Summit Group, LLC. v. LSO, Ltd
Claim Number: FA0607000758981
PARTIES
Complainant is Summit Group, LLC. (“Complainant”), represented by Kyle T. Peterson, 4800 IDS Center, 80 South 8th Street, Minneapolis, MN 55427. Respondent is LSO, Ltd (“Respondent”), represented by Jonathan D. Jay, of Leffert Jay & Polglaze, P.A., 150 South 5th Street, Suite 1900, Minneapolis, MN 55402.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifestylelounge-travel.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Hon. (Ret.) Nelson A. Diaz, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 27, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 27, 2006.
On July 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <lifestylelounge-travel.com>
domain name is registered with Go Daddy Software, Inc. and that the 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 August 2, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 22, 2006 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@lifestylelounge-travel.com by e-mail.
A timely Response was received and determined to be complete on August 22,
2006.
Complainant submitted an Additional Submission on August 25, 2006. The National Arbitration Forum determined it
to be timely and complete pursuant to Supplemental Rule 7.
Responded submitted an Additional Submission on August 30, 2006. The Panel considered Respondent’s Additional
Submission in reaching its decision.
On August 31, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Summit Group, LLC, alleges that it provides online introductory and
entertainment services at <lifestylelounge.com>. Such services include providing an online
forum for adults to socially interact by initiating new contacts and/or
communicating with existing contacts.
Complainant further alleges that it provides its services under the mark
LIFESTYLE LOUNGE and is the owner of the LIFESTYLE LOUNGE mark which is
registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,913,057 issued December 21, 2004,
filed October 14, 2003). Complainant
claims a date of first use in commerce of September 1, 2001, and claims to have
extensively advertised its LIFESTYLE LOUNGE mark for its adult entertainment
services since long before Respondent adopted the <lifestylelounge-travel.com>
domain name.
Respondent, LSO, Ltd. registered the domain name <lifestylelounge-travel.com>
on October 4, 2004. Currently, web
pages resolving to <lifestylelounge-travel.com>
directed users toward a variety of travel services directed at
adult-themed entertainment. Complainant
alleges that the domain name <lifestylelounge-travel.com> is
confusingly similar to the LIFESTYLE LOUNGE trademark in which Complainant has
rights. The domain name is also
confusingly similar to Complainant’s homepage at <lifestylelounge.com>. Complainant contends that Respondent has no
prior rights in and to the domain name.
By using a domain name that entirely incorporates Complainant’s
trademark for its online adult introductory and entertainment services,
Complainat contends that Respondent has intentionally attempted to attract, for
commercial gain, Internet users to its web site or other on-line location, by
creating a likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of Respondent’s website by
Complainant.
B. Respondent
Respondent denies all the allegations. Specifically, Respondent alleges that the addition
of a hyphen and the term “travel”
sufficiently distinguishes the <lifestylelounge-travel.com> domain
name from Complainant’s LIFESTYLE LOUNGE mark and, as a result, Respondent’s
domain name is not confusingly similar to Complainant’s LIFESTYLE LOUNGE mark
pursuant to Policy ¶ 4(a)(i).
Respondent further alleges that it is the longtime owner of a series of
registered LIFESTYLES marks, that such use predates Complainant’s adoption of
the LIFESTYLE LOUNGE mark and, therefore, the public is likely to associate the
<lifestylelounge-travel.com> domain name with Respondent, and not
Complainant. Finally, Respondent alleges that Complainant has not proven that
the domain name was registered in bad faith.
C. Additional Submissions
The panel has considered the parties’ timely submitted Additional
Submissions.
In its Additional Submission, Complainant alleges that the <lifestylelounge-travel.com>
domain name does not incorporate the plural mark LIFESTYLES and, thus, Respondent’s rights in the LIFESTYLES mark confers no rights in
that domain name. Finally, Complainant
provides evidence that, as early as 2001, Respondent had express notice of Complainant’s rights in the
LIFESTYLE LOUNGE mark. Thus, the domain
name was adopted and used in bad faith.
