DECISION

L.F.P., Inc. v. Movie Name Company

Claim Number: FA0307000167965

PARTIES

Complainant is L.F.P., Inc., Beverly Hills, CA (“Complainant”) represented by Paul J. Cambria, Jr., of Lipsitz Green Fahringer Roll Salisbury & Cambria LLP.  Respondent is Movie Name Company, Malibu, CA (“Respondent”) represented by Jill Bermen.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hustlermovies.com>, registered with Dotster.

PANEL

The undersigned Daniel B. Banks, Jr., 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 9, 2003; the Forum received a hard copy of the Complaint on July 10, 2003.

On July 9, 2003, Dotster confirmed by e-mail to the Forum that the domain name <hustlermovies.com> is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 July 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 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@hustlermovies.com by e-mail.

A timely Response was received and determined to be complete on July 16, 2003.

Complainant’s Additional Submission was received and filed on July 24, 2003.

Respondent’s Additional Submission was received on July 24, 2003.

On July 24, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant:

Complainant is the owner or beneficial owner of various United States Trademark Registrations for the mark Hustler that relate to and include a computer on-line magazine relating to adult entertainment, an entertainment magazine, pre-recorded video tapes and pre-recorded digital video disks in the field of adult entertainment. 

Complainant is a leading world-wide provider of "adult" entertainment in various media under its world-famous HUSTLER trademark.  It owns the mark and has obtained registrations for the mark in the United States and numerous countries around the world.  It uses the mark in the promotion, advertisement and sale of a wide variety of other goods and services, including apparel, accessories and other products sold throughout the world, in stores, through catalogs and on-line via the Internet. 

In 1972, Complainant adopted and commenced using its HUSTLER trademark in interstate and international commerce to designate its world-famous "Hustler Magazine" for adult entertainment.  Since then, Complainant has adopted and used the HUSTLER mark for the purpose of designating an on-line version of its "Hustler Magazine" and has established numerous Internet web sites, including <hustler.com>, which was registered on April 12, 1997.

The domain name <hustlermovies.com>, registered by Respondent incorporates Complainant's world famous HUSTLER mark in its entirety, combined with the word "movies."  The addition of the word "movies" does not change the mark, but rather supplements it, erroneously suggesting possible "adult" content and renders the disputed domain name confusingly similar to Complainant's HUSTLER mark.  This suggests that the site is in some way operated by Complainant, or with Complainant's endorsement or authorization.

Respondent has no rights or legitimate interest in respect of the <hustlermovies.com> domain name.  It has no connection or affiliation with Complainant.  It has no license or authorization to use the registered trademark of Complainant.  It is being used to direct Internet users to a web site at <losangelesnews.com> where, pejorative remarks are set out in respect of a certain domain name Registrar and, as of May 19, 2003, the disputed domain name was being offered for sale by Respondent for $75,000.  Respondent is not using the disputed domain name for any legitimate purpose or bona fide offering of goods or services. 

Respondent registered and is using the disputed domain name in bad faith by redirecting Internet users to another web site where the name is offered for sale and through its intention to disrupt the business of Complainant by attracting Internet users for commercial gain to Respondent's web site.  Such use creates confusion with Complainant's HUSTLER trademark as to the source, sponsorship, affiliation or endorsement of Respondent's web site.

           

B. Respondent:

Respondent says the word “hustler” is a generic name and there are thousands of domains that are registered on the Internet with the word “hustler” in it.  The Complainant's trademark is only for <hustler.com> and not for <hustlermovies.com>  Also, the domain name <hustlermovies.com> is not confusingly similar to <hustler.com> and Respondent is not in competition with the Complainant. 

As for the domain being for sale, we believe it is our right to sell it if we want to.  Network Solutions does it all the time at their second owned company, <greatdomains.com>. 

C. Complainant's Additional Submission:

In response to Respondents submission, Complainant states that Respondent failed to address Complainant's prior registration of its famous HUSTLER mark in International Class 42 in 1996, in International Class 16 in 1975 and in International Class 9 in 1988, all of which long pre-date Respondent's domain name registration in 2000.  Also, Respondent failed to address Complainant's prior use of the domain name <hustler.com> first used as early as December 1993.

