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Generic Top Level Domain Name (gTLD) Decisions |
General Media Communications, Inc. v.
Horoshiy, Inc. a/k/a Horoshiy
Claim
Number: FA0412000379740
Complainant is General Media Communications, Inc. (“Complainant”), 2 Penn Plaza, 11th
Floor, New York, NY 10121. Respondent
is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg #518, Curacao, AN.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <penthousevariations.com>, registered with
Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
10, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on December 13, 2004.
On
December 14, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the National Arbitration Forum that the domain
name <penthousevariations.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.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
December 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of January 10, 2005 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@penthousevariations.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Louis E.
Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <penthousevariations.com>
domain name is confusingly similar to Complainant’s PENTHOUSE and VARIATIONS
marks.
2. Respondent does not have any rights or
legitimate interests in the <penthousevariations.com> domain name.
3. Respondent registered and used the <penthousevariations.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
General Media Communications, Inc., through its predecessors in interest, has
published a well-known magazine using the
PENTHOUSE mark throughout the United
States and Internationally since at least 1969. Complainant also uses the PENTHOUSE mark in connection with
on-line adult-entertainment services at its <penthouse.com> domain
name,
and publishes a magazine using the VARIATIONS mark.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the PENTHOUSE (Reg. No.
880,922, issued November 18, 1969;
Reg. No. 1,074,534, issued October 4, 1977; Reg. No. 1,064,636, issued April
26, 1977; Reg. No.
1,430,050, issued February 24, 1987; Reg. No. 1,515,321,
issued December 6, 1988; Reg. No. 2,738,557, issued July 15, 2003; Reg.
No.
1,367,554, issued October 29, 1985; Reg. No. 1,020,498, issued September 16,
1975; Reg. No. 2,441,085, issued April 3, 2001;
Reg. No. 2,337,421, issued
April 4, 2000; Reg. No. 2,701,927, issued April 1, 2003; Reg. No. 2,810,417,
issued February 3, 2004)
and VARIATIONS mark (Reg. No. 1,104,321, issued
October 17, 1978; Reg. No. 2,185,045, issued August 25, 1998; Reg. No.
2,721,206,
issued June 3, 2003).
Respondent
registered the <penthousevariations.com> domain name on February
11, 2004. Respondent is using the
disputed domain name to redirect Internet users to a search engine website that
provides links for various
unrelated webpages offering products and services
ranging from health insurance and mortgage rates to career testing and online
degrees.
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.
Complainant has
established that it has rights in the PENTHOUSE and VARIATIONS marks through
registration with the United States Patent
and Trademark Office and through
continued use of its marks in commerce.
See 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.”); see
also 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).
Respondent’s <penthousevariations.com>
domain name is confusingly similar to Complainant’s PENTHOUSE and
VARIATIONS marks because the domain name incorporates both of Complainant’s
PENTHOUSE and VARIATIONS marks to form the disputed domain name. Furthermore, the addition of the top-level
domain “.com” does not sufficiently distinguish the <penthousevariations.com>
domain name from Complainant’s marks. See
Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent
combined Complainant’s POKEMON and PIKACHU marks
to form the
<pokemonpikachu.com> domain name); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) ("the addition of the generic top-level domain (gTLD) name ‘.com’ is
. . . without legal significance
since use of a gTLD is required of domain name
registrants"); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY
BY
VICTORIA mark); see also Surface
Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding
the domain name <mannbrothers.com> confusingly similar to Complainant’s
MANN BROTHERS
mark “so as to likely confuse Internet users who may believe they
are doing business with Complainant or with an entity whose services
are
endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying
the confusing similarity requirement”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have any rights or legitimate interests in the
<penthousevariations.com> domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). Due to
Respondent’s failure to respond to the Complaint, it is assumed that Respondent
lacks rights and legitimate interests in the
disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has
no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate
interest does exist);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where
Respondent linked the domain name in question to websites displaying banner
advertisements and pornographic material).
The Panel may
accept all reasonable allegations and inferences in the Complaint as true
because Respondent has not submitted a Response. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”);
see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact
in the allegations
of the Complaint to be deemed true).
Respondent is
using the confusingly similar <penthousevariations.com> domain
name to redirect Internet users to a search engine website that provides links
to a variety of unrelated websites offering
products and services unrelated to
Complainant. Respondent’s use of a
domain name confusingly similar to Complainant’s PENTHOUSE and VARIATIONS mark
is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding
that Respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a
bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the domain name); see
also Computer Doctor Franchise Sys.,
Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding
that Respondent’s website, which is blank but for links to other websites, is
not a legitimate use of the domain names).
Furthermore, Respondent
has not offered any evidence and there is no proof in the record suggesting
that Respondent is commonly known
by the <penthousevariations.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Poliy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <penthousevariations.com>
domain name redirects Internet users searching under Complainant’s
PENTHOUSE and VARIATIONS marks to Respondent’s search engine website
through
the use of a domain name that is confusingly similar to Complainant’s
marks. The Panel infers that Respondent
commercially benefits from using the disputed domain name by receiving
click-thru fees when Internet
users are re-directed to commercial websites via
Respondent’s website. Respondent
intentionally registered a domain name that contains both of Complainant’s
marks in their entirety and did so in bad faith
pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when
the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent
is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Bank of Am. Corp. v. Out Island Props., Inc.,
FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed
domain names contain entire versions of Complainant’s
marks and are used for something
completely unrelated to their descriptive quality, a consumer searching for
Complainant would become
confused as to Complainant’s affiliation with the
resulting search engine website” in holding that the domain names were
registered
and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site
to its own website for
commercial gain).
Respondent’s
registration of a domain name that incorporates both of Complainant’s
well-known registered marks in their entirety and
deviates only with the
addition of the top-level domain “.com” suggests that Respondent knew of
Complainant’s rights in the PENTHOUSE
and VARIATIONS marks. Moreover, Respondent has constructive
knowledge of Complainant’s marks because they were registered with the United
States Patent
and Trademark Office.
Thus, the Panel finds that Respondent chose the <penthousevariations.com>
domain name based on the distinctive and well-known qualities of Complainant’s
marks. Registration of a domain name
confusingly similar to a mark, despite knowledge of another’s rights, is
evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii). See 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); see also Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of
Complainants' famous marks, Respondent had actual
or constructive knowledge of
the BODY BY VICTORIA marks at the time she registered the disputed domain name
and such knowledge constituted
bad faith); see also Orange Glo Int’l v. Jeff
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status
that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <penthousevariations.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
February 3, 2005
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