In its Additional Submission, Respondent contends that: there is no
actual confusion, Complainant offers no travel-related services (and is not
authorized to do so); Respondent has rights in the <lifestylelounge-travel.com>
domain name as a result of its
longstanding use of the LIFESTYLES
mark in connection with travel related services; Complainant has not proven
that it owns protectable rights in the LIFESTYLE LOUNGE mark; the domain
name was adopted prior to when Complainant registered the LIFESTYLE LOUNGE mark.
FINDINGS
The Panel finds that Complainant has established prior rights in the
distinctive LIFESTYLE LOUNGE mark in
the United States in connection with its online introductory and entertainment services at
<lifestylelounge.com>. The Panel finds that Respondent’s domain name,
<lifestylelounge-travel.com>, is confusingly similar to Complainant’s mark.
The Panel further finds that Respondent
is not commonly known by the domain name
for purposes of Policy ¶ 4(c)(ii) and has no rights or legitimate interests in respect of the domain name.
The Panel finds that the Respondent’s use of the domain name to operate a website is neither a bona
fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 registered the
LIFESTYLE LOUNGE mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,913,057 issued
December 21, 2004, filed October 14, 2003).
Altough Respondent registered the <lifestylelounge-travel.com>
domain name before the date of registration, Complainant’s rights in a
registered mark date back to the filing date.
Therefore, the Panel finds that because Complainant filed for a
trademark registration for the LIFESTYLE LOUNGE mark before Respondent
registered the disputed domain name on October 4, 2004, Complainant has established
rights in the mark pursuant to Policy ¶ 4(a)(i). See Planetary Soc’y v. Rosillo, D2001-1228
(WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s
trademark rights date back to the application’s filing date); see also ESPN,
Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000)
(concluding that the complainant demonstrated its rights in the SPORTSCENTER
mark through its valid trademark registrations with the USPTO and similar
offices around the world); 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). Further, Complainant has common law rights
in the mark that pre-date its filing for trademark registration, as evidenced
by Complainant’s date of first use, alleged in its trademark application.
The <lifestylelounge-travel.com> domain name is confusingly similar to Complainant’s LIFESTYLE LOUNGE mark because it contains the entire mark and merely adds a hyphen and the term “travel.” While Respondent claims that it has registered the LIFESTYLES and LIFESTYLES TOURS & TRAVEL marks with the USPTO, Respondent’s mark is plural and Complainant’s mark is singular, and Respondent makes no argument as to why it chose to include the term “lounge” in the domain name when Respondent’s mark does not contain that term. The Panel finds that the mere addition of a hyphen and common term to the end of Complainant’s mark is insufficient to differentiate the <lifestylelounge-travel.com> domain name from the LIFESTYLE LOUNGE mark and as a result, the disputed domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Eastman Chemical Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD “.com” are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”).
Finally, the Panel
finds that whether or not Complainant offers travel services is wholly
irrelevant to the determination of the similarity between Complainant’s mark
and Respondent’s domain name. As stated
above, the addition of a generic term, in this case “travel,” to the end of
Complainant’s mark does not obviate the similarity between the mark and the
domain name.
Because the Complainant has made a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii), the burden has shifted to
Respondent to show it does have rights or legitimate interests. See Document Technologies, Inc. v.
International Electronic Communications Inc., D2000-0270 (WIPO Jun. 6,
2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant
prove the presence of this element (along with the other two), once a
Complainant makes out a prima facie showing, the burden of production on
this factor shifts to the Respondent to rebut the showing by providing concrete
evidence that it has rights to or legitimate interests in the Domain Name.”); see
also Hanna-Barbera
Productions, 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 Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent is not commonly known by the <lifestylelounge-travel.com> domain name, because the WHOIS information lists “LSO, Ltd” as the registrant of the domain name, and there is no other evidence in the record indicating that Respondent is commonly known by the disputed domain name. Further, complainant has not authorized or licensed Respondent to register or use a domain name incorporating any variation of Complainant’s LIFESTYLE LOUNGE mark. The Panel thus finds that Respondent does not have rights or legitimate interests in the domain name according to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The <lifestylelounge-travel.com> domain name resolved to a
website providing travel services directed at the adult entertainment
market. The Panel thus finds that
Complainant is well-known in the adult entertainment market and that Respondent
is redirecting Internet users seeking Complainant’s adult entertainment
services to its own website for commercial gain. The Panel thus finds that Respondent has not used the disputed
domain name in connection with 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 Wells Fargo & Co. v.
Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the
respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet
users to a domain name featuring magazine subscriptions was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the domain name); see also Coryn Group,
Inc. v. Media Insight, FA 198959 (Nat.
Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain
names for a bona fide offering of goods or services nor a legitimate
noncommercial or fair use because the respondent used the names to divert
Internet users to a website that offered services that competed with those
offered by the complainant under its marks).
The Panel finds that Respondent’s
registration and use of the <lifestylelounge-travel.com> domain
name represents bad faith within Policy ¶ 4(b)(iv) because Respondent has used
the disputed domain name in the past to operate an adult entertainment website
where it offers travel services.
Complainant is also in the adult entertainment business and Respondent
is attempting to divert Internet users to its own competing adult entertainment
website and create a likelihood of confusion as to the source, sponsorship,
affiliation or endorsement of its website with Complainant. The Panel finds that Respondent is taking
advantage of the confusing similarity between the disputed domain name and
Complainant’s mark in order to profit from the goodwill associated with the
LIFESTYLE LOUNGE mark in violation of Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept.
12, 2000) (finding bad faith where the respondent registered the domain name
<bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website);
see also Am. Online, Inc.
v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where the respondent registered and used a domain name
confusingly similar to the complainant’s mark to attract users to a website
sponsored by the respondent).
The Panel also finds that
Respondent has registered and used the disputed domain name in order to disrupt
Complainant’s business by maintaining a website targeting Complainant’s core
market and offering related adult entertainment services, and that such conduct
indicates bad faith under Policy ¶ 4(b)(iii).
See Marriott International, Inc. v. MCM Tours, Inc., FA 444510
(Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus
operates in the same business as the Complainant. The parties can therefore be
considered as competitors. The Panel thus finds that the Respondent registered
the domain name primarily for the purpose of disrupting the business of a
competitor, which constitutes evidence of registration and use in bad faith
under Policy 4(b)(iii).”); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
Finally, the Panel finds that, based on the totality of the circumstances, Respondent’s registration and use of the <lifestylelounge-travel.com> domain name is indicative of bad faith under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”).
In its Additional Submission,
Complainant claims that Respondent had actual knowledge of Complainant’s mark
before it registered the <lifestylelounge-travel.com> domain name
in 2004, because both parties allegedly entered into a sponsorship agreement in
December 2001 for the Reno Lifestyles Convention. Complainant also provides evidence of an article in Respondent’s
magazine referencing Complainant’s LIFESTYLE LOUNGE mark and the
<lifestylelounge.com> domain name.
On the basis of these claims, the Panel finds that, given the previous
relationship between Complainant and Respondent, as well as Complainant’s
registration of the LIFESTYLE LOUNGE mark in the United States, Respondent had
actual or constructive knowledge of Complainant’s mark when registering the
<lifestylelounge-travel.com> domain name. Given that Respondent knew or should have
known of Complainant’s LIFESTYLE LOUNGE mark, the Panel finds that Respondent’s
registration and use of the disputed domain name was in bad faith under Policy
¶ 4(a)(iii). See Deep Foods, Inc. v.
Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while
mere constructive knowledge is insufficient to support a finding of bad faith,
where the circumstances indicate that the respondent had actual knowledge of
the complainant’s mark when it registered the domain name, panels can find bad
faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug.
17, 2006) (finding bad faith where the respondent was “well-aware” of the
complainant’s YAHOO! mark at the time of registration and had even contacted
the complainant about entering into a business partnership).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifestylelounge-travel.com>
domain name be TRANSFERRED from Respondent to Complainant.
Nelson A. Diaz, Panelist
Dated: September 14, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum