The Complainant is LFP IP, LLC of Beverly Hills, California, United States of America, represented by Lipsitz Green Schime Cambria LLP, United States of America.
The Respondent is Anchora Management B.V. of Amsterdam Zuidoost, Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2012. On February 14, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On February 14, 2012, Tucows Inc. 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 February 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2012.
The Domain Name was created on February 3, 2003. The Domain Name expired on February 3, 2012, prior to the filing of the Complaint with the Center. On February 15, 2012, the Center informed the parties about the expiration of this Domain Name. Paragraph 3.7.5.7 of ICANN’s Expired Domain Name Deletion Policy provides the Complainant with an option to renew or restore the Domain Name subject to the present UDRP dispute under the same commercial terms as the registrant (who is the Respondent in these proceedings).
The Center appointed David Stone as the sole panelist in this matter on March 13, 2012. 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 currently one of the largest manufacturers, wholesalers and retailers of adult entertainment goods and services globally. The Complainant owns the HUSTLER trademark which has been used by the Complainant for approximately 40 years. The HUSTLER trademark has been used since 1968 in connection with a string of gentlemen’s clubs called the “Hustler Club”. By 1972, the HUSTLER trademark was used in connection with Hustler magazine. The Complainant has over 154 HUSTLER and HUSTLER-related trademarks registered in over 50 countries, including in the Netherlands where the Respondent is located.
Over 500 official Hustler web domains incorporating the HUSTLER trademark are registered to an affiliate of the Complainant, including “www.HustlerTV.com” and “www.HustlerM”. Most of these domains are comprised of one or more of the Complainant’s trademarks and/or other words.
No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant claims that its world-famous HUSTLER trademark is the most widely known trademark in all of adult entertainment.
The Complainant claims that the Domain Name is confusingly similar to the HUSTLER trademark because the Domain Name contains the Complainant’s trademark HUSTLER in its entirety, with the mere addition of the generic term “On Demand”. The Complainant states that it is virtually certain that the Domain Name was registered with the intent to mislead and deceive consumers, because the words “On Demand” are broad enough to cover any of a number of the Complainant’s broadcasting services (video-on-demand, streaming videos etc.) and an individual seeking video-on-demand services by the Complainant is likely to use the terms “On Demand” in addition to using the HUSTLER trademark. Further to this, the Complainant states that the words “On Demand” simply describe the goods and services provided by the Complainant under its HUSTLER TV, HUSTLER HD, and HUSTLER VIDEO marks.
The Complainant submits that the Respondent has no rights or legitimate interest to the Domain Name. The Complainant states there has been no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as the Complainant has provided in Annex 7 to the Complaint, the Domain Name does not resolve to a functioning website. Moreover, the Complainant submits that the Respondent does not offer any goods or services related to adult entertainment (video-on-demand or otherwise) as the phrase “Hustler On Demand” would suggest. Furthermore, the Respondent makes use of the likelihood of confusion with the HUSTLER trademark, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Finally, there is no evidence that the Respondent is commonly known by the Domain Name, nor has the Respondent acquired trademark rights in “Hustler On Demand”.
Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. With the HUSTLER trademark being a famous and long existing trademark in the adult entertainment and video industry, the Respondent knew or should have known that the Domain Name included the Complainant’s mark. This conclusion is bolstered by the fact that the Domain Name, by its inclusion of the words “On Demand”, merely describes the goods and services already offered by the Complainant under its HUSTLER TV, HUSTLER HD, and HUSTLER VIDEO trademarks.
The Complainant claims that it is reasonable to conclude that the Respondent registered the Domain Name with the intention of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Domain Name. The Complainant does not believe that the likelihood of confusion can possibly be coincidental; rather, the only plausible explanation from the evidence is that the Domain Name was chosen as a domain name for the purpose of attracting consumers of adult video, TV, cable, and/or video-on-demand services.
The Complainant requests that the Panel issue a decision that the Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests 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 Complainant has established it has rights in the trademark HUSTLER; it has been used by the Complainant for approximately 40 years and the Complainant has a wide diversification of businesses under this trademark. The Complainant owns many registered trademarks for HUSTLER and HUSTLER-formative marks. The Complainant also owns over 500 domain names which include the HUSTLER trademark.
Following previous UDRP panels, the addition of a generic term does not distinguish the Domain Name from a trademark. Adding “On Demand” to a registered trademark and subsequently registering this phrase as a domain name does not mitigate the confusing similarity between the two (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; and Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022).
The Respondent’s use of “On Demand” could actually increase the likelihood of confusion because it is a descriptive term for some of the Complainant’s business. For example, and are two examples of domain names submitted by the Complainant, and, the Complainant submits, both these Internet sites provide video-on-demand services.
The Panel concludes the Domain Name is confusingly similar to the Complainant’s trademark HUSTLER. B. Rights or Legitimate Interests
It is for the Respondent to show that it has rights or a legitimate interest pursuant to paragraph 4(a)(ii) of the Policy. The Respondent has failed to submit a Response and has failed to demonstrate pursuant to paragraph 4(c) of the Policy any rights or legitimate interest in the Domain Name, or to rebut the Complainant’s prima facie case. The Respondent is not an authorized agent of the Complainant and there is no connection between the Respondent and the Complainant giving rise to a license or permission from the Complainant to use the HUSTLER trademark in the Domain Name. The Respondent is not known by the Domain Name.
Aside from the Respondent’s default, the Complainant made submissions to the effect that the Domain Name is not a functioning website. Further to this, the Respondent has not renewed the Domain Name after its expiration on February 3, 2012, or responded to the Center’s communication to the parties on February 15, 2012, that the Domain Name had expired. It would appear to this Panel that the website at the Domain Name is a so called Pay-Per-Click page. Altogether the Panel finds that the evidence demonstrates the Respondent has no rights or legitimate interests in the Domain Name.
The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
As the Complainant has described and provided in its Complaint, HUSTLER is a well-known trademark and the Respondent bears no relationship to the Complainant or has any legitimate purpose to use any of the Complainant’s trademarks. The long and global usage of this trademark means the Domain Name cannot be purely coincidental to HUSTLER. These factors are strong indicators of bad faith on the part of the Respondent. The Complainant has stated that it is reasonable to conclude that the Respondent registered the Domain Name with the intention of attracting Internet users for the purposes of commercial gain by creating a likelihood confusion with the Complainant’s trademark HUSTLER; a ground for bad faith specified in paragraph 4(b)(iv) of the Policy. Further to paragraph 4(b) of the Policy, only one of the circumstances need to be specified in order to establish evidence of the Respondent’s registration and use of the Domain Name in bad faith.
The Panel concludes that the Domain Name is both registered and used in bad faith. 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.
David Stone
Sole Panelist
Dated: March 22, 2012
Full & Egal Universal Law Academy