DECISION

 

General Media Communications Inc. v. Media Enterprises a/k/a Hal Lundquist

Claim Number: FA0308000187432

 

PARTIES

 

Complainant is General Media Communications Inc., New York, NY (“Complainant”) represented by Dan C. Ha, 10501 Wilshire Blvd., Suite 2005, Los Angeles, CA  90024. Respondent is Media Enterprises a/k/a Hal Lundquist, New York, NY (“Respondent”), PO Box 20094, New York, NY  10021-0061.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <wwwpenthouseexecutiveclub.com>, registered with Wild West Domains, 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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 19, 2003; the Forum received a hard copy of the Complaint on August 21, 2003.

 

On August 20, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <wwwpenthouseexecutiveclub.com> is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 September 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 2003 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@wwwpenthouseexecutiveclub.com by e-mail.

 

Although the Response was received after the deadline, the Panel, in the exercise of its discretion, has chosen to consider it. 

 

On October 15, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Complainant contends that by virtue of its federal trademark registrations, Respondent was put on constructive notice of Complainant’s rights to the “PENTHOUSE” marks prior to adopting them.  Complainant asserts that Respondent intentionally and willfully registered and commenced use of the <wwwpenthouseexecutiveclub.com> domain name with knowledge of Complainant’s PENTHOUSE marks in order to capitalize, benefit from and trade on the reputation and goodwill already built up by Complainant in the PENTHOUSE marks.

 

Complainant contends that Respondent’s <wwwpenthouseexecutiveclub.com> domain name is confusingly similar to Complainant’s PENTHOUSE EXECUTIVE CLUB trademark.  Respondent’s incorporation of Complainant’s trademark into its domain name with the addition of the “www” prefix does not sufficiently distinguish it from Complainant’s mark.  Instead, Complainant contends that Respondent is attempting to benefit from a common typographical error resulting from an Internet user’s inadvertent omission of the period between the WorldWide Web abbreviation and the second-level domain name.

 

Furthermore, Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to a website offering live adult-entertainment and escort services.  According to Complainant, this is an attempt by Respondent to profit from Complainant by advertising Respondent’s own affiliated adult services.  In doing so, Complainant asserts, Respondent is not making either a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name.

Finally, Complainant contends that its name and marks are well-known because of Complainant’s extensive marketing and advertising.  Complaint states that Respondent has capitalized on Complainant’s marks and reputation by registering and using a confusingly similar domain name.  Complaint argues that Respondent has acted in bad faith under the Policy by not only incorporating Complainant’s PENTHOUSE trademark in its entirety, but by advertising live adult-entertainment and escort services for the purposes of commercial gain.  Further evidence of Respondent’s bad faith use and registration of the disputed domain name can be inferred, according to Complainant, from the fact that Respondent had actual knowledge of Complainant’s PENTHOUSE mark when it registered the infringing domain name, and subsequently used it to redirect Internet users to adult-related services for purposes of financial gain.

 

B. Respondent

 

Respondent contends that the domain name in dispute is not confusingly similar to any trademark owned by Complainant.  Respondent asserts that the domain name is not the mark itself but a “parody” of the mark, and therefore not covered by the Policy.

 

FINDINGS

 

The record reflects the following:

 

Since in or about 1965, Complainant, through its predecessors in interest, has published a well-known magazine using the trademark PENTHOUSE throughout the United States, and internationally.  Complainant’s PENTHOUSE publication has generated many millions of dollars of sales, and Complainant has capitalized on that popularity to expand to a number of other products and services using the mark PENTHOUSE, including online adult-entertainment services at its PENTHOUSE websites – notably its <penthouse.com> domain name.  Complainant most recently licensed its PENTHOUSE mark to a $10 million luxury live adult-entertainment venture located in New York, New York in connection with the name PENTHOUSE EXECUTIVE CLUB.

 

Complainant has filed an intent-to-use application for the PENTHOUSE EXECUTIVE CLUB mark with the United States Patent and Trademark Office and registered the <penthouseexecutiveclub.com> and <penthouseexecutiveclub.net> domain names on March 12, 2003 and January 24, 2003, respectively.   On June 3, 2003, Complainant and Complainant’s Licensee commenced public operation of the $10 million PENTHOUSE EXECUTIVE CLUB, a Manhattan-based, luxury gentlemen’s club and full service restaurant facility.  Complainant has invested substantial amounts of money to promote, through extensive marketing and advertisement, the PENTHOUSE EXECUTIVE CLUB continuously since on or about January 24, 2003

 

Complainant also owns a family of trademarks and service marks registered with the United States Patent and Trademark Office which are used in connection with the following goods and services:

 

United States Patent and Trademark Office

 

 

 

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.

 

Identical and/or Confusingly Similar

 

Complainant maintains that it has established rights in the PENTHOUSE EXECUTIVE CLUB mark though use of the mark in commerce, as well as through its intent-to-use application for the mark on the Principal Register of the U.S. Patent and Trademark Office. The Policy does not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist; indeed rights within the meaning of the Policy can be established by a pending trademark application.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000);  see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

 

Respondent contends that the disputed domain name is not confusingly similar to Complainant’s mark because the domain name is preceded by the letters “www.”  But other ICANN panels have rejected this argument and have held that a domain name is confusingly similar to a protected mark by the addition of the letters “www.” See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark); see generally Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (by misspelling words and adding letters to words, Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity”).

 

Accordingly, the Panel finds that the <wwwpenthouseexecutiveclub.com> domain name is confusingly similar to Complainant’s PENTHOUSE EXECUTIVE CLUB mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

To demonstrate rights or legitimate interests in a domain name, a respondent (1) must be engaged in a bona fide offering of goods or services before any notice of the dispute; (2) must have been commonly known by the domain name; or (3) must make a legitimate noncommercial or fair use of the domain name without intent to misleadingly divert consumers.  See Policy ¶ 4(c). 

 

It has been consistently held by ICANN panels that a respondent is not engaged in the bona fide offering of goods and services if the respondent is trading on the fame of the complainant’s mark.  See America Online v. Fu, No. D2000-1374 (WIPO Dec. 11, 2000).  Respondent has not come forward with evidence to demonstrate any bona fide offering that would distinguish itself from the established business of Complainant.  

 

Respondent may also establish its rights or legitimate interests in the domain name by showing that it has been commonly known by the domain name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that respondent has rights and a legitimate interest in the domain name because the domain name reflects respondent’s company name). Respondent has offered nothing to substantiate that it has been commonly known by the domain name.

 

Finally, Respondent can demonstrate rights or legitimate interests in the domain name by showing that it has made a noncommercial or fair use of the domain name without intent to misleadingly divert customers. See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that respondent has rights in the disputed domain name where she was using the domain name in connection with a noncommercial purpose). Respondent has failed to come forward with any evidence to substantiate such noncommercial use of the domain name.

 

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwpenthouseexecutiveclub.com> domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Registration and use in bad faith can be shown by the registration of a domain name primarily for the purpose of disrupting the business of a competitor. See General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also 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). Complainant contends that Respondent is a competitor, and that Respondent, on its website, advertises “live adult-entertainment services.”  Respondent does not deny or contradict these allegations.  Therefore, Complainant’s assertions are deemed true and Complainant has therefore established bad faith.

 

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 <wwwpenthouseexecutiveclub.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Bruce E. Meyerson, Panelist
Dated: November 5, 2003

 

 

 

 

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