DECISION

 

Arizona Mail Order, Inc v. INSS

Claim Number: FA0109000099757

 

PARTIES

Complainant is Arizona Mail Order, Inc, Tucson, AZ (“Complainant”) represented by Robert J. Glance, of Merchant & Gould P.C.  Respondent is INSS, Gibraltar, GI (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <intimateappeal.com>, registered with Tucows.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 20, 2001; the Forum received a hard copy of the Complaint on September 21, 2001.

 

On September 25, 2001, Tucows confirmed by e-mail to the Forum that the domain name <intimateappeal.com> is registered with Tucows and that Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows 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 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 2001 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@intimateappeal.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On October 18, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <intimateappeal.com> domain name is confusingly similar to Complainant's federally registered trademarks.

 

Respondent has no rights or legitimate interests in the <intimateappeal.com> domain name.

 

Respondent registered and used the <intimateappeal.com> domain name in bad faith.

 

B. Respondent

The Respondent did not submit a response.

 

FINDINGS

Since 1987, Complainant has used the INTIMATE APPEAL mark in connection with its mail order catalog.  Complainant's catalog sells women's clothing including loungewear, sleepwear, bras, and shapewear.  Complainant has invested substantial sums of money in developing and marketing its business under the mark.  Complainant owns a U.S. Federal Trademark Registration for the mark. 

 

Respondent registered the <intimateappeal.com> domain name on February 17, 2000.  Respondent's website features pornographic products/services and photographs of women in similar apparel as Complainant's products or no clothing at all.  Respondent's website is also linked to numerous other pornographic websites with sexually explicit material.  Respondent is also linked to <ibuyhits.com> which serves various pornographic websites, and allows Respondent to profit from Internet traffic that is directed to <ibuyhits.com> via his website. 

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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.

 

Identical and/or Confusingly Similar

Complainant, through its registration and use has established that it has rights in the INTIMATE APPEAL mark.  Furthermore, Respondent's domain name is identical to Complainant's mark because it incorporates the mark in its entirety and merely adds a top-level indicator.  It has been found that the addition top-level indicators such as ".com" or ".org" will not defeat a claim of identical or confusing similarity.  See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also 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).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the <intimateappeal.com> domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

 

Respondent has used the Complainant's mark to attract Internet users to a website that displays and offers services related to adult material.  It has been found that this kind of use does not create rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i).  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark); see also National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website).

 

Furthermore, There is no evidence, and Respondent does not refute, that Respondent has rights or legitimate interests in respect to the disputed domain name.  See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent has registered and used the domain name to direct Internet users to websites offering pornographic material, such conduct is considered evidence of bad faith.  See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

 

Furthermore, Respondent's use of a confusingly similar domain name to display pornographic material is evidence of bad faith.  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site that may cause confusion as to the source or affiliation of the site).

 

Respondent is using the confusingly similar domain name for commericial gain which is evidence of bad faith pursuant to ¶ 4(b)(iv).  See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Drs. Foster & Smith, Inc. v. Jaspreet 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 website for commercial gain).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the <intimateappeal.com> domain name be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: October 22, 2001