Respondent asserts that the disputed domain name is not confusingly similar because "hustler" is a generic word.  However, if "hustler" were a generic word, its registration as a federal trademark by the U.S. Patent and Trademark Office would have been proscribed by statute.  (See 15 U.S.C. Sec. 1064(3).)  Also, it has been consistently held that the mere addition of a suffix or generic term (e.g. "movies") does not overcome the likelihood of confusion with a registered trademark.

Respondent has failed to show that it has any rights or legitimate interests with respect to the <hustlermovies.com> domain name.  It has no affiliation or connection with Complainant.  It has not received any license, authorization or consent to use Complainant's HUSTLER mark.  It registered the disputed domain name long after Complainant's adoption of its various HUSTLER trademarks. 

Respondent failed to address the assertion that use of Complainant's famous HUSTLER mark is actually or potentially misleading Internet users as to Complainant's sponsorship or endorsement of Respondent's web site in which Complainant has no interest.  It has offered no evidence that it is commonly known by the name <hustlermovies.com> or that it is making a legitimate, noncommercial or fair use of the disputed domain name. 

Respondent says that it did not register and is not using the disputed domain name in bad faith because it is not in competition with Complainant.  However, Respondent's offer to sell the disputed domain name at its web site for $75,000 constitutes cybersquatting and is per se an act of bad faith.  Respondent has not denied that it seeks to intentionally attract, for commercial gain, Internet users to purchase the disputed domain name.  Finally, Respondent has failed to offer any evidence that it was unaware of Complainant's famous HUSTLER marks at the time of registration and/or acquisition of the domain name.

D. Respondent's Additional Submission:

Hustler is known to be Hustler Magazine and no one identifies <hustler.com> as <hustlermovies.com> and therefore is not confusingly similar.

FINDINGS

     

1. The domain name <hustlermovies.com> is identical or confusingly similar to Complainant's registered trademark.

2. The Respondent has no rights or legitimate interests with respect to the domain name.

3. The domain name was registered and is being used in bad faith. 

 

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 has established rights in the HUSTLER mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).

Complainant also has established common-law rights in the HUSTLER mark through worldwide use of the mark in commerce since 1972, developing significant secondary meaning associated with the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).

Respondent’s <hustlermovies.com> domain name is confusingly similar to Complainant’s 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).

Respondent has failed to refute the presumption that the HUSTLER mark is inherently distinctive in light of Complainant's registration of that trademark with the U.S. Patent and Trademark Office.  Generic marks are denied that status under U.S. law. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. 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”).

Rights or Legitimate Interests

The disputed domain name web site redirects the user to <losangelesnews.com> where it is stated "[t]he domain name you just typed only 75K."  Such diversionary use of the <hustlermovies.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); 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).

In addition, Respondent’s offer to sell its domain name registration for $75,000 is evidence that it lacks rights or legitimate interests in the domain name. See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Respondent is not “commonly known by” the disputed domain name, which is evidence that Policy ¶ 4(c)(ii) does not apply to Respondent. See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); 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").

Registration and Use in Bad Faith

Respondent’s attempt to sell its domain name registration for a price that exceeds its out-of-pocket expenses is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Further, Respondent’s diversionary use of Complainant’s mark to redirect Internet users to a website which voices complaints about an unrelated third-party is evidence that the <hustlermovies.com> domain name was registered and is being used in bad faith. See Jenner & Block LLC v. Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept. 27, 2002) (“Respondent’s argument that there is an inherent conflict between the Internet and the Constitutional right to free speech at the address to a business sounds impressive but is no more correct than the argument that there is a Constitutional right to intercept telephone calls to a business in order to speak to customers. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’s business street address but of impermissibly blocking traffic to that street address”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Respondent has offered no evidence rebutting the plausible inference that it was aware of Complainant's HUSTLER mark when it registered the <hustlermovies.com> domain name.  It is therefore found in this case that Respondent had actual knowledge of Complainant's rights in the HUSTLER mark when it registered the disputed domain name and that finding, coupled with Complainant's trademark registration with the U.S. Patent and Trademark Office is sufficient evidence that the domain name was registered and is being used in bad faith. 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 Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

DECISION

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

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

Daniel B. Banks, Jr., Panelist
Dated: August 4, 2003

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