LFP IP, LLC and LFP Casino
IP, LLC v. Wolf Internet Services LDC c/o Wolfgang Sauer
Claim Number: FA0802001143990
PARTIES
Complainant is LFP IP, LLC and LFP Casino
IP, LLC (“Complainant”), represented
by John P. Hains, of Lipsitz Green Scime Cambria LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ihustler.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 12, 2008; the
National Arbitration Forum received a hard copy of the Complaint on February 14, 2008.
On February 13, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <ihustler.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On February 27, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 18, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@ihustler.com by e-mail.
A timely Response was received and determined to be complete on March 14, 2008.
On March 24, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
I. Complainant’s Contentions
A. IDENTICAL
OR CONFUSINGLY SIMILAR.
The Complainant is two
For more than 35 years, the
Complainant and its predecessor companies and affiliate companies have used the
HUSTLER mark in connection with HUSTLER MAGAZINE, which enjoys worldwide
circulation. As a visit to <hustlerstore.com>
will show, the LFP companies, including Hustler video, have a very active video
business. At that store site, customers
can buy DVDs with the Hustler® brand, and can also arrange for video on demand.
Over the past fifteen years, the HUSTLER
mark has been further expanded through websites such as <hustler.com>,
which offers adult entertainment on a membership basis. At the Hustler Casino in
On <ihustler.com>, adult entertainment pictures were being displayed until shortly after LFP sent the Respondent a letter demanding that they transfer the site to LFP. Their adult entertainment offerings were an obvious infringement of the HUSTLER mark, linking to sites that compete with the LFP companies in the adult entertainment industry. After LFP contacted the Respondent, the site became a conduit to <bonuses.com>, an online casino based offshore. Viewers who typed in that domain name were redirected to <bonuses.com>. As such, <ihustler.com> now infringes on the HUSTLER mark as applied to casino gambling and night clubs. When the mark owner demanded that they stop infringing through advertisement of adult entertainment, the Respondent simply changed market segments, moving to another area in which the trademarks have value, and continued their infringement.
The Complainant’s mark is HUSTLER (and HUSTLER CASINO). The Complainant’s major website is <hustler.com>. The domain <ihustler.com> is one keystroke away from the Complainant’s site, and visually appearing much like Complainant’s domain name. It is certainly not coincidental that the Respondent has chosen for its website two market areas where the Complainant has a major presence, and has registered trademarks, to ideas-the content of its similar-looking domain. When the two domain names are placed next to each other, it seems clear that they are “confusingly similar.”
B. RIGHTS OR
LEGITIMATE INTERESTS
Respondent has-no rights or legitimate interests in respect of the domain name. When the site was launched, and continually thereafter until LFP complained, the site was advertising adult entertainment sites, no doubt collecting advertising fees from those sites. As soon as LFP contacted the Respondent, demanding that the domain be transferred, the content on the site was changed to gaming, redirecting viewers to <bonuses.com>. We note that “iHustler” is not a word and is not, by itself, a known trademark for anything. Only if viewers make the mistake of adding the extra “i” will they be redirected.
C. REGISTRATION
IN BAD FAITH
Complainant alleges that Respondent’s previous and current uses of the <ihustler.com> domain name both
compete with and disrupt Complainant’s business.
There is no apparent relationship between the domain name and any business that the Respondent is engaged in. For most of the time the domain has been registered to Respondent, it was advertising adult sites. The domain is so similar to <hustler.com> that it seems likely the Respondent was trying to cash in on the drawing power of the Complainant’s site. As soon as Respondent was challenged on this apparent infringement, the focus of the site changed to another business in which Complainant has been successful and in which it has protected itself with trademark rights. Respondent advertises itself at its website, <wolfis.com>, as being in the business of “acquiring and managing domain names to develop into websites or to use for direct navigation advertising.” Though it shows as the registrant of <bonuses.com> in WHOIS, respondent apparently does not run the casino there, since there is no mention of the casino in the description of the Respondent at <wolfis.com>.
I. Respondent’s Contentions
A. IDENTICAL OR CONFUSINGLY SIMILAR.
The Respondent did not register <ihustler.com> with the Complainant’s Website in mind. In fact, the Respondent did register well over 1200 domain names that consist of a dictionary word with the very common prefixes “e” and “i” in front of it. The word Hustler is a well known dictionary word which has many meanings: Slang: Quote: A male prostitute, pimp and/or drug dealer; a street hustler.
The prefixes “e” and ‘‘i” are the most common prefixes on the internet, as thousand of websites are using them. Example: iTunes.com, eTrade.com, eLoans.com, iReports.com or eAntiques.com (Respondent’s own developed website), just to name a few.
The Domain name <ihustler.com> is not confusingly similar to <hustler.com>, just as <etrade.com> is not confusingly similar to <trade.com>.
