Blu Media Inc. v. Hemang Infrasructure Private Limited
Claim Number: FA1002001305977
Complainant is Blu Media Inc. (“Complainant”), represented by Chad
Belville, Arizona, USA.
Respondent is Hemang Infrasructure Private Limited (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <justusboy.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 5, 2010.
On February 2, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <justusboy.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 8, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 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@justusboy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <justusboy.com> domain name is confusingly similar to Complainant’s JUSTUSBOYS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <justusboy.com> domain name.
3. Respondent registered and used the <justusboy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Blu Media Inc., purchased the adult entertainment online business from its predecessor-in-interest on January 1, 2010. Complainant’s predecessor-in-interest and Complainant have been using the JUSTUSBOYS.COM mark in connection with a for-profit adult-entertainment service since September 24, 2002. Complainant’s JUSTUSBOYS.COM mark has been recognized for its services by several online review blogs, and has received several awards related to adult-entertainment services such as “Best Erotic Ezine” by Cybersocket Magazine in 2007. Complainant states that in addition to its online presence it distributes a hard copy magazine bearing the JUSTUSTBOYS.COM mark with a distribution of 100,000 copies.
Respondent, Hemang Infrasructure Private Limited, registered the <justusboy.com> domain name on July 10, 2004. The disputed domain name resolves to a website that displays links to websites that compete with Complainant’s adult entertainment business.
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 does not hold a registered trademark for its
JUSTUSBOYS.COM mark. However,
governmental trademark registration is not necessary to establish rights under
Policy ¶ 4(a)(i).
The Panel finds a registration is not required so long as the
Complainant can establish common law rights through proof of sufficient
secondary meaning associated with the mark.
See SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); 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 purchased the JUSTUSBOYS.COM adult entertainment online business from its predecessor-in-interest on January 1, 2010. Complainant’s predecessor-in-interest and Complainant have been using the JUSTUSBOYS.COM mark in connection with a for-profit adult-entertainment service since September 24, 2002. Complainant’s JUSTUSBOYS.COM mark has been recognized for its services by several online review blogs, and has received several awards related to adult-entertainment services such as “Best Erotic Ezine” by Cybersocket Magazine in 2007. Complainant states that in addition to its online presence it distributes a hard copy magazine bearing the JUSTUSTBOYS.COM mark with a distribution of 100,000 copies.
The Panel finds
Complainant has established common law rights in the JUSTUSBOYS.COM mark
through continuous and extensive commercial use of Complainant and its
predecessor-in-interest. The Panel finds
Complainant’s rights in its JUSTUSBOYS.COM mark go back to Complainant’s
predecessor-in-interest’s rights in the mark in 2002, which predate
Respondent’s 2004 registration of the disputed domain name under Policy ¶
4(a)(i). See George
Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25,
2007) (finding that the complainant could establish common law rights in its GW
BAKERIES mark through consistent and continuous use of the mark, which helped
the mark become distinctive and generate “significant goodwill”); see also 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).
Respondent registered the <justusboy.com> domain name, which is confusingly similar to Complainant’s JUSTUSBOYS.COM mark. The disputed domain name merely omits the letter “s” at the end of the mark. Previous panels have held that the deletion of a letter does not negate the confusing similarity between a domain name and the corresponding mark. Therefore, the Panel finds the <justusboy.com> domain name is confusingly similar to Complainant’s JUSTUSBOYS.COM 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 Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
The Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the <justusboy.com>
domain name. If the Panel finds Complainant’s allegations
establish such a prima facie case, the burden shifts to Respondent to
show it has rights or legitimate interests in the disputed domain name pursuant
to the guidelines in Policy ¶4(c). The
Panel finds Complainant’s allegations are sufficient to establish a prima facie case Respondent has no
rights or legitimate interests in the disputed
domain name pursuant to Policy ¶4(a)(ii). Since
no response was submitted in this case, the Panel may presume Respondent has no
rights or legitimate interests in the disputed domain name. However, the Panel will still examine the
record in consideration of the factors listed in Policy ¶4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb.
Forum Jan. 4, 2008) (“It is well established that, once a complainant has made
out a prima facie case in support of
its allegations, the burden shifts to respondent to show that it does have
rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”);
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).”).
Complainant asserts Respondent has no license or agreement with Complainant authorizing Respondent to use its JUSTUSBOYS.COM mark, and the WHOIS information identifies the registrant as “Hemang Infrastructure Private Limited.” The Panel finds no evidence in the record suggesting Respondent is commonly known by the disputed domain name. Thus, the Panel finds Respondent is not commonly known by the <justusboy.com> 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s <justusboy.com>
domain name resolves to a website that offers links to third-party websites
that compete with Complainant’s online adult-entertainment business. The Panel finds this use is not 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 of the disputed domain name pursuant to
Policy ¶4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum
Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Bank of
Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶4(c)(iii).”).
Additionally, Complainant alleges Respondent has engaged in
typosquatting, which occurs when a respondent purposefully includes
typographical errors in the mark portion of a disputed domain name to
capitalize on Internet users who commit those errors. The Panel finds Respondent has engaged in
typosquatting by misspelling Complainant’s mark in the <justusboy.com> domain name, which is
further evidence Respondent does not have rights or legitimate interests in the
disputed domain name pursuant to Policy ¶4(a)(ii). See LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of the complainant's LTD COMMODITIES
mark and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also IndyMac
Bank F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”).
The Panel finds Complainant has satisfied Policy ¶4(a)(ii).
Respondent is using the <justusboy.com>
domain name to redirect Internet users to Respondent’s website that features
links to third-party websites that compete with Complainant’s online adult-entertainment
business. The Panel finds such use
constitutes disruption and is evidence of bad faith registration and use
pursuant to Policy ¶4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).”).
The Panel infers Respondent receives click-through fees for using the displayed links to divert Internet users to these competing third-party websites. Because Respondent’s domain name is confusingly similar to Complainant’s JUSTUSBOYS.COM mark, Internet users accessing Respondent’s disputed domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <justusboy.com> domain name constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds Respondent’s engagement in typosquatting, as previously determined under Policy ¶ 4(a)(ii), is also further evidence Respondent registered and is using the <justusboy.com> domain name in bad faith pursuant to Policy ¶4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶4(a)(iii)).
The Panel finds Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <justusboy.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 22, 2010
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