Kick Ass Pictures, Inc. v. Yip Alex
Claim
Number: FA0412000376390
Complainant is Kick Ass Pictures, Inc. (“Complainant”),
represented by Allan B. Gelbard, 15760 Ventura Blvd., Suite 801,
Encino, CA 91436. Respondent is Yip Alex (“Respondent”), P.O. Box
97001, Bedford, VA 45224.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <barefoot-confidential.com>, registered
with Go Daddy Software, 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
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
6, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 6, 2004.
On
December 7, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <barefoot-confidential.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, 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 9, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 29, 2004 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@barefoot-confidential.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 National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
January 7, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
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 <barefoot-confidential.com>
domain name is confusingly similar to Complainant’s BAREFOOT CONFIDENTIAL mark.
2. Respondent does not have any rights or
legitimate interests in the <barefoot-confidential.com> domain
name.
3. Respondent registered and used the <barefoot-confidential.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Kick Ass Picture, Inc., produces and distributes adult entertainment
films. Complainant produces and
distributes the “Barefoot Confidential” series of foot fetish films. Complainant has been producing this highly
successful series since August 1998, and has registered the BAREFOOT
CONFIDENTIAL mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,758,528 issued September 2, 2003).
Respondent
registered the <barefoot-confidential.com> domain name on May 11,
2004. Respondent’s domain name resolves
to a competing commercial foot fetish website.
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.
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 has
established rights in the BAREFOOT CONFIDENTIAL mark through registration with
the USPTO and through continuous use of the mark in commerce since 1998. See
Am. Online, Inc. v. Thomas
P. Culver Enters., D2001-0564 (WIPO June 18, 2001) finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark; see also Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s domain name is identical to Complainant’s mark but
for the addition of the generic top-level domain “.com” and the placement of a
hyphen between the terms of Complainant’s BAREFOOT CONFIDENTIAL mark. Such changes are insufficient to distinguish
Respondent’s domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Isleworth
Land Co. v. Lost in Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”; see also
Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
finding that the hyphens and top-level domains are irrelevant for purposes of
the Policy; see also Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5,
2002) (“[T]he absence of a
space and the hyphen between the words of the mark are not changes that are
capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am. Online, Inc. v. Clowers, FA
199821 (Nat. Arb. Forum Nov. 14, 2003) finding that the failure to challenge a complainant’s
allegations allows a panel to accept all of complainant’s reasonable
allegations and inferences as true; see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept complainant’s
allegations as true.
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names; see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See
Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) finding no rights or
legitimate interests because Respondent is not commonly known by the disputed
domain name or using the domain name in connection with a legitimate or fair
use; see also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given
the WHOIS contact information for the disputed domain, one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Moreover,
Respondent has used the <barefoot-confidential.com> domain name to
direct Internet users to a competing commercial foot fetish website. Such competing use of a domain name
confusingly similar to Complainant’s BAREFOOT CONFIDENTIAL mark 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 domain name
pursuant to Policy ¶ 4(c)(iii). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc.,
FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal
services and sale of law-related books under Complainant's name is not a bona
fide offering of goods and services because Respondent is using a mark
confusingly similar to the Complainant's to sell competing goods.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) by registering a domain name confusingly similar to Complainant’s
mark and using it to operate a competing commercial foot fetish website. See
EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business; see also S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding Respondent
acted in bad faith by attracting Internet users to a website that competes with
Complainant’s business.
Additionally,
the Panel finds that Respondent had actual or constructive knowledge of
Complainant’s BAREFOOT CONFIDENTIAL mark when registering the <barefoot-confidential.com>
domain name because Complainant had registered the mark with the USPTO. Moreover, the fact that Respondent uses the
domain name to operate a competing commercial foot fetish website is further
evidence that Respondent had actual or constructive knowledge of Complainant’s
mark when registering the disputed domain name. Therefore, Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration; see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof.”).
Furthermore, Respondent
uses the disputed domain name to operate a commercial foot fetish website that
directly competes with Complainant.
Since the disputed domain name contains Complainant’s mark, a consumer
searching for Complainant would become confused as to Complainant’s affiliation
with the resulting website. Therefore,
Respondent’s opportunistic use of the disputed domain name represents bad faith
registration and use under Policy ¶ 4(b)(iv).
See Access Res. Servs., Inc.
v. Molle, FA 97750 (Nat. Arb. Forum Aug. 13, 2001) (“Respondent's registration and use
of the <misscleosucks.com> omain name to promote competing psychic
services, assumedly for commercial gain, by creating a likelihood of confusion
with Complainant’s mark is evidence of bad faith pursuant to Policy ¶
4(b)(iv).”); see also
Amazon.com, Inc. v. Shafir, FA
196119 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to 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 <barefoot-confidential.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
January 21, 2005
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