DECISION

L.F.P., Inc. v. Digital Midwest.net

Claim Number:  FA0305000156712

PARTIES

Complainant is L.F.P., Inc., Beverly Hills, CA (“Complainant”) represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria, LLP. Respondent is DigitalMidwest.net, Beavercreek, OH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hardcorehustler.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 1, 2003; the Forum received a hard copy of the Complaint on May 2, 2003.

On May 6, 2003, Computer Services Langenbach Gmbh d/b/a Joker.Com confirmed by e-mail to the Forum that the domain name <hardcorehustler.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.Com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.Com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.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 May 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 27, 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@hardcorehustler.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 June 3, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 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:

1. Respondent’s <hardcorehustler.com> domain name is confusingly similar to Complainant’s HUSTLER mark.

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

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

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, L.F.P., Inc., holds numerous registrations for the HUSTLER mark (eg., U.S. Reg. No. 1,011,011, registered on May 20, 1975 and assigned to Complainant by HG Publications, Inc. on March 21, 1995). Beginning in 1972, Complainant has provided adult entertainment and products under the HUSTLER mark, having expanded these services to include not only magazines but also videotapes and DVD’s. Complainant also publishes an online version of its HUSTLER magazine online at the <hustler.com> domain name.

Respondent, Digital Midwest.net, registered the <hardcorehustler.com> domain name on September 6, 2001, and is not licensed or authorized to use Complainant’s HUSTLER mark for any purpose. Respondent uses the disputed domain name to sell adult entertainment services similar to those of Complainant. Respondent’s homepage prominently displays the “Hardcore Hustler” logo.

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 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 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 of the mark with the U.S. Patent and Trademark Office, as well as through continuous use of the mark in commerce since 1972.

Respondent’s <hardcorehustler.com> domain name is confusingly similar to Complainant’s HUSTLER mark. Respondent appropriates Complainant’s mark in its domain name, and then adds the suggestive word “hardcore” to it. Considering the nature of the industry that both Complainant and Respondent operate in and the connotations attached to the word “hardcore,” this addition only enhances the confusion with Complainant’s mark, rendering the disputed domain name confusingly similar to the HUSTLER mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

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

Rights or Legitimate Interests

Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <hardcorehustler.com> domain name. Complainant is able to meet this burden by demonstrating that Respondent would not be able to rely upon the provisions contained in Policy ¶¶ 4(c)(i)-(iii) in responding to the Complaint. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent uses the infringing <hardcorehustler.com> domain name to host an adult-oriented website, with content that directly competes with Complainant’s adult-oreinted content at the <hustler.com> domain name. Respondent’s use of Complainant’s trademark and the goodwill surrounding that mark to compete with Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services).

Although Respondent’s website goes by the name “Hardcore Hustler,” Respondent’s WHOIS contact information lists its name as “Digital Midwest.net.”  Therefore, Respondent is not commonly known by the disputed domain name as contemplated by Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

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

Registration and Use in Bad Faith

Respondent registered and used the <hardcorehustler.com> domain name in bad faith. Respondent’s use of the disputed domain name is clearly commercial, as it seeks out Internet users who are willing to pay for adult-oriented entertainment. Both the homepage of the disputed domain name and the domain name itself incorporate Complainant’s industry-famous HUSTLER mark, creating a strong likelihood of confusion in the minds of Internet users as to whether Complainant is the source or sponsor of Respondent’s website. These facts support the conclusion that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

The Panel thus finds that Respondent registered and used the <hardcorehustler.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 9, 2003

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