Passion Parties, Inc. v. Beatrice Wilson
Claim Number: FA0705000982739
Complainant is Passion Parties, Inc. (“Complainant”), represented by Edward
E. Hartley, 225 Bush Street, 6th Floor, San Francisco, CA 94104. Respondent is Beatrice Wilson (“Respondent”), 1404 W. Castlewood,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <purepassionparty.com>, registered with Wild West Domains, Inc., and <passionplayparties.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 11, 2007; the National Arbitration Forum received a hard copy of the Complaint May 14, 2007.
On May 14, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <purepassionparty.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 14, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <passionplayparties.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On May 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 2007, 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@purepassionparty.com and postmaster@passionplayparties.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The disputed domain names that Respondent registered, <purepassionparty.com> and <passionplayparties.com>, are confusingly similar to Complainant’s PASSION PARTIES mark.
2. Respondent has no rights to or legitimate interests in the <purepassionparty.com> and <passionplayparties.com> domain names.
3. Respondent registered and used the <purepassionparty.com> and <passionplayparties.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Passion Parties, Inc., is an adult-oriented business using the PASSION PARTIES mark. Complainant’s products include adult body lotions, powders, oils, creams, and gels, as well as books, catalogs, brochures, and clothing items such as lingerie and T-shirts. Complainant registered the <passionparties.com> domain name November 4, 1996 and maintains a website at it promoting its products.
Complainant has also registered the PASSION PARTIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,774,109 issued October 14, 2003).
Respondent’s <purepassionparty.com> and <passionplayparties.com> domain names, which it registered July 7 and July 9 of 2006, respectively, resolve to a website offering adult-oriented products that directly compete with Complainant’s business.
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 will draw such inferences as the Panel 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.
Through registration of the PASSION PARTIES mark with the
USPTO, Complainant has adequately established its rights in the mark pursuant
to Policy ¶ 4(a)(i).
See Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO); see
also Miller Brewing Co. v. The Miller Family, FA 104177 (Nat.
Arb. Forum Apr. 15, 2002) (finding that the
complainant had established rights to the MILLER TIME mark through its federal
trademark registrations).
The <passionplayparties.com>
domain name contains Complainant’s entire PASSION PARTIES mark and merely
inserts the term “play” into the middle of it and adds the generic top-level
domain “.com.” The insertion of a term
into the middle of Complainant’s registered mark is not a distinguishing
difference in the opinion of the Panel.
Consequently, the <passionplayparties.com>
domain name is confusingly similar to the PASSION PARTIES mark pursuant to
Policy ¶ 4(a)(i).
See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the
respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark
where the respondent merely added common terms such as “buy” or “gear” to the
end); see also Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2,
2006) (finding that the alterations to the complainant’s DISNEY mark in the
respondent’s <finestdisneyhomes.com> domain name are insufficient to
differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)); see also Jerry
Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum
Apr. 10, 2007) (“The mere addition of a generic top-level domain
(“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from
the mark.”).
As for the <purepassionparty.com>
domain name, the Panel finds that Respondent has failed to sufficiently
differentiate it from Complainant’s PASSION PARTIES mark as well, for
Respondent has merely added the term “pure” and the gTLD “.com,” and has also
changed the term “party” from its plural to singular form. Accordingly, this disputed domain name is
also confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Experian
Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7,
2002) (finding that several domain names incorporating the complainant’s entire
EXPERIAN mark and merely adding the term “credit” were confusingly similar to
the complainant’s mark); see also Ty, Inc. v. O.Z. Names,
D2000-0370 (WIPO June 27, 2000) (finding that the domain names
<beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are
confusingly similar to the complainant’s mark BEANIE BABIES); see also Trip
Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,”
or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain names. Complainant alleges that Respondent lacks such rights to and legitimate interests in the domain names in dispute. The burden is initially upon Complainant to make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <purepassionparty.com> and <passionplayparties.com>
domain names. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the respondent’s failure to produce requested
documentation supports a finding for the complainant); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
No evidence in the record suggests that Respondent is commonly known by the <purepassionparty.com> and <passionplayparties.com> domain names, including the WHOIS information, which lists “Beatrice Wilson” as the registrant for both names. As a result, Respondent has not established rights or legitimate interests in the contested domain names under Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is using the disputed domain names to maintain a website in direct competition with Complainant’s adult-oriented business. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel found that the respondent’s operation of a website “virtually identical” to the complainant’s website to offer competing travel reservation services did not fall within the parameters of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), also concluded that a respondent’s use of a confusingly similar domain name to sell goods in competition with the complainant did not give rise to any legitimate interest in the domain name. In line with these previous decisions, the Panel in the present case finds that Respondent has not used the <purepassionparty.com> and <passionplayparties.com> domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(b)(ii).
Complainant alleges that Respondent acted in bad faith in
registering and using Complainant’s protected mark in the disputed domain
names. Respondent is using the disputed
domain names to redirect Internet users seeking Complainant’s services to a
competing adult website. The Panel finds
that Respondent registered and is using the disputed domain names in order to
disrupt Complainant’s business under the PASSION PARTIES mark, which supports
findings of bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock
Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1,
2006) (finding that the respondent registered and used the
<classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶
4(b)(iii) by redirecting Internet users to the respondent’s competing website);
see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus
operates in the same business as the Complainant. The parties can
therefore be considered as competitors. The Panel thus finds that the
Respondent registered the domain name primarily for the purpose of disrupting
the business of a competitor, which constitutes evidence of registration and
use in bad faith under Policy ¶ 4(b)(iii).”).
The Panel also finds
that Respondent’s diversionary use of the contested domain names for commercial
gain violates Policy ¶ 4(b)(iv). By linking domain names to a competing
website, Respondent is taking advantage of the confusing similarity between the
disputed domain names and Complainant’s PASSION PARTIES mark in order to profit
from the goodwill associated with the mark.
See Velv, LLC v. AAE, FA
677922 (Nat. Arb. Forum May 25, 2006) (find that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz
of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad
faith registration and use under Policy ¶ 4(b)(iv) where the respondent was
diverting Internet users searching for the complainant to its own website and
likely profiting from click-through fees).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(b)(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 <purepassionparty.com> and <passionplayparties.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 18, 2007.
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