Treasure Island Media, Inc. v. Wan-Fu China, Ltd.
Claim Number: FA0705000989793
Complainant is Treasure Island Media, Inc. (“Complainant”), represented by Ian
K. Boyd, of Harvey Siskind LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <treasureislandmedia.net>, registered with Capitoldomains, LLC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 2007 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@treasureislandmedia.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <treasureislandmedia.net> domain name is identical to Complainant’s TREASURE ISLAND MEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <treasureislandmedia.net> domain name.
3. Respondent registered and used the <treasureislandmedia.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Treasure Island Media, Inc., produces and
distributes adult films and operates adult-oriented websites at the
<treasureislandmedia.com>, <treasureislandmedia.org>, and
<treasureislandvideo.com> domain names.
Complainant has continuously and extensively promoted its products under
the TREASURE ISLAND MEDIA mark in the
Complainant holds a trademark registration for the TREASURE
ISLAND MEDIA mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 3,126,511 issued
Respondent registered the <treasureislandmedia.net> domain name on
Respondent has also been a party in numerous past UDRP
proceedings in which panels have ordered it to transfer domain names to the
complainants in those cases. See, e.g., Enterprise Rent-A-Car Co. v.
Wan-Fu China, Ltd., FA 934715 (Nat. Arb. Forum
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. 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.”).
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 registered the TREASURE ISLAND MEDIA mark
with the USPTO. Because Complainant
filed for this trademark registration before Respondent registered the disputed
domain name, the Panel finds that Complainant’s rights in the mark relate back
to the filing date. See Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO
But for the addition of the generic top-level domain
(“gTLD”) “.net” and elimination of the spaces between terms of Complainant’s
TREASURE ISLAND MEDIA mark, Respondent’s <treasureislandmedia.net>
domain name does not differ from the registered mark. Panels in the cases of Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant bears the burden of making a prima
facie case that Respondent lacks rights and legitimate interests in the
domain name at issue. The burden then
shifts to Respondent once Complainant has made out a prima facie case. See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶
4(a)(ii) requires that the complainant must show that the respondent has no
rights to or legitimate interests in the subject domain name and that once the
complainant makes this showing, the burden of production shifts to the
respondent to rebut the complainant’s allegations). In this case, the Panel finds that
Complainant has established a prima facie case, and thus the burden is
now upon Respondent to show that it has rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii).
Respondent,
however, has not responded to this Complaint.
As a result, the Panel presumes that Respondent lacks rights or
legitimate interests in the domain name in dispute. See Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb.
Forum
Respondent is not commonly known by the <treasureislandmedia.net> domain name. Respondent has registered the disputed domain name under the name “Wan-Fu China, Ltd.,” and there is no other evidence allowing the Panel to make a finding that Respondent is commonly known by the domain name in dispute. Consequently, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s website at the <treasureislandmedia.net> domain name resolves to an Internet
portal featuring links to other adult entertainment websites, some of which
sell the products of not only Complainant but also its competitors. In Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent has established a pattern of
registering and using domain names in bad faith under Policy ¶ 4(b)(ii). In the past
three months alone, Respondent has lost several UDRP proceedings involving
confusingly similar domain names containing the trademarks of the complainants
in those disputes. See, e.g., Enterprise Rent-A-Car Co. v. Wan-Fu China, Ltd., FA
934715 (Nat. Arb. Forum
Moreover, Respondent is redirecting Internet users who enter
the identical domain name to an Internet portal featuring links to websites
selling the adult entertainment products of Complainant and its
competitors. The Panel considers
Respondent’s conduct to indicate that it has registered and is using the
disputed domain name in order to disrupt Complainant’s business, which
represents bad faith according to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v.
Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum
Finally, Respondent’s use of the disputed domain name also
constitutes bad faith under Policy ¶ 4(b)(iv), for
Respondent is likely generating click-through fees for each consumer it diverts
to third-party websites. Respondent is
taking advantage of the likelihood of confusion between the <treasureislandmedia.net> domain
name and Complainant’s registered TREASURE ISLAND MEDIA mark in order to profit
from the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <treasureislandmedia.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 21, 2007
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