Dorothiea H. Patton a.k.a. SEKA v.
Psites, Inc. c/o Mark Anthony
Claim
Number: FA0502000420676
Complainant is Dorothiea H. Patton a.k.a. SEKA (“Complainant”), represented by Stephen L. Anderson, Esq.,
of Anderson & Associates, 27349 Jefferson Ave., Suite 211, Temecula,
CA . Respondent is Psites, Inc. c/o Mark Anthony (“Respondent”), 49 Eaton
Court, Manhasset, NY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <seka.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.Com.
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 February
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 15, 2005.
On
February 15, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed
by e-mail to the National Arbitration Forum that the domain name <seka.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.Com 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
February 18, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 10, 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@seka.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 16, 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 <seka.com>
domain name is identical to Complainant’s SEKA mark.
2. Respondent does not have any rights or
legitimate interests in the <seka.com> domain name.
3. Respondent registered and used the <seka.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Dorothiea H. Patton a.k.a. SEKA, is an
actress and director of motion pictures and a properietor of goods and
services. Complainant has used the SEKA
mark in conjunction with the offering and sale of a variety of products,
including video cassettes, DVDs, streaming video subscriptions, books,
magazines, photographs, apparel, linens, and keychains. Additionally, Complainant has used the mark
in association with services such as fan club memberships, public appearances,
fantasy entertainment and other services.
Complainant holds at least two trademark registrations with the United
States Patent and Trademark Office for the SEKA mark (Reg. No. 1,331,757 issued
April 23, 1985 and Reg. No. 1,331,622 issued April 23, 1985).
Since 1977, Complainant has been featured in more than 175 adult films
and has appeared as a guest on numerous television shows, including The
Oprah Winfrey Show, Larry King Live, and Saturday Night Live. Complainant is known worldwide as “SEKA, The
Platinum Princess of Porn,” and has been featured in adult-oriented magazines,
such as Playbody, Penthouse, Club, Hustler, and
others. In addition, Complainant has
been featured in several mainstream magazines and newspapers, including Vanity
Fair, The Wall Street Journal, and USA Today. Furthermore, Complainant has been the host
of a nationally syndicated radio show from WLUP in Chicago and is the subject
of a Swedit documentary film entitled Desperately Seeking SEKA.
Respondent registered the <seka.com> domain name on September 9, 1998. Respondent is using the disputed domain name
to resolve to an adult-oriented website, which offers Complainant’s photographs
and motion pictures for sale and invites visitors to sign-up for membership subscriptions
to view more photographs and streaming video of Complainant as well as the
websites of other performers for one price.
Furthermore, the website falsely claims to be the “Seka Porn Star
Official Site” and “the Official Seka’s Fan Site” and prominently displays
Complainant’s SEKA mark.
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.
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.
Complainant has
established in this proceeding that it has presumptive rights in the SEKA mark
through registration with the United States Patent and Trademark Office and by
continuous use of its mark in commerce for the last twenty-eight years. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also J. C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal
Register is prima facie proof of continual use of the mark, dating back to the
filing date of the application for registration).
The <seka.com>
domain name registered by Respondent is identical to Complainant’s SEKA mark
because the domain name incorporates Complainant’s mark in its entirety,
deviating only with addition of the generic top-level domain (gTLD)
“.com.” It has been consistently held
under the Policy that the addition of a gTLD to a registered mark is
insufficient to distinguish the domain name from the mark. Therefore, the disputed domain name is
identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v.
Smith, 279
F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s
Web site often assume, as a rule of thumb, that the domain name of a particular
company will be the company name or trademark followed by ‘.com.’”); see
also Blue Sky Software Corp. v.
Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to Complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference").
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the allegations set forth by Complainant in the Complaint. In this circumstance, the Panel is entitled
to accept all reasonable allegations and inferences in the Complaint 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 Complainant’s
allegations are true unless clearly contradicted by the evidence); see also
Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts).
Complainant
alleges that Respondent does not have rights or legitimate interests in the
disputed domain name. Once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden
shifts to Respondent to show that it does have rights or legitimate
interests. Thus, due to Respondent’s
failure to respond to the Complaint, the Panel assumes that Respondent lacks
rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint).
Respondent is
using the <seka.com> domain name to divert Internet users to
Respondent’s adult-oriented website, which offers photographs of Complainant
and Complainant’s motion pictures for sale.
The website also purports to be the official fan site for Complainant
and offers membership subscriptions to view photographs of Complainant or
Complainant’s movies. It is the Panel’s
determination that Respondent’s use of a domain name identical to Complainant’s
SEKA mark to attract Internet users to a website offering Complainant’s
products for sale and falsely claiming to be related to Complainant is not a
use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i).
Furthermore, since Respondent is using the domain name in association
with a commercial website, Respondent’s use of the domain name is not in
connection with 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
Complainant’s goods without Complainant’s authority, as well as others’ goods,
is not bona fide use); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be
unconscionable to find a bona fide offering of services in a respondent’s
operation of web-site using a domain name which is confusingly similar to the
Complainant’s mark and for the same business.”); see also American Int’l
Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding
that as Respondent attempted
to pass itself off as Complainant online, through wholesale copying of
Complainant’s website, Respondent had no rights or legitimate interests in the
disputed domain name).
Complainant
contends that Respondent has never been commonly known by the <seka.com>
domain name and that Complainant has never authorized or permitted Respondent
to use Complainant’s SEKA mark.
Respondent has provided no evidence to counter these assertions and
nothing in the record, including Respondent’s WHOIS information, suggests that
Respondent has ever been commonly known by the disputed domain name. Under these circumstances, the Panel finds
that Respondent lacks rights and legitimate interests pursuant to Policy ¶
4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <seka.com> domain name in an attempt to intentionally
attract Internet users interested in locating Complainant’s products and
services to Respondent’s commercial website.
Internet users searching for Complainant’s authorized products and
services are likely to type in Complainant’s SEKA mark followed by the common
gTLD “.com.” Furthermore, Internet
users are likely to become confused as to the sponsorship of Respondent’s
website, which purports to be Complainant’s official fan website. Additionally, Respondent profits from its
infringing use of Complainant’s mark in the domain name by selling membership
subscriptions to its website as well as products and services that compete with
Complainant. The Panel concludes under
these circumstances that Respondent’s attempts to divert Internet users for
commercial gain by attracting them to Respondent’s website through a likelihood
of confusion with Complainant’s mark is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also
MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent linked <drmath.com>, which contains Complainant’s Dr.
Math mark, to a website run by Respondent, creating confusion for Internet users
regarding the endorsement, sponsorship, of affiliation of the website).
Complainant is
an actress and director of motion pictures in the adult entertainment industry
and has used the SEKA mark in conjunction with the offering and sale of a
variety of products, including videos, DVDs, streaming video subscriptions,
photographs, and numerous other types of merchandise. Respondent is using the <seka.com> domain name to
sell Complainant’s movies, photographs and other items and to offer membership
subscriptions to view Complainant’s products by streaming video as well as
competing products and services of other adult performers. Thus, the Panel determines that Respondent’s
use of a domain name that is identical to Complainant’s mark to sell the same
products and services offered by Complainant under its SEKA mark is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb.
Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant
registered and used a domain name confusingly similar to Complainant’s
PENTHOUSE mark to host a pornographic web site); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
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 <seka.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 30, 2005
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