Complainant is General Media Communications, Inc., New York, NY, USA ("Complainant") represented by Chris Bolton. Respondent is Digital Video Distribution Ltd., Worcestershire, United Kingdom ("Respondent").

The domain name at issue is <penthousemovies.com> registered with Network Solutions.

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.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 31, 2001; the Forum received a hard copy of the Complaint on June 1, 2001.

On June 1, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <penthousemovies.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5 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 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 2001 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@penthousemovies.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 June 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.

The <penthousemovies.com> domain name is confusingly similar to Complainant’s PENTHOUSE family of marks.

Respondent has no rights or legitimate interests in respect to the <penthousemovies.com> domain name.

Respondent registered and is using the <penthousemovies.com> domain name in bad faith.

B. Respondent did not file a response in this matter.

Since 1969, Complainant, through its predecessors in interest, has published a well-known magazine using the trademark PENTHOUSE throughout the United States, and internationally. Since that time, and by virtue of its popularity, Complainant's PENTHOUSE publication has generated many millions of dollars in sales, and Complainant has capitalized on that popularity to expand to a number of other products and services using the PENTHOUSE mark, including on-line adult-entertainment services at its PENTHOUSE websites and most notably its PENTHOUSE.COM website. In addition, Complainant distributes its home movies in more than forty five countries.

Complainant has also registered the following PENTHOUSE marks in the UK Patent Office and the Office for Harmonization of the Internal Market:

As a result of Complainant's long and extensive use and promotion of its PENTHOUSE marks, such marks have acquired a distinctiveness and secondary meaning signifying Complainant, and Complainant has now built up and owns valuable goodwill, which is symbolized by the PENTHOUSE marks. By virtue of Complainant's extensive use of and advertising of its PENTHOUSE marks, including its PENTHOUSE websites, the PENTHOUSE marks have become well-known and famous.

Respondent registered the <penthousemovies.com> domain name on November 24, 1999. Respondent is engaged in selling adult-entertainment videotapes, including some from competitors of Complainant, on its website located at the disputed domain name.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) 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;

(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 its rights to and use of the PENTHOUSE marks. The <penthousemovies.com> domain name contains in its entirety Complainant’s PENTHOUSE mark, combined with the generic word "movies," which describes a type of product in which Complainant maintains markets. The addition of a generic word to Complainant’s famous mark does not change the mark but makes the disputed domain name confusingly similar to Complainant’s PENTHOUSE mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term). Caterpillar Inc. v. Matthew Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names of <caterpillarparts.com> and <caterpillarspares.com> were found to be confusingly similar to the registered trademarks of "Caterpillar" and "Caterpillar Design" because "the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar").

The Panel finds that Complainant satisfied the burden of Policy ¶ 4(a)(i) to show that the domain name registered by Respondent it identical to or confusingly similar to a mark in which Complainant has rights.

Complainant has established its rights to the PENTHOUSE marks. Respondent has failed to come forward to demonstrate any rights to or legitimate interests in Complainant’s mark that is contained in its entirety in the domain name, <penthousemovies.com> that was registered by Respondent. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint"). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the Respondent to demonstrate that it has rights or legitimate interests).

Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the disputed domain name where Respondent fails to submit a response. 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).

In addition, Respondent’s registration and use of the disputed domain name to sell goods of the Complainant in competition with Complainant fails to create or demonstrate a bona fide offering of goods, pursuant to Policy ¶ 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark. Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).

There is no evidence in the record, and Respondent has not come forward to suggest any, that would show that Respondent is commonly known by the <penthousemovies.com> domain name, pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial, or fair use of the <penthousemovies.com> domain name pursuant to Policy ¶ 4(c)(iii). Respondent has engaged in the selling of competing goods of Complainant, for profit. This is not a bona fide, fair or legitimate noncommercial use. 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).

The Panel finds that Complainant showed that it has established rights in the mark contained within the domain name that Respondent registered and that Respondent does not have any such rights to or legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii).

Respondent offered to transfer the domain name in issue, <penthousemovies.com> to Complainant on the condition that Complainant would in turn allow Respondent to continue to operate its website at its current location. This offer permits the inference that Respondent registered the domain name with an intent to transfer the domain name to Complainant or a competitor of Complainant for a valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. This violates Policy ¶ 4(b)(i) and constitutes bad faith. See Crédit Lyonnais v. Association Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding bad faith where the Respondent agreed to transfer the domain name if the Complainant agreed to support the Respondent’s cause but then remained silent in completing the transfer).

Respondent’s registration and use of the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s PENTHOUSE mark also supports a finding of bad faith. See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant); see also 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).

The Panel finds that Respondent registered and attempted to use the domain name in issue in bad faith. Policy ¶ 4(a)(iii).

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted. Accordingly, it is Ordered that the <penthousemovies.com> domain name be transferred from Respondent to Complainant.