prescription drugs, including Complainant’s
CELEBREX drug.”).
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 <californiaexoticnovelties.net> domain name be
TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
October 19, 2005
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