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Cream Pie Club v. Brittany Halford [2000] GENDND 914 (17 August 2000)


National Arbitration Forum

DECISION

Cream Pie Club v. Brittany Halford

Claim Number: FA0007000095235

PARTIES

The Complainant is Cream Pie Club, Woodland Hills, CA, USA ("Complainant"). The Respondent is Brittany Halford, Manchester, England, GB ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "CREAMPIES.COM", registered with Network Solutions Inc ("NSI").

PANELIST(s)

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/11/2000; The Forum received a hard copy of the Complaint on 07/11/2000.

On 07/17/2000, NSI confirmed by e-mail to The Forum that the domain name "CREAMPIES.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 07/18/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/07/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On 08/10/2000, 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 August 10, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Harold Kalina (Ret.) 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 Uniform 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 the Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

    1. Complainant
    2. The Complainant contends that the domain name is identical or confusing similar to a trademark owned by the Complainant. The Complainant contends that the Respondent has not rights or legitimate interests in the domain name. The Complainant contends that the Respondent registered and is using the domain name in bad faith.

    3. Respondent

The Respondent has submitted no response in this matter.

FINDINGS

    1. The Complainant owns the U.S. trademark registration for the mark CREAM PIE (No. 2,333,335; registered on March 21, 1996) for use in providing adult entertainment via the Internet.
    2. The Complainant began using the trademark CREAM PIE on June 9, 1994.
    3. The Complainant has rights in the registered mark CREAM PIE.
    4. The Respondent registered the domain name in question on August 14, 1998. The postal address provided by Respondent to Whois for purposes of registering the domain names in dispute was a false address. The street address did not exist. This conduct implies Respondent’s bad faith at time of registration, and thereafter.
    5. Respondent had not, for almost two years prior to the filing of the Complainant, made use of the domain names in a legitimate commercial way. On or about July 23, 2000, after Respondent was served the Complaint in these proceedings, Respondent created a web page at the domain name www.creampies.com stating that a new web page was "Coming soon", and that potential visitors should "Stay tuned" . This is determined to be a transparent attempt by the Respondent to legitimize his improper conduct dating from the time of registration.
    6. The Respondent is using the domain name to drive Internet traffic to its website <brittspage.com>.
    7. The Respondent sent an unsolicited email message to the Complainant offering to sell the domain name in question for $125,000. The email message indicated that the Respondent was currently entertaining other offers for the domain name.
    8. The Respondent offers competing adult entertainment services on its website.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

As a result of the Respondent’s failure to respond, all reasonable inferences of fact in the Complaint will be deemed true. See Banco General, S.A. v Webmaster Ams/Uk Billing (Domain for Sale), FA 94993 (Nat. Arb. Forum July 20, 2000).

Identical and/or Confusingly Similar

The Respondent’s domain name is confusingly similar to the Complainant’s trademark. The addition of an "s" to the end of the Complainant’s mark does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The two domain names are similar in sound, appearance, and connotation. See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to Complainant’s mark "Beanie Babies"). The Respondent’s use of the domain name for identical and competing services makes the likelihood of confusion even greater.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the domain name in question.

The Respondent is not commonly known by any mark containing the term CREAM PIES. Policy 4.c.(ii). The Respondent’s website bears the prominent mark "Brittany’s Home Page." The Respondent’s website makes no use of the term CREAM PIES.

The Respondent is not using the domain name to offer bona fide goods or services or for a legitimate noncommercial or fair use. Policy 4.c.(i), (iii). The Respondent is using the domain name to direct Internet traffic to its competing website.

Registration and Use in Bad Faith

The Respondent registered and is using the domain name in question in bad faith.

The Respondent offered the domain name for sale to the Complainant for $125,000. Registering a domain name for the purpose of selling it to the owner of a trademark for valuable consideration in excess of out of pocket expenses is evidence of bad faith. See The Step2 Co. v. Softastic.com Corp., D2000-0393 (WIPO June 26, 2000) (finding that the Respondent’s attempt to sell the domain name in question on <greatdomains.com>, a domain name auction site, for $100,000 constitutes bad faith); Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding Respondent’s offer to sell the domain name for $100,000 constitutes bad faith).

When Internet users enter the said domain name, they are transported to the Respondent’s website. The Respondent is using the domain name in question to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of the Respondent’s website. Policy 4.b.(iv). This is evidence of registration and use in bad faith. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business).

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "CREAMPIES.COM" be transferred from the Respondent to the Complainant.

Judge Harold Kalina (Ret.)

Dated: August 17, 2000


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