WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chippendales USA, LLC v. Latins Finest
Case No. D2003-0980
1. The Parties
The Complainant is Chippendales USA, LLC, Plainview, New York, United States of America, represented by Pitney, Hardin, Kipp & Szuch, LLP, United States of America.
The Respondent is Latins Finest, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group, Inc., d/b/a directNIC.com (hereinafter the Registrar).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") electronically on December 11, 2003, and by hardcopy on December 18, 2003. On December 12, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On December 12, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2004. The Center received an automatic response from Respondent. Respondent did not submit any response to the allegations contained in the Complaint. Accordingly, the Center notified the Respondent�s default on December 19, 2003, to which the Center received an automatic response from Respondent.
The Center appointed M. Scott Donahey as the Sole Panelist in this matter on February 3, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the holder of registered trademarks issued by the United States Patent & Trademark Office ("USPTO") for CHIPPENDALES, the earliest of which issued on June 8, 1982, and which show a first use in commerce of December 1, 1978. Complaint, Annex 5. The trademark was registered in connection with nightclub entertainment services for women by male exotic dancers, recorded media of such live performances, and merchandise such as calendars and posters.
Complainant has spent millions of dollars in the promotion of the CHIPPENDALES mark, and has expanded the use of the mark to include clothing, teddy bears, playing cards, magnets, and key chains. Complainant has nightclubs in West Los Angeles, California and New York, New York, as well as a touring company that traveled throughout the United States. Complaint, Annex 2.
Respondent registered the domain name at issue on November 4, 2002. Complaint, Annex 1. Respondent does business under various names, including Hard Bodies finest entertainment and Hollywood Productions. Complaint, Annex 10. Respondent uses the domain name at issue to resolve to a website which advertises the services of male and female strippers, belly dancers, strip clubs, exotic dancers, and limousine service, and which repeatedly uses Complainant�s registered trademark. Id.
On June 18, 2003, Complainant advised Respondent of its rights in the mark by letter. Respondent failed to respond thereto. Respondent thereafter registered and . By certified letters dated November 29, 2001, Complainant demanded that Respondent cease and desist from the use of such domain names. Complainant�s letters went unclaimed, although thereafter Complainant registered the two names mentioned above when they became available. Complaint, Annex 2, paragraphs 14 and 15.
5. Parties� Contentions
A. Complainant
Complainant contends that the domain name at issue is similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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 directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Respondent�s domain name includes in its entirety Complainant�s registered marks. As such, Respondent�s domain name is confusingly similar to Complainant�s marks. Wal-Mart Stores v. Richard MacLeod, d/b/a For Sale, WIPO Case No. D2000-0662. The fact that the domain name at issue also incorporates the English word "finest" after incorporating Complainant�s mark makes no difference to the analysis. Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026.
B. Rights or Legitimate Interests
Complainant has in a credible way alleged that Respondent has no rights or legitimate interests in respect of the domain name at issue. Respondent has failed to show that Respondent has any rights or legitimate interests in respect of the domain name at issue. This entitles the Panel to infer that Respondent has no rights or legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011.
C. Registered and Used in Bad Faith
Respondent registered the domain name at issue more than 20 years after Complainant registered its trademark and almost 25 years after Complainant began offering its famous nightclub services. Respondent operates in Southern California, the area in which Complainant achieved its initial and notorious success. The Panel finds that Respondent must have been aware of Complainant�s fanciful mark at the time it registered the domain name at issue. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Moreover, Respondent has used the domain name at issue to resolve to a website that offers goods and services which compete directly with those offered by Complainant. Respondent features Complainant�s mark prominently and repeatedly on that website. Accordingly the Panel finds that Respondent has used the domain name to intentionally attract Internet users to Respondent�s website for the purpose of commercial gain by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of Respondent�s website. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. LIN Television Corporation v. Home In USA and Home In USA, Inc., WIPO Case No. D2000-0257.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Dated: February 6, 2004
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