Barrett Enterprises Group v. Modern
Limited - Cayman Web Development
Claim
Number: FA0306000162191
Complainant is Barrett Enterprises Group, Carson
City, NV (“Complainant”) represented by Allan
B. Gelbard of The Law Offices of Allan B. Gelbard. Respondent is Modern Limited - Cayman Web Development, George Town, Grand
Cayman, Cayman Islands, British West Indies (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <moonlightbunnyranch.com>, registered with
Address Creation.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 12, 2003; the Forum received a hard copy of the
Complaint on June 12, 2003.
On
June 18, 2003, Address Creation confirmed by e-mail to the Forum that the
domain name <moonlightbunnyranch.com> is registered with Address
Creation and that Respondent is the current registrant of the name. Address
Creation verified that Respondent is bound by the Address Creation 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
June 18, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 8, 2003, 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@ moonlightbunnyranch.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 14, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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 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. The domain name registered by Respondent,
<moonlightbunnyranch.com>, is identical to Complainant’s MOONLIGHT
BUNNY RANCH mark.
2. Respondent has no rights to or legitimate
interests in the <moonlightbunnyranch.com> domain name.
3. Respondent registered and used the <moonlightbunnyranch.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Barrett Enterprises Group, does business as the MOONLIGHT BUNNY RANCH, a world
famous legal brothel in Carson City, Nevada.
Complainant provides online and other entertainment services under the
MOONLIGHT BUNNY RANCH mark.
Furthermore, Complainant’s business operation has received wide
publicity in the media.
Complainant’s
first commercial use of the MOONLIGHT BUNNY RANCH mark occurred December 4,
1992, and Complainant has been known exclusively under that mark and the
shortened version, BUNNY RANCH, since then.
In addition, Complainant filed for a federally registered trademark with
the United States Patent and Trademark Office for the MOONLIGHT BUNNY RANCH
mark.
Respondent
registered the <moonlightbunnyranch.com> domain name November 19,
2001. Respondent is using the disputed
domain name to offer various adult entertainment services that are similar to
services offered by 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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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.
Respondent
established in this proceeding that it has common law rights in the MOONLIGHT
BUNNY RANCH mark through Complainant’s pending trademark application and by
continuous use in commerce since 1992 pursuant to licenses issued by the State
of Nevada. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law).
The domain name
registered by Respondent, <moonlightbunnyranch.com>, is identical
to Complainant’s MOONLIGHT BUNNY RANCH mark because Respondent merely adds the
top level domain name “.com” to Complainant’s entire mark. The Panel finds that simply adding “.com” to
Complainant’s mark is not sufficient to distinguish Respondent’s domain name
from Complainant’s mark since a top level domain name is required of all domain
name registrants. 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); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (the <bodybyvictoria.com> domain name is identical to Complainant’s
BODY BY VICTORIA mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant
established that it had rights to and legitimate interests in the mark
contained in the domain name Respondent registered. Complainant also alleges that Respondent has no such rights and
Respondent did not file a Response in this proceeding to controvert those
allegations. Thus, the Panel accepts as
true all reasonable inferences and allegations submitted in the Complaint. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true); see also Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name).
Respondent’s
WHOIS contact information for the <moonlightbunnyranch.com> domain
name lists its name to be Modern Limited – Cayman Web Development. Based on the WHOIS contact information and
the fact that no evidence before the Panel indicates otherwise, the Panel finds
that Respondent is not commonly known by the disputed domain name. 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 Respondent has no rights in a domain name when Respondent is not
known by the mark).
Respondent is
using the <moonlightbunnyranch.com> domain name, which is
identical to Complainant’s mark, to attract Internet users to its website. The website associated with the disputed
domain name offers online entertainment services similar to adult entertainment
services offered by Complainant on the Internet. Thus, the Panel finds that Respondent is not using the disputed
domain name in connection with a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and Respondent is not making a legitimate noncommercial or
fair use of the site under Policy ¶ 4(c)(iii).
See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or
legitimate interests when Respondent is using a domain name identical to
Complainant’s mark and is offering similar services); see also Am. Online Inc. v. Shenzhen JZT Computer
Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s
operation of a website offering essentially the same services as Complainant
and displaying Complainant’s mark was insufficient for a finding of bona fide
offering of goods or services).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant has
alleged that Respondent acted in bad faith.
Respondent registered a domain name that contains in its entirety
Complainant’s mark and Respondent is offering services that are similar to the
services Complainant offers on the Internet but at Respondent’s website hosted
at the <moonlightbunnyranch.com> domain name. Thus, the Panel finds that Respondent is
using the disputed domain name to attract, for commercial gain, Internet users
to its website by creating a likelihood of confusion with Complainant’s
MOONLIGHT BUNNY RANCH mark as to the sponsorship of its website and the
services being offered at said website.
See Identigene, Inc. v.
Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
Respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that Complainant is the source of or is sponsoring the services
offered at the site); see also America
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that
Respondent intentionally attempted to attract Internet users to his website for
commercial gain by creating a likelihood of confusion with Complainant’s mark
and offering the same chat services via his website as Complainant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <moonlightbunnyranch.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 28, 2003.
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