DECISION

Mantra Films, Inc. v. Duane Gartman c/o Performance Marketing Ltd.

Claim Number:  FA0404000255566

PARTIES

Complainant is Mantra Films, Inc. (“Complainant”), represented by Victor T. Fu, of Richardson & Patel, LLP, 10900 Wilshire Boulevard, Suite 500, Los Angeles, CA 90024.  Respondent is Duane Gartman c/o Performance Marketing Ltd.  (“Respondent”), 644 Hamilton Ave., Nanaimo, BC CA V9R4G4.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <guysgonewild.com>, registered with Namesecure.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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 14, 2004; the Forum received a hard copy of the Complaint on April 16, 2004.

On April 21, 2004, Namesecure.com confirmed by e-mail to the Forum that the domain name <guysgonewild.com> is registered with Namesecure.com and that Respondent is the current registrant of the name. Namesecure.com has verified that Respondent is bound by the Namesecure.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 April 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 2004 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@guysgonewild.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 May 27, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <guysgonewild.com> domain name is identical to Complainant’s GUYS GONE WILD mark.

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

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

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

FINDINGS

Complainant owns a registration application for the GUYS GONE WILD mark filed with the United States Patent and Trademark Office (“USPTO”) on July 5, 2002 (Ser. No. 76/427548).  The opposition period for the trademark application has expired and a notice of allowance was issued by the USPTO on December 9, 2003.  The GUYS GONE WILD mark is used in connection with “pre-recorded video tapes and DVD’s, all featuring movies and television programs of all kinds.”

Following Complainant’s submission of its trademark application for the GUYS GONE WILD mark, Respondent approached Complainant and sought to engage in a joint venture with Complainant to produce a GUYS GONE WILD video series.  Complainant declined Respondent’s proposal and advised Respondent that Complainant claimed ownership rights in the GUYS GONE WILD mark and was developing a video series utilizing the mark.

Respondent later registered the disputed domain name <guysgonewild.com> on June 27, 2003.  Respondent has used the domain name to redirect Internet users to <consumer-reports.org>, which featured links to a website at the domain name <boysgonebad.com>.  The latter website offers similar content as that provided by Complainant under the GUYS GONE WILD mark. 

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 GUYS GONE WILD mark as a result of its trademark application with the USPTO.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

The disputed domain name <guysgonewild.com> is identical to Complainant’s GUYS GONE WILD mark because the name incorporates the mark in its entirety and has merely appended the top-level domain “.com,” which is irrelevant under the Policy.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  Therefore, the Panel construes such an omission as an admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

There is no evidence in the record that suggests Respondent has trademark rights in the GUYS GONE WILD mark or is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GUYS GONE WILD mark and without authorization from Complainant to use said mark, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

Furthermore, Respondent has used the disputed domain name to link to the domain name <boysgonebad.com>, which offers goods that are similar to those sold by Complainant under its GUYS GONE WILD mark.  Such competing use has consistently been found under the Policy to negate a finding of bona fide of goods or services under Policy ¶ 4(c)(i).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has used a domain name identical to Complainant’s mark to direct Internet users to a website that offers competing goods with those offered by Complainant under its GUYS GONE WILD mark.  The fact that Respondent had actual knowledge of Complainant’s rights in the GUYS GONE WILD mark prior to registering the domain name is evidence that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii).  See Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); 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).

The foregoing is also evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) in that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s GUYS GONE WILD mark.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

Moreover, Respondent’s actual knowledge of Complainant’s rights in the GUYS GONE WILD mark prior to the domain name registration is evidence of Respondent’s bad faith registration and use.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where 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)

Complainant has established Policy ¶ 4(a)(iii).

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  June 9, 2004

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