Path Media Holdings, LLC v. Vance Van Patten
Claim Number: FA1203001435698
Complainant is Path Media Holdings, LLC (“Complainant”), represented by Aaron D. Aftergood, California, USA. Respondent is Vance Van Patten (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collegegirlsgowild.net>, registered with Name.com LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2012; the National Arbitration Forum received payment on March 21, 2012.
On March 22, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <collegegirlsgowild.net> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@collegegirlsgowild.net. Also on March 23, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 3, 2012.
On April 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name <collegegirlsgowild.net> be transferred from Respondent to Complainant.
A. Complainant alleges that:
B. Respondent alleges that:
a. The <collegegirlsgowild.net> domain name is not confusingly similar to Complainant’s GIRLS GONE WILD mark because of the addition of the term “college” and the change in phrasing from Complainant’s mark.
b. Respondent uses the <collegegirlsgowild.net> domain name to provide adult entertainment services that differ from Complainant’s adult entertainment services.
c. Respondent does not receive any commercial gain and does not attempt to divert Complainant’s customers.
FINDINGS
(1) the domain name, <collegegirlsgowild.net>, 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.
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."
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 (through its first Exhibit) provides credible evidence of its trademark registration with the United States Patent and Trademark Office (USPTO) for its GIRLS GONE WILD mark (Reg. No. 4,010,741 registered August 16, 2011). The Panel concludes that this federal registration is sufficient proof that Complainant owns rights in the GIRLS GONE WILD mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
On its face, Respondent’s <collegegirlsgowild.net> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark. The mere addition of the term “college” to the mark does not summarily dismiss a consumer’s reasonable
conclusion that the corporate sponsors are legally alloyed.
Similarly, Respondent’s snip and trim of the letters “n” and “e” from “Gone,” and the deletion of the spaces between the words, is mere typographical trivia, and
as such, is not likely to trigger a differentiation, as to the source of the goods, in the perceptions of pornography surfers.
As Respondent’s cited “due diligence “ in creating market segmentation has failed to adequately distinguish the referenced mark from the disputed mark, the Panel holds that Respondent’s <collegegirlsgowild.net> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling); see also 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).
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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. 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.”).
Complainant’s Amended Complaint cites in its Respondent Information section that the name of the domain name holder is Vance Van Patten, which name bears no resemblance to the disputed domain of <collegegirlsgowild.net>. Through Complainant’s Notice of Copyright Infringement (dated February 23, 2012) Complainant disavows that it ever authorized Respondent to use any variation of its name. Complainant therefore, has met its burden to show that Respondent does not have rights or a legitimate interest in the disputed domain name and the burden is then shifted to Respondent to show that it does have rights or legitimate interests in the domain name.
Respondent has not met its burden to rebut Complainant’s prima facie case. Most aptly, Respondent has failed to show screenshots of its web page to evidence non-competing and legitimate use of the disputed domain. Respondent also failed to provide evidence that Respondent was authorized by Complainant to use a variation of its trademark, or any evidence that it was commonly known by the <collegegirlsgowild.net> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant states that Respondent lacks rights and legitimate interests in the <collegegirlsgowild.net> domain name because Respondent is attempting to divert Internet users to Respondent’s website for Respondent’s commercial gain.
Respondent did not deny Internet use, but claimed that it offered non-competing adult-oriented entertainment services at the resolving website, as their services licensed content solely involving clothed females and naked males (CFNM); whereas Complainant’s market is not thus, differentiated.
The Panel is not persuaded that Respondent has sufficiently differentiated its mark, and segmented its market, so as to not intentionally benefit from the use of a confusingly similar mark, targeted to a similar audience. Respondent, consequently, became the not-so-incidental beneficiary of Complainant’s fame, which was garnered through extensive advertising expenditures, as cited in Complainant’s Notice of Copyright Infringement letter of February 23, 2012.
As the Panel has determined that Respondent is using the <collegegirlsgowild.net> domain name to offer competing adult-oriented entertainment services, the Panel holds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant’s argument under Policy ¶ 4(a)(iii) is that Respondent registered and used the <collegegirlsgowild.net> domain name for the purpose of attracting Internet users to Respondent’s website, by creating a likelihood of confusion as to Complainant’s endorsement of Respondent’s website.
Complainant (GGW Brands, LLC) has provided undisputed evidence (Exhibit B, Trademark Electronic Search System) that the GIRLS GONE WILD mark was first used in commerce in 1999, well before Respondent’s registration of disputed domain name. And in accordance with Complainant’s “notice of copyright infringement” letter of February 23, 2012, Complainant’s sales worldwide are over one billion dollars since 1999, and they have spent millions of dollars building and maintaining their brand.
Given this worldwide and extensive use of Complainant’s mark, Panel may presume that Respondent had at least constructive knowledge of Complainant’s mark at the time of registration of the disputed domain name.
Respondent, in its filed Response, acknowledges the existence of Complainant’s mark, by its retorts that, Respondent made an initial effort to distinguish the name by prefacing the famous mark with the word “college,” by targeting a niche market, and by exercising “due diligence to insure that the domain name in question is not, and has not, been used in bad faith.”
Complainant’s “notice of copyright infringement” letter of February 23, 2012 to Respondent (Respondent’s Exhibit C) states, in part, that, “It has come to our attention that your website, located at <https://collegegirlsgowild.net> is reproducing and distributing unauthorized copies of Girls Gone Wild content protected by copyright and trademark law.”
This unrefuted allegation of reproduction and distribution of unauthorized copies of Complainant’s content under the banner of <collegegirlsgowild.net> constitutes sufficient evidence that Respondent is using the disputed domain name, in an attempt to create a likelihood of confusion with Complainant, and is presumably, commercially benefiting from the resolving website.
The Panel therefore, concludes that Respondent has registered and used the <collegegirlsgowild.net> domain name in bad faith under Policy¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <collegegirlsgowild.net> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: May 03, 2012
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