Fantasy Holdings LLC v. Philip Stillman
Claim Number: FA1207001453240
Complainant is Fantasy Holdings LLC (“Complainant”), represented by Rob G. Leach of Charmasson, Buchaca & Leach, LLP, California, USA. Respondent is Philip Stillman (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <leluv.com> and <leluv.net>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2012; the National Arbitration Forum received payment on July 12, 2012.
On July 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <leluv.com> and <leluv.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 July 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@leluv.com, postmaster@leluv.net. Also on July 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lelux.com> and <lelux.net> domain names are confusingly similar to Complainant’s LELUX mark.
2. Respondent does not have any rights or legitimate interests in the <lelux.com> and <lelux.net> domain names.
3. Respondent registered or used the <lelux.com> and <lelux.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant owns the LELUV mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,868,440 filed July 30, 2009; registered October 26, 2010).
i. Respondent is not and has not been commonly known by the “leluv” name or the domain names at issue.
ii. Respondent previously worked for Complainant and was responsible for registering domain names for Complainant but instead placed his own information in the registrant information.
iii. Respondent, in July or August of 2010, stopped working for Complainant and terminated the hosting of Complainant’s website that had resolved from the <leluv.com> and <leluv.net> domain names.
i. Respondent is a prior employee of Complainant and was supposed to register the <leluv.com> and <leluv.net> domain names in Complainant’s company name as part of his duties, but instead registered the domain names to himself.
ii. Respondent terminated the hosting for Complainant’s website in July or August of 2010. Respondent had previously pointed the domain names to <sextoyfactorydirect.com> which sold goods in competition with Complainant.
iii. Respondent has also resolved the disputed domains to other competing websites.
iv. Respondent most recently has resolved the disputed domain names to <godaddy.com>.
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.
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.”).
Complainant contends that it has rights in the LELUV mark through its trademark registration of that mark with the USPTO (Reg. No. 3,868,440 filed July 30, 2009; registered October 26, 2010). The Panel notes that while Complainant states that it has other trademark registrations in Canada, Australia, the United Kingdom, and the European Community, that Complainant has not provided any evidence of those registrations. Based upon Complainant’s trademark registration with the USPTO, the Panel finds that Complainant has rights in the LELUV mark that date back to the filing date of July 30, 2009. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant contends that Respondent’s <leluv.com> and <leluv.net> domain names are identical to the LELUV mark. The Panel notes that the disputed domain name merely adds the generic top-level domain (“gTLD”) “.com” or “.net.” Therefore, the Panel finds that Respondent’s disputed domain names are identical to Complainant’s LELUV mark under Policy ¶ 4(a)(i). See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”).
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 contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent is not and has not been commonly known by the “leluv” name or the domain names at issue. Complainant contends that Respondent was a former employee and was meant to register the disputed domain names for Complainant’s company. The Panel notes that the WHOIS information on record indicates that the registrant of the domain names is “Philip Stillman.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the evidence and arguments on record. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant).
Complainant argues that Respondent previously worked for Complainant and was responsible for registering domain names for Complainant but instead placed his own information in the registrant information for the <leluv.com> and <leluv.net> domain names. Further Complainant claims that Respondent, in July or August of 2010, stopped working for Complainant and terminated the hosting of Complainant’s website that had resolved from the <leluv.com> and <leluv.net> domain names. Complainant contends that after terminating the hosting for Complainant’s website, Respondent pointed the domain names to <sextoyfactorydirect.com>, which sold goods in competition with Complainant. Complainant also contends that Respondent has also resolved the disputed domains to other competing websites. The Panel finds this to be true, and the Panel finds that Respondent is not using the disputed domain names for 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.”).
Complainant further states that Respondent most recently has resolved the disputed domain names to <godaddy.com>. The Panel finds that this use is unrelated to Complainant’s business. Therefore, the Panel finds that Respondent is not using the disputed domain names for 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business 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).”).
Complainant argues that Respondent registered and is using the disputed domain names in bad faith by preventing Complainant from using the LELUV trademark in a corresponding domain name under Policy ¶ 4(b)(ii). Complainant argued that Respondent was Complainant’s former employee and was in charge of registering the disputed domain names for Complainant but instead registered them for himself. The Panel finds that Respondent has registered and used the disputed domain names in order to prevent Complainant from having a domain name reflecting its mark, and that Respondent has engaged in a pattern of bad faith conduct, and the Panel finds accordingly under Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith where (1) the respondent knew or should have known of the complainant’s SONY marks and (2) the respondent registered multiple domain names which infringed upon the complainant’s mark).
Complainant also argues that Respondent registered and has used the disputed domain name in bad faith to disrupt Complainant’s business. Complainant argues that Respondent previously worked for Complainant and upon leaving Complainant’s company disconnected the disputed domain names from the hosting service for Complainant’s domain names. Further, Complainant argues that Respondent resolved the disputed domain name to directly competing adult goods websites that have interfered with Complainant’s business. The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See 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).
Complainant argues that Respondent has also registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). The Panel notes that Complainant does not specify how Respondent is profiting from its use of the website, other than to mention that the domain name has previously resolved to competing websites. The Panel infers that Respondent was commercially compensated for its activities with the disputed domain names. The Panel finds that Respondent registered and has used the disputed domain names to create confusion as to Complainant’s affiliation with the websites for commercial gain, and the Panel finds that bad faith exists under Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Complainant asserts that Respondent used to work for Complainant and that Respondent was in charge of registering the disputed domain names for Complainant’s use. Complainant contends that after Respondent left Complainant’s company, the domain names were removed from the hosting service that contained Complainant’s official website. The Panel finds that the fact that Respondent was an employee of Complainant when it registered the disputed domain names and later took the domain names for its own use indicates that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leluv.com> and <leluv.net> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 29, 2012
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