WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chippendales USA, LLC v. BadModels, Dawid Ozdoba Case No. D2009-1667 1. The Parties
The Complainant is Chippendales USA, LLC of New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is BadModels, Dawid Ozdoba of Warszawa, Poland. 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 December 7, 2009. On December 8, 2009, the Center transmitted by e-mail to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On December 9, 2009, OnlineNic, Inc. d/b/a China-C transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant providing the contact details and confirming the language of the registration agreement as English. 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 December 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2010. The Respondent did not submit any formal Response.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on January 15, 2010. 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.
Regarding the language of the proceeding, the Center ascertained from the Registrar that the language of the Registration Agreement is English and explained to the Respondent in its e-mail communication of December 18, 2009 that pursuant to paragraph 11(a) of the Rules, unless the Panel should find cause to decide otherwise, “[…] the language of the administrative proceeding shall be the language of the Registration Agreement”. The Respondent replied in Polish to the Center in his e-mail communication of December 18, 2009 as follows: “Please write to me in Polish, in the opposite case, I shall not respond!!!!!!” (translated from Polish) and again in his e-mail communication of December 19, 2009 as follows: “Please write to me in the Polish language” (translated from Polish).
The Respondent's website at the disputed domain name has on its homepage an English language button, thus indicating that the Respondent trades in English and seeks to attract an English-reading clientele. Accordingly, the Panel has not deemed it appropriate in the circumstances to defer to the wishes of the Respondent and determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is and remains the language of the registration agreement, being English. 4. Factual Background
The evidence submitted by the Complainant, which, in the absence of any formal Response by the Respondent remains undisputed, indicates that the Complainant is a Delaware corporation providing nightclub entertainment services for women featuring erotic male dancing. As part of its business, the Complainant has secured a variety of United States and international trademark registrations for the mark CHIPPENDALES, as well as various logos incorporating the term. The Complainant has appended to its Complaint evidence of these mark registrations, the earliest of which dates back to 1982. These registrations cover use of the CHIPPENDALES mark for nightclub entertainment services, recorded media of such live performances, slot machines, and merchandise such as calendars and posters.
The disputed domain name was registered by the Respondent on September 29, 2005. 5. Parties' Contentions A. Complainant
(i) The Complainant and its predecessor in interest have for over 25 years built a very well known franchise in connection with female entertainment featuring erotic male dancing, first in the United States and later internationally, thus developing enormous recognition and goodwill in the CHIPPENDALES mark which is registered in the United States and numerous other countries.
Successful tours of the Chippendales show have taken place year after year in Europe, for instance including stops in Warsaw, Poland on November 30, 2004 during the 2004 Chippendales European Tour and during the current Chippendales European Tour in neighbouring Berlin, Germany, from December 30, 2009 till January 10, 2010.
The Complainant has registered the name CHIPPENDALES as a Community Trademark with Office of Harmonisation of Internal Market on August 31, 2005 under number 003807831 in international classes 9, 28, 35, 38, and 41.
The Complainant also owns and operates a website at the domain name through which it extensively advertises and promotes the CHIPPENDALES brand and delivers information concerning the Complainant and the goods and services it offers to the public.
(ii) The Complainant contends that the Respondent's domain name is identical to and confusingly similar to the Complainant's famous CHIPPENDALES mark, because it incorporates the Complainant's entire famous CHIPPENDALES mark with the generic prefix “polish” added to it.
(iii) The Complainant contends that since the Complainant's adoption and extensive use of the CHIPPENDALES mark predates the registration date of the disputed domain name, the burden is on the Respondent to establish rights or legitimate interests in the disputed domain name, and that the Respondent cannot demonstrate any such rights or legitimate interests.
(iv) The Complainant contends that the Respondent's bad faith registration and use of the disputed domain name is established by the fact that the latter consists of Complainant's CHIPPENDALES mark, with the addition of the generic term “polish,” to promote identical goods and services, and by the fact that it was acquired after the Complainant's trademark registration.
(v) The Complainant requests that the disputed domain name be immediately transferred to the Complainant. B. Respondent
The Respondent did not formally reply to the Complainant's contentions.
However, in his e-mail communication in Polish of December 17, 2009 to the Center, the Respondent affirms he operates an erotic male dance group known as “BadBoys” and contends some of its members also engage in artistic massages under the name Polish Chippendales. He further disclaims the confusion is intentional but declares he is the author of the concept of artistic massages. The Respondent also contends to have secured two Polish trademark registrations of which he provides the registration numbers but neither the filing dates nor the names being protected, nor copies thereof. 6. Discussion and Findings 6.1 Procedural aspects
The Respondent did not file any formal Response within the time limit set by the Center. Absent exceptional circumstances, the Respondent's failure to timely submit a Response constitutes default according to paragraph 14(a) of the Rules.
Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct the proceedings and paragraph 10(b) of the Rules also obligates the Panel to give each party “a fair opportunity to present its case”. At the same time, the Panel must ensure that the proceedings take place “with due expedition”, and extensions of time are to be granted only “in exceptional cases” according to paragraph 10(c) of the Rules.
Taking into account the communications of the Respondent on December 17, 18 and 19, 2009, and the fact that the Respondent did not timely submit any formal Response, the Panel did not consider it appropriate to grant on its own motion an extension of time which was not in any event requested by the Respondent.
