Blu Media Inc. v. B.T. Croughs
Claim Number: FA0912001298823
Complainant is Blu Media Inc. (“Complainant”), represented by Chad Belville, Arizona, USA. Respondent is B.T. Croughs (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <collegeboyphysical.com>, registered with Go Montenegro Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2009.
On December 18, 2009, Go Montenegro Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <collegeboyphysical.com> domain name is registered with Go Montenegro Domains, Inc. and that Respondent is the current registrant of the name. Go Montenegro Domains, Inc. has verified that Respondent is bound by the Go Montenegro Domains, 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 December 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 11, 2010 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@collegeboyphysical.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <collegeboyphysical.com> domain name is confusingly similar to Complainant’s COLLEGE BOY PHYSICALS mark.
2. Respondent does not have any rights or legitimate interests in the <collegeboyphysical.com> domain name.
3. Respondent registered and used the <collegeboyphysical.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blu Media Inc.,
sells adult content on websites.
Complainant has used the COLLEGE BOY PHYSICALS mark in connection with
one of these websites since August 3, 2004.
Complainant has received online media attention for its website bearing
this mark. Complainant has also spent
over $100,000 in promoting and advertising for this website. Complainant holds a state registration of the
mark with the State of Colorado (Reg. No. 20091216277 issued April 15, 2009).
Respondent, B.T. Croughs, registered the <collegeboyphysical.com> domain name on December 5, 2009. The disputed domain name resolves to a website that displays hyperlinks to third-party websites, some of which are in direct competition with Complainant.
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.
The Panel finds that Complainant need not hold a federal
registration of the COLLEGE BOY PHYSICALS
mark in order to establish rights in that mark under Policy ¶ 4(a)(i) provided
that Complainant can establish common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant
need not own a valid trademark registration for the ZEE CINEMA mark in order to
demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant has used the COLLEGE BOY PHYSICALS mark in connection with selling adult content on a website since August 3, 2004. Complainant has received online media attention for its website bearing this mark. Complainant has also spent over $100,000 in promoting and advertising for this website. Finally, Complainant holds a state registration of the mark with the State of Colorado (Reg. No. 20091216277 issued April 15, 2009). The Panel finds that this evidence is a sufficient showing of common law rights in the COLLEGE BOY PHYSICALS mark under Policy ¶ 4(a)(i). See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <collegeboyphysical.com>
domain name contains Complainant’s entire COLLEGE
BOY PHYSICALS mark, deletes the spaces within the mark, deletes the letter “s,”
and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <collegeboyphysical.com>
domain name is confusingly similar to Complainant’s COLLEGE BOY PHYSICALS mark under Policy ¶ 4(a)(i) because none of the
aforementioned alterations to Complainant’s mark sufficiently distinguishes the
disputed domain name from Complainant’s mark.
See Victoria's Secret v. Internet Inv. Firm
Trust, FA 94344 (Nat. Arb. Forum May 9, 2000)
(finding the domain name <victoriasecret.com> to be confusingly similar
to the complainant’s trademark, VICTORIA’S SECRET); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant makes this showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Although Respondent has not alleged that it has rights or legitimate interests in the disputed domain name, the Panel elects to examine the record under Policy ¶ 4(c).
The WHOIS information for the <collegeboyphysical.com> domain name lists “B.T. Croughs” as the registrant, which does indicate that Respondent is commonly known by the disputed domain name. Respondent has not submitted any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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 names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
The <collegeboyphysical.com> domain name resolves to a website that features hyperlinks to third-party websites, some of which directly compete with Complainant. The Panel presumes that Respondent receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s use of the disputed domain name does not represent 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Since Respondent registered the <collegeboyphysical.com> domain name on December 5, 2009, the disputed domain name has resolved to a website that features hyperlinks to third-party websites, some of which directly compete with Complainant. The Panel finds that such use of the disputed domain name by Respondent disrupts Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent’s use of the <collegeboyphysical.com> domain name to redirect Internet users to competing websites creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. The Panel further finds that Respondent is commercially gaining from this likelihood of confusion through its presumed receipt of click-through fees, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
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 <collegeboyphysical.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 3, 2010
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