L.F.P., Inc. v. Ira Willey
Claim Number: FA0211000128819
PARTIES
Complainant
is L.F.P., Inc., Beverly Hills, CA,
USA (“Complainant”) represented by Paul
J. Cambria, of Lipsitz, Green,
Fahringer, Roll, Salisbury & Cambria, LLP. Respondent is Ira Willey,
Victoria, BC, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwhustler.com>,
registered with Register.com.
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 1, 2002; the Forum received a hard copy of the
Complaint on November 4, 2002.
On
November 1, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <wwwhustler.com> is
registered with Register.com and that Respondent is the current registrant of
the name. Register.com has verified that Respondent is bound by the Register.com
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
November 6, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 26, 2002 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@wwwhustler.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
December 11, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<wwwhustler.com> domain name is confusingly similar to
Complainant’s registered HUSTLER mark.
Respondent does not have any rights or legitimate
interests in the <wwwhustler.com> domain
name.
Respondent registered and used the <wwwhustler.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, L.F.P., Inc., holds two
registrations for the HUSTLER trademark. Complainant holds rights in the
HUSTLER mark that was originally registered on May 20, 1975 (U.S. Reg. No.
1,011,001) for an entertainment magazine. Complainant subsequently registered
is HUSTLER mark for providing a computer online magazine on September 17, 1996
(U.S. Reg. No. 2,001,594). Both marks are used in conjunction with
Complainant’s business as a worldwide provider of “adult” entertainment,
including magazines, videotapes, DVDs, and online entertainment. Pursuant to
its buisness in “adult” entertainment, Complainant registered the,
<hustler.com> domain name, reflecting its registered mark.
Respondent, Ira Willey, registered the <wwwhustler.com>
domain name on January 15, 2002, and is not authorized or licensed to use
Complainant’s HUSTLER mark for any purpose. Respondent uses the disputed domain
name to redirect Internet users to Complainant’s <hustler.com> domain
name.
DISCUSSION
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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 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.
Identical and/or Confusingly Similar
Complainant has established rights in the
HUSTLER mark through registration on the Principal Register of the United
States Patent and Trademark Office as well as through continuous and widespread
use of the mark worldwide.
Respondent’s <wwwhustler.com>
domain name is confusingly similar to Complainant’s HUSTLER mark. Respondent’s
registration is a perfect example of “typosquatting,” taking advantage Internet
users who, when entering in a Uniform Resource Locator (URL), inadvertantly
fail to add the period between the “www” and whatever second-level domain that
they are attempting to reach. In this case, Internet users who are hoping to
arrive at Complainant’s “www.hustler.com” but accidently do not type a period
after they have entered “www,” will be unsuspectingly diverted to Respondent’s <wwwhustler.com> domain name. Typosquatting does not
prevent a finding of confusing similarity between Respondent’s domain name and
Complainant’s mark, especially as the dominant feature of the domain name
remains Complainant’s mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”).
Respondent’s
addition of the top-level domain “.net”, a feature that is required for all
domain name registrants, also fails to prevent the Panel from finding
Respondent’s domain name to be confusingly similar to Complainant’s mark. See
Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that "the addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use of a gTLD is required
of domain name registrants").
Accordingly, the Panel finds that the <wwwhustler.com> domain name is confusingly
similar to Complainant’s registered HUSTLER mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Policy paragraphs 4(c)(i)-(iii) list three circumstances illustrative
of situations where a respondent would have rights or legitimate interests in a
domain name. When a respondent has failed to respond to a Complaint, a showing
by a complainant that none of these three circumstances are present is
sufficient for that complainant to meet its burden under the Policy. At that
point, the burden shifts to Respondent to rebut Complainant’s allegations. 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 in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name).
In these circumstances, Respondent’s
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond); 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 uses the <wwwhustler.com> domain name to
redirect Internet users to the website they are presumably trying to reach in
the first instance; Complainant’s website at <hustler.com>. This is an attempt by Respondent to earn
compensation from Complainant for click through “sign-ups” originating from the
domain name at issue. In doing so, Respondent is not making either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, it's
use of the names was not in connection with the offering of goods or services
or any other fair use); see also Oly Holigan, L.P. v.
Private, FA 95940 (Nat.
Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a
misspelled domain name because Respondent did not provide any bona fide
products in connection with the domain name); see also Encyclopaedia Brittanica, Inc. v. Zuccarini,
D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the
domain names are misspellings of Complainant's mark).
Respondent’s contact information states
that it is “Ira Willey,” and no evidence supports the proposition that it has
ever been “commonly known by” the name WWWHUSTLER or <wwwhustler.com>. As such, the Panel finds that Complainant has met its burden in showing
that Respondent does not fall under the ambit of Policy ¶ 4(c)(ii). See Vestel Elektronik Sanayi ve Ticaret AS
v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely
registering the domain name is not sufficient to establish rights or legitimate
interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the Panel finds that
Respondent does not have rights or legitimate interests in the <wwwhustler.com> domain name under Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
While Policy paragraph 4(b) lists four
circumstances evidencing bad faith use and registration of a domain name, that
list is not meant to be all-inclusive. See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b)
sets forth certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out in ¶4(b),
does not mean that the domain names at issue were not registered in and are not
being used in bad faith”).
One example of bad faith use and
registration not directly illustrated in the Policy, yet nevertheless
representing bad faith use and registration of a domain name under Policy ¶
4(a)(iii), is typosquatting. See AltaVista
Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding
<wwwalavista.com>, among other misspellings of altavista.com, to
Complainant); see also Dow Jones &
Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain
names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and
<wwwbarronsmag.com> to Complainants). Respondent’s registration and use
of the <wwwhustler.com> domain name qualifies as typosquatting
(simply adding a “www” prefix to a mark in which another has rights exemplifies
typosquatting) and therefore evidences bad faith use and registration.
Further evidence of Respondent’s bad
faith use and registration of the disputed domain name can be inferred from the
fact that Respondent had actual knowledge of Complainant’s mark when it
registered the infringing domain name, and subsequently used it to redirect
Internet users to Complainant’s website. Such registration and use is another
non-enumerated example of bad faith under Policy ¶ 4(a)(iii). See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively”); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith).
Accordingly, the Panel finds that Respondent
registered and used the <wwwhustler.com> domain name in bad faith, and Policy ¶
4(a)(iii) is satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwhustler.com> domain name be TRANSFERRED from Respondent
to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 16, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page