As noted above, the Respondent is in formal default pursuant to the Rules, paragraphs 5(e), and 14 and paragraph 7(c) of the Supplemental Rules, because no Response was received from the Respondent by the applicable deadline. However, in the interest of fairness and of deciding the case on the basis of the most complete available record, the Panel has nevertheless taken into account all informal communications submitted by the Respondent, including the Respondent's submitted reliance on a Polish-registered trademark for CHIPPENDALES registered on February 21, 2008 (which is discussed further below).
Unlike in a United States court proceeding, a default does not automatically result in a finding for the Complainant. Rather, under paragraph 4(a) of the Policy, it remains the Complainant's burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent's default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith. 6.2 With respect to the requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar
In comparing the Complainant's mark to the disputed domain name, it is evident that the latter, , consists solely of Complainant's trademark CHIPPENDALES, plus the generic terms “polish” and “com”. The addition of a generic term does not ordinarily serve to distinguish a domain name over registered marks. See Chippendales USA, LLC v. Latins Finest,WIPO Case No. D2003-0980 and Chippendales USA, LLC v. R,WIPO Case No. D2006-0488. Moreover, the disputed domain name features the word “chippendales” prominently.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's CHIPPENDALES mark, despite the addition of these generic terms.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
There is no evidence in the record in this case that persuades the Panel that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant credibly states that the Respondent has no rights or legitimate interests in the disputed domain name and the Panel finds that this contention is not persuasively rebutted as a consequence of the Respondent's limited claims and lack of any formal (or indeed appropriately certified) Response.
Neither does the use of the disputed domain name appear to the Panel be in connection with a legitimate noncommercial or fair use, or to be without the intent to misleadingly divert customers for commercial gain.
The seeming reliance of the Respondent in his e-mail communication of December 17, 2009 on a posterior Polish trademark No. 201584 (which turns out to be CHIPPENDALES registered on February 21, 2008 for massaging services) has given the Panel pause for thought. This is because an existing trademark registration may − although not necessarily in all cases − provide an indication of possible rights or legitimate interests under the Policy. However, prior UDRP panels have also noted that such potential safe-harbor and the mere fact of invoking a trademark registration would not necessarily extend under the Policy to cover use which intentionally trades on the fame of another or their mark (see, e.g., Lloyd's v. Lloyds America Indemnity Corporation, WIPO Case No. D2006-1327, and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M", WIPO Case No. D2000-0847. In the latter regard, the Panel has noted the Respondent's failure to provide actual evidence of its claimed mark, as well as the fact that the Respondent's claimed mark is not only identical to the Complainant's pre-existing mark, but that the Respondent's present use of the disputed domain name seems calculated to trade off confusion with the Complainant's widely known CHIPPENDALES mark. As such, on balance, the Respondent's apparent reliance on its own trademark in Poland appears to this Panel to be misplaced under the Policy, both in the face of the Complainant's prior community trademark registration and the current use being made of the disputed domain name.
This entitles the Panel to infer that the Respondent has no rights or legitimate interests in the disputed domain name (see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007 and Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011) and as a consequence, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The fourth is the intentional “attempt to attract, for commercial gain, Internet users to Respondent's web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on Respondent's web site or location.”
As noted above, the Respondent, has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant's arguments that the Respondent has acted in bad faith.
In this case, the Respondent registered the disputed domain name 25 years after the predecessor in interest of the Complainant began offering its famous nightclub services and a few months after the Chippendales show had toured in Warsaw with great success. The Panel finds that the Respondent must have been aware of the Complainant's trademark rights at the time he registered the disputed domain name. See Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Moreover, the Respondent has used the disputed domain name to attract Internet users to a website that offers goods and services which compete directly with those offered by the Complainant. The Respondent features the Complainant's mark prominently on that website. Accordingly, the Panel finds that the Respondent has used the disputed domain name to intentionally attract Internet users to his 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 the 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.
The Panel finds that the Complainant has met its burden under the Rules, paragraph 4(b)(iv), because its appears more likely than not from the evidence offered by the Complainant that the Respondent has registered the domain name in an attempt to attract users to the “www.” website for commercial gain due to confusion with the Complainant's mark. See I v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
The Panel also notes that the Respondent did not register and does not use a domain name featuring the name “Badboys” but rather proceeded to register a domain name featuring the well-known CHIPPENDALES mark.
Moreover, the conduct of the Respondent since receiving notification of the Complaint is strongly indicative of bad faith, in line with Sanofi-Aventis v. New Health Care Inc., Kevin Josh,WIPO Case No. D2008-1881, insofar as it has declared in writing to be amenable to “giving up” the disputed domain name.
Indeed, the Respondent concludes his e-mail communication in Polish of December 17, 2009 to the Center as follows: “If these explanations do not suffice, the only outcome will be to meet in court, and you may also have a claim against the Patent Office for having awarded me the Chippendales name and making me the owner of the trademark. If you affirm that it is similar to another sign in this category, please provide a relevant document. I may give up this name only after receiving an interesting financial offer” (translated from Polish).
Evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because many cybersquatters often wait until a trademark owner launches a complaint before asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Also, the legal criteria for showing bad faith specify that an offer for sale can be evidence of bad faith, as decided in CBS Broadcasting, Inc. v. Gaddoor Saidi,WIPO Case No. D2000-0243; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd,WIPO Case No. D2004-0078.
The Panel concludes in the present circumstances that the Respondent registered and is using the disputed domain name in a bad faith effort to extort an undetermined financial amount from the Complainant and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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.
Louis-Bernard Buchman
Sole Panelist
Dated: January 29, 2010
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