WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lexi Love Entertainment Inc. v. Texas International Property Associates - NA NA Case No. D2009-0417 1. The Parties
The Complainant is Lexi Love Entertainment Inc., United States of America, represented by Jordan & Associates., United States.
The Respondent is Texas International Property Associates - NA NA of Dallas, Texas 75237, United States, represented by Rothstein Rosenfeldt Adler, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2009. On April 1, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On April 2, 2009, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2009. The Response was filed with the Center on April 28, 2009.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 8, 2009. 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
The Complainant is in the business of adult entertainment, including live, televised and movie appearances. The Complainant owns a United States trademark registration for the mark LEXI LOVE, Registration No. 3475773 for entertainment services, with a date of first use in commerce of August 16, 2004. The Complainant also owns a domain name .
The Respondent registered the subject domain name on October 18, 2005. At the time the Complaint was filed, the Respondent was operating a website in connection with the subject domain name that provided links to websites that offered dating and relationship services. 5. Parties' Contentions A. Complainant (a) Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant's trademark LEXI LOVE, which is registered under United States. trademark Registration No. 3,475,773 (May 13, 2008).
The Complainant contends that the domain name is essentially identical to the registered LEXI LOVE mark, which is owned by the Complainant. Accordingly, the Complainant contends that the domain name is confusingly similar to the Complainant's registered trademark. (b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant submits that the Respondent is not commonly known by the domain name, and that the Respondent has no rights in the trademark LEXI LOVE either at common law or by way of registration anywhere in the world. The Complainant also submits that it has not licensed or otherwise permitted the Respondent to use its trademark or business name and has not permitted the Respondent to register a domain name incorporating its trademark. The Complainant submits that its principal S. S. is the only person commonly known by the name LEXI LOVE. The Complainant also contends that the Respondent is not making a legitimate or fair use of the domain name, or making any bona fide offering of goods and/or services. (c) Registered and Used in Bad Faith
The Complainant contends that the domain name was registered and is being used in bad faith based on the following factors: (i) the Respondent must have been aware of the Complainant's rights in the LEXI LOVE trademark; (ii) the Respondent registered the confusingly similar domain name to prevent the Complainant as the owner of the trademark from registering the domain name; (iii) the Respondent is using a confusingly similar domain in connection with a click-through site for the purposes of monetary gain; and (iv) the Respondent is a cybersquatter with at least 90 UDRP complaints filed against it on other matters. B. Respondent
The Respondent does not deny that the trademark LEXI LOVE and the subject domain name are confusingly similar.
The Respondent denies that the use of a domain name in connection with a click-through site for the purposes of monetary gain is in and of itself evidence of bad faith. The Respondent submits that it is in the business of registering domain names for monetary gain through click-through sites and this is in fact a bona fide use of the domain name.
The Respondent also submits that the domain name in question was registered three years before the Complainant's trademark was registered in July, 2008. The Respondent contends that the Complaint is “completey devoid of any evidence illustrating that this mark is famous.” 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark LEXI LOVE by virtue of its United States trademark registration No. 3,475,773.
The Panel also finds that the domain name is confusingly similar to the Complainant's trademark LEXI LOVE. The domain name replicates the Complainant's trademark in its entirety, and the addition of the “.com” ending is not sufficient to distinguish the domain name from the Complainant's trademark. Furthermore, the Panel notes that the Respondent admits that the domain name and the Complainant's trademark are confusingly similar.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent was ever known by the name “Lexi Love”. The Panel also accepts the Complainant's assertion that it never authorized or licensed the Respondent to use the Complainant's trademark LEXI LOVE. The Panel notes that the Respondent did not dispute the Complainant's assertion in this regard.
The threshhold issue that the Panel must consider is whether the Respondent was aware of the Complainant when it registered the subject domain name in October, 2005. The evidence in the Complaint regarding the reputation of the Complainant in 2004 and early 2005 does not provide a great deal of information on this issue, but the Panel can draw the conclusion that the Complainant did in fact use the LEXI LOVE trademark as early as August 16, 2004. This fact was not disputed by the Respondent. Furthermore, the Panel notes that name LEXI LOVE is a coined name, with a relatively high level of distinctiveness. Lastly, the Panel notes that the Respondent did not deny that it was aware of the Complainant and the Complainant's trademark when it registered the domain name in October, 2005. The combination of these factors leads to an inference that the Respondent was likely aware of the Complainant and the Complainant's rights in the name LEXI LOVE at the time the subject domain name was registered.
Accordingly, in these circumstances, the click-through site operated by the Respondent, for dating services, cannot be regarded as a bona fide offering of services.
For the above reasons, the Panel finds that the Respondent does not have a right or legitimate interest in the domain name .
Accordingly, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel's findings with respect to the Respondent's awareness of Complainant's trademark, set out above, also support a conclusion of bad faith use and registration of the domain name in question. This conclusion is reinforced by the pattern of cybersquatting conduct on the part of the Respondent, evidenced by the significant number of decisions where the Respondent has attempted to appropriate famous trademarks.
Accordingly, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 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.
Christopher J. Pibus
Sole Panelist
Dated: May 19, 2009
Full & Egal Universal Law Academy