DECISION

MRA Holding, LLC v. Harem Internet Services, Inc.

Claim Number: FA0301000140600

PARTIES

Complainant is MRA Holding, LLC, Santa Monica, CA, USA (“Complainant”) represented by Victor T. Fu, of Pollet, Richardson & Patel, ALC.  Respondent is Harem Internet Services, Inc., Moncton, Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <girgonewild.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 7, 2003; the Forum received a hard copy of the Complaint on January 15, 2003.

On January 8, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <girgonewild.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 January 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 5, 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@girgonewild.com by e-mail.

A timely Response was received and determined to be complete on February 5, 2003.

On February 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <girgonewild.com> domain name is confusingly similar to Complainant’s GIRLS GONE WILD mark.

2. Respondent does not have any rights or legitimate interests in the <girgonewild.com> domain name.

3. Respondent registered and used the <girgonewild.com> domain name in bad faith.

B. Respondent asserts that it has rights and legitimate interests in the <girgonewild.com> domain name.

FINDINGS

The Complainant is engaged in the business of manufacturing selling pre-recorded visual media and related products under its GIRLS GONE WILD trademark.

The Complainant placed the Girls Gone Wild mark in use in December, 1998, and registered the mark with the US Patent and Trademark Office on December 12, 2000.  Complainant has used the mark continuously since December, 1998 to identify its goods, and the mark sets Complainant apart from other visual media products manufactured and sold by others.

The Complainant operates its official website at the domain name <girlsgonewild.com>.

The Respondent is engaged in the business of adult membership-style online services involving Spring Break girls, nude beach girls, etc.  

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

As stated above, Complainant registered the mark with the U.S. Patent and Trademark Office on December 12, 2000, and has continuously used the mark since December 1998. Complainant’s GIRLS GONE WILD mark denotes “prerecorded videotapes featuring adult entertainment.” See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The domain name at issue is confusingly similar to Complainant’s mark, as the Respondent merely dropped two letters (“l” and “s”) from Complainant's mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark).

Rights or Legitimate Interests

It appears from the evidence presented that the domain name at issue resolves to Respondent's website at <girlsarenuts.com>, featuring video and photo images similar to those offered by Complainant.  As Complainant and Respondent do business within the same industry, it appears that Respondent registered the domain name at issue to create a likelihood of confusion.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also 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 its use of the names was not in connection with the offering of goods or services or any other fair use).

Further, Respondent has not presented any evidence to confirm that it is commonly known by the domain name, nor has Respondent acquired any trademark or service mark rights in the domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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).

Finally, Complainant did not authorize Respondent to make use of its mark in any form for any purpose or in connection with any use. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Registration and Use in Bad Faith

As Complainant has promoted its goods vigorously through television, print ads and internet advertising, it appears that Respondent is attempting to trade on the fame of Complainant’s mark by using the domain name at issue to attract Internet users to a commercial website located at <girlsarenuts.com>.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

As both Complainant and Respondent market their goods and services to similar audiences, Respondent should have been aware of Complainant’s mark and website. 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <girgonewild.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:   February 25, 2003

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