The Complainant is LFP IP, LLC of Beverly Hills, California, United States of America, represented by Lipsitz Green Scime Cambria, LLP, United States of America.
The Respondent is Ann Lee of Fresno, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2013, the Registrar 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 January 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2013. On February 18, 2013, the Respondent sent an email communication to the Center, claiming the Response had been submitted online. After confirming that no Response had been received in this case, the Center requested the Respondent to submit the Response again, but no further submission was received from the Respondent.
The Center appointed William R. Towns as the sole panelist in this matter on February 25, 2013. 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 the owner of the registered United States trademark HUSTLER and other registered HUSTLER-formative marks (“HUSTLER” marks) for use with various adult entertainment services. The Complainant has used the HUSTLER mark for nearly forty (40) years, and the mark is well known in the adult entertainment industry.
The Respondent registered and has used the disputed domain name to direct Internet users to a website marketing adult entertainment services, namely a male stripper review. The Respondent’s website currently displays a “For Sale” sign. The record reflects that the United States Patent and Trademark Office (USPTO) refused the Respondent’s application to register “Hunks of Hustler” as a trademark based on a likelihood of confusion with the Complainant’s HUSTLER marks. 5. Parties’ Contentions A. Complainant
The Complainant asserts continuous and exclusive use of the HUSTLER trademark in connection with adult entertainment goods and services for approximately forty (40) years. The Complainant avers that the mark is world famous and the most widely known mark in all of adult entertainment. The Complainant explains that the HUSTLER marks are used with a variety of adult related products and services, including products sold online store at “”.
The Complainant submits that the disputed domain name is confusingly similar to its HUSTLER mark, and that the mere addition of the descriptive words “hunks of” does not dispel this confusing similarity, particularly when used in reference to a male stripper show. The Complainant explains that its photograph and media libraries also feature male performers and models. Accordingly, the Complainant maintains that consumers are likely to be misled by the disputed domain name into thinking that the Respondent’s services are sponsored, endorsed or affiliated with the Complainant. The Complainant further support for this in the USPTO’s refusal to register “Hunks of Hustler” based on likelihood of confusion with the Complainant’s HUSTLER marks.
According to the Complainant, the Respondent knew or should have known of the Complainant’s famous HUSTLER marks when registering the disputed domain name. The Complainant states that it sent two cease and desist letters to the Respondent, to which the Respondent did not reply. The Complainant explains that after receiving the cease and desist letters the use of the disputed domain name to promote a male stripper show stopped, but that the Respondent now is offering the disputed domain name for sale. In light of this, the Complainant submits that the only plausible explanation is the Respondent’s bad faith registration and unauthorized use of the disputed domain name to profit from the goodwill developed in the Complainant’s famous HUSTLER mark. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170.
Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed 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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. In considering this issue, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s HUSTLER mark in its entirety, and the addition of the phrase “hunks of” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark.
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. While the Complainant does not separately address rights or legitimate interests as a whole, the Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made by the Complainant, which the Respondent has not rebutted. The disputed domain name is confusingly similar to the Complainant’s mark, and it is undisputed that the Respondent has not been authorized to use the Complainant’s mark or commonly known by the disputed domain name. The Respondent notwithstanding has registered and used the disputed domain name with a website offering adult entertainment services.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he or she has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it more likely than not that the Respondent was aware of the Complainant and had the Complainant’s well known HUSTLER mark in mind when registering the disputed domain name. The Panel finds that the Respondent most likely registered the disputed domain name in order to exploit and profit from the Complainant’s trademark rights, by diverting Internet users seeking the Complainant’s adult oriented websites and online products to a website on which the Respondent has offered male stripper services, and now appears to be offering the disputed domain name for sale. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, given the Respondent’s overriding intent to exploit and profit from the goodwill and repute of the Complainant’s mark. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. Further, as noted above, the Respondent has not been commonly known by the disputed domain name or authorized to use the Complainant’s mark. In short, and in the absence of any formal reply by the Respondent, the record evinces that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, 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 location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent more likely than not was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. In the absence of any formal reply by the Respondent, the record reflects that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark. The record on balance indicates that the Respondent registered and has used the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
William R. Towns
Sole Panelist
Date: March 11, 2013
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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