LFP Video Group LLC and LFP Publishing Group LLC and LFP IP LLC v. Tony Deep
Claim Number: FA0802001154133
Complainant is LFP Video Group LLC and LFP Publishing Group LLC and LFP IP LLC (collectively, “Complainant”), represented by John
P. Hains, of Lipsitz Green Scime Cambria LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <barelylegalvids.com>, registered with Estdomains, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 4, 2008.
On February 29, 2008, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <barelylegalvids.com> domain name is registered with Estdomains, Inc. and that Respondent is the current registrant of the name. Estdomains, Inc. has verified that Respondent is bound by the Estdomains, 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 March 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 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@barelylegalvids.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <barelylegalvids.com> domain name is confusingly similar to Complainant’s BARELY LEGAL mark.
2. Respondent does not have any rights or legitimate interests in the <barelylegalvids.com> domain name.
3. Respondent registered and used the <barelylegalvids.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant publishes a magazine and produces adult-themed videos, selling its products throughout the world under the BARELY LEGAL mark. Complainant registered the BARELY LEGAL mark with the United States Patent and Trademark Office (“USPTO”) on January 10, 1995 (Reg. No. 1,872,472); with the United Kingdom Intellectual Property Office (“UKIPO”) on March 21, 1997 (Reg. No. 2,110,343); with the Australian Trademark Authority (“IP Australia”) on September 23, 1996 (Reg. No. 718,025); with the German Patent and Trademark Office (“GPTO”) on September 24, 2001 (Reg. No. 39,640,558); and with the Canadian Intellectual Property Office (“CIPO”) on March 3, 1998 (Reg. No. TMA490762). Complainant also owns the <barelylegal.com> domain name.
Respondent registered the <barelylegalvids.com> domain name on July 7, 2006. Respondent has been using the disputed domain name to operate a website where adult-oriented home videos can be uploaded and purchased.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has registered the BARELY LEGAL mark with the
USPTO, the UKIPO, the GPTO, IP Australia, and the CIPO. In Janus
International Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002),
the panel held that "registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive." Therefore, the Panel concludes that
Complainant has established rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”).
Complainant contends that the <barelylegalvids.com> domain name is confusingly similar to Complainant’s mark because it uses both individual terms of the BARELY LEGAL mark and adds the generic term “vids,” which is short for “videos.” In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) the panel found confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. Complainant produces and sells adult-themed videos; Complainant asserts that “vids” is an abbreviated form of “videos,” thereby describing an aspect of Complainant’s business. The Panel therefore holds that the addition of the generic term “vids” does not distinguish the disputed domain name from Complainant’s mark for the purpose of confusing similarity under Policy ¶ 4(a)(i). Moreover, because all registered domain names are required to have a top-level domain, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the BARELY LEGAL mark. Therefore, the Panel concludes that the <barelylegalvids.com> domain name is confusingly similar to Complainant’s BARELY LEGAL mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of showing that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii) thus shifting the burden to Respondent to demonstrate that it has rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Because Respondent has failed to respond to the Complaint,
the Panel may presume that Respondent has neither rights nor legitimate
interests in the disputed domain name.
The panel in Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) found that a
respondent’s failure to respond allowed a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence. Therefore, the Panel will examine all
evidence in the record to determine if Respondent has any rights or legitimate
interests under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in the disputed domain name.”).
The WHOIS information does not suggest that Respondent is commonly known by the <barelylegalvids.com> domain name, and Complainant does not indicate that it has authorized Respondent to use the BARELY LEGAL mark. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent is using the disputed domain name to offer adult-oriented videos in competition with Complainant’s business. Complainant contends that such use evidences Respondent’s lack of rights and legitimate interests in the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name to operate a website offering products competing with those offered by Complainant fails to demonstrate 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The website that resolves from the <barelylegalvids.com> domain name offers products competing with those offered by Complainant, offering Internet users the ability to license content from the website for a fee. Complainant contends that Respondent is intending to benefit from the success of Complainant’s business. Respondent’s use of the disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. The Panel finds that Respondent’s commercial use of the disputed domain name is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
Moreover, Respondent is using the disputed domain name to
operate a website where products similar to Complainant’s products are
offered. In General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar.
26, 2001), the panel found bad faith where a competitor of the complainant
registered and used a domain name confusingly similar to the complainant’s
PENTHOUSE mark to host an adult-oriented web site. Here also, by operating an adult-oriented website
in competition with Complainant’s website, the Panel finds evidence that
Respondent registered and is using the disputed domain name in bad faith under
Policy ¶ 4(b)(iii).
See
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barelylegalvids.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 17, 2008
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