WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION L.F.P., Inc. and LFP IP, LLC v. Anthonny, Network Service Case No. D2009-0984 1. The Parties
The Complainants are L.F.P., Inc. and LFP IP, LLC (hereinafter referred to, individually and collectively, as “the Complainant”) of Beverly Hills, California, United States of America, represented by Lipsitz Green Scime Cambria, LLP, United States of America.
The Respondent is Anthonny, Network Service of Santiago, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name, , is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2009. On July 22, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On July 23 and July 31, 2009, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification responses 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 August 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on August 24, 2009.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 31, 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, a United States of America company, is a well known purveyor of adult entertainment, whose cornerstone magazine is sold under the United States Patent and Trademark Office (“USPTO”) registered trademark, HUSTLER (e.g., Registration No. 1011001, issued May 20, 1975; and Registration No. 1474758, issued February 2, 1988). Some of the Complainant's products portray lesbian sexuality.
The disputed domain name was registered by the Respondent on September 27, 2007. Without authorization from the Complainant, the Respondent uses the disputed domain name to advertise adult entertainment that incorporates lesbian themes. 5. Parties' Contentions A. Complainant
- For more than 35 years, the Complainant has marketed adult entertainment, including its well known magazine, under the trademark, HUSTLER. Besides the magazine, the Complainant also distributes videos and clothing under the mark. Among the themes explored in the Complainant's art are those involving lesbian sexuality.
- The Complainant has obtained several USPTO registrations for its trademark, as well as registrations in other countries. The disputed domain name is identical or confusingly similar to the Complainant's mark.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent registered the disputed domain name in September 2007, without a contractual arrangement or any business relationship with the Complainant. The Respondent received no authorization from the Complainant to register or use the name. Moreover, the Respondent uses the name to promote and distribute its own line of lesbian-theme sexual entertainment products. As such, the Respondent is a cyber-squatter.
- The disputed domain name was registered and is being used in bad faith. In the absence of any relationship with the Complainant, it is clear that the Respondent's use of the name is an intentional attempt by the Respondent to attract Internet users to the Respondent's unauthorized web site for commercial gain by creating a likelihood of confusion with the Complainant's marks as to the source of the products, services and/or adult entertainment found on the Respondent's web site. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) – (iii), the Panel may rule in favor of the Complainant and order a transfer of the disputed domain name, , if the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant's presentation of clear evidence (Exhibit E) of its valid USPTO registrations for the trademark HUSTLER convinces the Panel that the Complainant has rights in that mark. See, Trip Network Inc. d/b/a Cheap Tickets, Inc. v. Sigfredo Alviera, NAF Claim No. FA914943; and State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant's registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy [paragraph] 4(a)(i).”).
The disputed domain name, , incorporates in full the Complainant's trademark. The name also includes the generic plural term “lesbians” along with the obligatory gTLD, “.com”. The Complainant contends persuasively, and without contradiction from the Respondent, that a significant portion of the Complainant's exploitation of adult entertainment products involves lesbian sexual activity. Ergo, the Panel concludes that a reasonable Internet user would find the similarity between the disputed domain name and the trademark confusing as to the source of the material found at the web site corresponding to the disputed domain name. As a result, the Panel agrees with the overwhelming majority of Policy panels facing similar circumstances, and finds that the differences cited above between the disputed domain name and the trademark do not prevent them from being confusingly similar. See, Whitney National Bank v. Easynet Ltd c/o Customer Services Department, NAF Claim No. FA944330 (“The additions of generic words with an obvious relationship to Complainant's business and a gTLD renders the disputed domain name confusingly similar to Complainant's mark pursuant to Policy [paragraph] 4(a)(i).”); and Playboy Enterprises International, Inc v. Frederico Concas,WIPO Case No. D2002-0074 (holding the disputed domain name, , to be confusinlgy similar to the trademark, PLAYBOY).
As reasoned above, the Panel finds that the Complainant has prevailed with respect to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy cites three ways in which the Respondent may demonstrate its rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Complainant has supplied the Panel with persuasive evidence that the Respondent employs the disputed domain name to redirect Internet users, presumably for commercial gain, to adult entertainment material which competes directly with that offered by the Complainant. As such, the Panel determines that the Respondent's use of the disputed domain name constitutes neither “a bona fide offering of goods or services” nor a “legitimate noncommercial or fair use” of the name. See, Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc., NAF Claim No. FA154527 (“The use of a domain name to redirect Internet users is not a bona fide offering of goods or services pursuant to Policy [paragraph] 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy [paragraph] 4(c)(iii).”); and Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946 (finding no rights or legitimate interests in the disputed domain name, , vis-à-vis the famous BOSCH mark, where “…the Respondent is using the disputed domain name to redirect users to retailers that sell both the Complainant's appliances, and the appliances of the Complainant's competitors…”).
Furthermore, there is no evidence in the record whatsoever that the Respondent, Anthonny, Network Service is, or would have any conceivable reason to be, commonly known by the disputed domain name, .
Since the Respondent has failed to establish its rights or legitimate interests in the disputed domain name per paragraph 4(c) (or by any other means in the absence of filing a Response), the Panel accepts the prima facie case presented by the Complainant that no such rights or legitimate interests exist – i.e., establishing its rights in a confusingly similar trademark while asserting denial of its authorization for the Respondent to use that trademark – as being determinative.
As reasoned above, the Panel finds that the Complainant has prevailed with respect to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Without a Response in hand, the Panel is inclined to accept the Complainant's reasonable contentions as to whether the disputed domain name has been registered and used in bad faith. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (“The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.”); and Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (“Given Respondent's failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).
As the Complainant avers, its trademark has been well known for years throughout the world and particularly in the United States of America where the Respondent resides. Furthermore, the Complainant has provided the Panel with acceptable visual evidence that the Respondent uses the disputed domain name for its web site that prompts Internet users to acquire material depicting lesbian sexual liaisons. Such material is a mainstay of the Complainant's business, and the use of the Complainant's full trademark as the first and dominant part of the disputed domain name compels the Panel to believe that the Respondent deliberately registered the name to confuse the public as to the source of said material for the Respondent's commercial gain. Therefore, viewing the above evidence in total, the Panel must conclude that the Respondent has run afoul of the circumstance, delineated in paragraph 4(b)(iv) of the Policy, that requires a finding of bad faith, as follows:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
See, for example, American University v. Richard Cook, NAF Claim No. FA208629 (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); and M Inc. v. Xianqing Zhu c/o Most , Inc., NAF Claim No. FA424540.
As reasoned above, the Panel finds that the Complainant has prevailed with respect to paragraph 4(a)(iii) 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, LFP IP LLC.
Dennis A. Foster
Sole Panelist
Dated: September 13, 2009
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