B. RIGHTS OR LEGITIMATE INTERESTS
The Respondent has the right to register and hold domain name until such time as the domain name will be developed.
The Respondent has legitimate Rights to register any generic domain name for later development just as every other person - this domain name (word) was first used by the Respondent in 2001.
The domain name, <ihustler.com>, did not display adult advertising for most of it registration period. In fact it only displayed any ads between April 2007 until Sept 2007. After Respondent was made aware of a potential trademark by the Complainant, it removed all adult advertising on that same day.
C. REGISTRATION IN BAD FAITH
The Respondent did register this domain for the sole intention of development and did not make any profit from registering this domain as it does not have any natural traffic to speak of.
Also the respondent removed all adult advertising as soon as he was made aware of potential trademarks.
It is not true that, as the Complainant states, the domain names displayed any Adult advertising for most of its registration as it only was parked with these ads for a short period of time. It is also untrue that it made profit and untrue that the Respondent had any knowledge of any gambling operations. People do not make the mistake of typing in an “i” before the word hustler thinking it would be hustler website.
The website <bonuses.com> is in fact the Respondent’s working legal casino.
The website <wolfis.com> clearly states that <bonuses.com> is one of its websites. The Respondent did comply with any request not to display adult advertising.
The Complainant made knowingly false statements.
The Complainant did not prove any of its statements and they are untrue and this is only an attempt to obtain the <ihustler.com> domain by reverse domain high jacking.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
FINDINGS
A. IDENTICAL OR CONFUSINGLY SIMILAR.
I find the issues on this element in favor of Complainant.
Complainant alleges rights to the HUSTLER mark through its USPTO trademark registration (Reg. No. 1,011,001 issued May 20, 1975). I find that this trademark registration confers rights in the HUSTLER mark to Complainant pursuant to Policy ¶ 4(a)(i). See Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <ihustler.com> domain name contains the
HUSTLER mark in its entirety with the addition of the letter “i” and the generic top-level domain
(“gTLD”) “.com.” I find these to be
slight alterations that render the disputed domain name confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
.").
While Respondent contends that the <ihustler.com> domain name is comprised of the common term “hustler” and as such cannot be found to be confusingly similar to Complainant’s mark, I find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
B. RIGHTS OR LEGITIMATE INTERESTS
I find the issues on this element in favor of Complainant.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent
to show that it does have rights or legitimate interests in a domain name). If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Though Complainant does not allege so, I find that Respondent is not commonly known by the <ihustler.com> domain name pursuant to Policy ¶ 4(c)(ii) since the
WHOIS information identifies Respondent as “Wolf Internet Services LDC c/o
Wolfgang Sauer.” See M. Shanken
Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Complainant
alleges Respondent previously used the <ihustler.com> domain name to display
hyperlinks advertising adult-oriented content. I find that this use competes with
Respondent’s business conducted under the HUSTLER mark. The <ihustler.com>
domain name now redirects Internet users to Respondent’s <bonuses.com>
domain name, an Internet casino.
Complainant also holds a registered trademark with the USPTO for the
HUSTLER CASINO mark (Reg. No. 2,479,911 issued August 21, 2001), and operates
an Internet casino under this mark.
Therefore, I find that Respondent’s current use of the <ihustler.com> domain name also
competes with Complainant’s business. I
presume that Respondent was and is attempting to profit from these uses of the
disputed domain name, either by collecting click-through fees or else deriving
revenue from its online casino. Thus, I
conclude that Respondent’s previous and current uses of the <ihustler.com> domain name
constitute neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0,
FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of
its domain name in order to divert Internet users to a website that offers
search engine services and links to adult orientated websites was not
considered to be in connection with a bona fide offering of goods or
services or a legitimate noncommercial or fair use pursuant to Policy ¶¶
4(c)(i) or 4(c)(iii)); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242
(Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a
confusingly similar domain name to advertise real estate services which
competed with the complainant’s business did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
C. REGISTRATION IN BAD FAITH
I find the issues on this element in favor of Complainant.
Complainant alleges that Respondent’s previous and current uses of the <ihustler.com> domain name both competes with, and disrupts, Complainant’s business. I agree and I conclude that Respondent registered and used the <ihustler.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
I also find that Respondent’s
previous and current uses are likely to cause confusion as to the source,
sponsorship, affiliation, or endorsement of the competing products and services
advertised on the website resolving from the <ihustler.com> domain name. Thus, I conclude that Respondent’s
registration and use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling
Shun Shing, FA 187431 (Nat. Arb. Forum
Oct. 6, 2003) (“Respondent has attempted to commercially benefit from
the misleading <qwestwirless.com> domain name by linking the domain name
to adult oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see
also Asbury Auto. Group, Inc. v.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ihustler.com> domain name be TRANSFERRED
from Respondent to Complainant.
Timothy D. O’Leary, Panelist
Dated: April 7, 2008
National
Arbitration Forum