Complainant is LFP IP, LLC of Beverly Hills, California, United States of America, represented by Lipsitz Green Scime Cambria, LLP, United States of America.
Respondent is DomReg of Beverly Hills, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dotster, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2012. On March 23, 2012, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, Dotster, Inc. transmitted by email to the Center its verification response confirming that 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 March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2012.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 25, 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
Complainant has used the HUSTLER trademark in connection with adult entertainment goods and services for about 40 years. The Mark was first used in connection with gentlemen’s clubs called “The Hustler Club” and an adult entertainment newsletter, entitled “the HUSTLER”. Since 1972 the mark has been used for the HUSTLER magazine for which a United States. Trademark registration was obtained in 1975.
Complainant owns the following trademarks registrations evidencing exclusive rights to the mark HUSTLER in connection with adult entertainment goods and services: United States Trademark Registration No. 1011001 (HUSTLER) registered on May 20, 1975; Registration 1421856 (HUSTLER FANTASIES), registered on December 23, 1986; Registration 1474758 (HUSTLER), registered on February 2, 1988 and other United States’ registrations. Complainant also owns a number of domain names that include the HUSTLER mark, including, among others, , and to name a few.
The disputed domain name was registered on May 17, 1997. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant or its predecessors-in-interest have used the world famous HUSTLER trademark for about 40 years for adult entertainment goods and services. Complainant is the owner of a number of United States. registrations for the mark HUSTLER. There are numerous HUSTLER CLUBS establishments spanning the globe, in addition to a line of HUSTLER clothing, physical HUSTLER retail stores and an online THE HUSTLER STORE marketplace offering thousands of original HUSTLER products.
The disputed domain name is only one letter away from Complainant’s registered HUSTLER mark. The goods and services offered at “www.” are substantially similar, if not identical, to those being offered at Complainant’s “www.” website.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
The Respondent has no rights or legitimate interest in the disputed domain name. Before any notice to the Respondent of the dispute, 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. The Domain Name directs users to a generic holding page indicating that the disputed domain name is for sale and providing links to third-party competitor “sex sites”. Finally, there is no evidence that Respondent is commonly known by the disputed domain name, nor has Respondent acquired trademark rights in HUSLER.
Respondent was typosquatting when it registered the disputed domain name. Further, Complainant’s and Respondent’s respective places of business are located “down the street” from one another in Beverly Hills, California, United States.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
The disputed domain name was registered and is being used in bad faith. The HUSTLER trademark is famous and long existing in the adult entertainment industry. Respondent, therefore, should have known that the Domain Name was confusingly similar to Complainant’s mark. The home page to which the disputed domain name resolves features links to third-party competitor websites. Thus, it appears reasonable to conclude that Respondent registered the disputed domain name with the intention of attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Complainant does not believe that Respondent’s registration of the disputed domain name was coincidental. B. Respondent
Respondent did not reply to the Complainant’s contentions and has thereby defaulted. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 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 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
Complainant has used the HUSTLER trademark in connection with its adult entertainment goods and services since 1972, a period of 40 years and is the owner of a number of United States trademark registrations. In addition, Complainant has used the HUSTLER trademark worldwide for many of its goods and services. Therefore, the Panel finds that Complainant has trademark rights in the HUSTLER mark.
The Panel also finds that the disputed domain name is likely to be confused with Complainant’s HUSTLER trademark. The disputed domain name is the phonetic equivalent of Complainant’s trademark. It is a nonsensical misspelling of HUSTLER (“Husler” v. “HUSTLER”), a form of typosquatting. This close misspelling renders the disputed domain name confusingly similar to Complainant’s trademark. Alta Vista Co. v. Yomtobian,WIPO Case No. D2000-0937 (domain names and are confusingly similar to trademark ALTA VISTA).
Therefore, this Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a domain name. See National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (“WIPO Overview 2.0”).
In the present case, the website associated with the disputed domain name has been used as a “pay-per-click” page featuring links to third-party competitors’ website. Moreover, the evidence suggests that (i) Respondent has not used or prepared to use the disputed domain name with a bona fide offering of goods or services before any notice of the dispute; (ii) Respondent has never been commonly known by the disputed domain name and Complainant has never licensed nor otherwise permitted Respondent to use its HUSTLER trademark and service mark or to apply for any domain name incorporating the mark nor is there any relationship between the Complainant and Respondent; and (iii) Respondent has not made and is not making a legitimate non-commercial or fair use of the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141.
Accordingly, the Panel finds that Respondent has no rights or legitimate interest in respect of the disputed domain name. C. Registered and Used in Bad Faith
Complainant’s allegations of bad faith are not contested. Complainant’s allegation of bad faith registration is well founded. In this Panel’s view, it is improbable that Respondent was unaware of Complainant’s trademark rights when it registered the disputed domain name on May 17, 1997, since the HUSTLER trademarks are well-known worldwide and have been in use in connection with adult entertainments goods and services offered to the public since 1972.
Complainant’s uncontested allegations of bad faith use are also well founded. Under the Policy, paragraph 4(b)(iv), it is evidence of bad faith use that, “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.”.
Respondent used the disputed domain name, which is confusingly similar to Complainant’s widely known HUSTLER trademark, to create a “pay-per-click” page to attract users to Respondent’s website where Respondent offers competing adult entertainment goods and services. Respondent’s website, among other things, provides links to adult magazines and videos of competitors and, although Respondent’s website also appears to have a link to Complainant’s HUSTLER magazine, if that link is followed, it resolves to additional third party goods and services and not to Complainant’s HUSTLER magazine. This linking to third-party goods and services is evidence of Respondent’s intention to attract Internet users for 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 or a service on the Respondent’s website.
In the circumstances of this case, such an offering of identical competing goods and services constitutes bad faith use of the domain name. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan,WIPO Case No. D2004-0537 (“the Panel is persuaded that respondent’s registration and use of the Disputed Domain Name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO decisions also support this conclusion.”) See also E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly, the Panel finds that the disputed domain name is registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: May 10, 2012
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