national arbitration forum

DECISION

Kick Ass Pictures, Inc. v. Yip Alex

Claim Number:  FA0412000376390

PARTIES

Complainant is Kick Ass Pictures, Inc. (“Complainant”), represented by Allan B. Gelbard, 15760 Ventura Blvd., Suite 801, Encino, CA 91436.  Respondent is Yip Alex (“Respondent”), P.O. Box 97001, Bedford, VA 45224.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <barefoot-confidential.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 6, 2004.

On December 7, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <barefoot-confidential.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@barefoot-confidential.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 7, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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.

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 <barefoot-confidential.com> domain name is confusingly similar to Complainant’s BAREFOOT CONFIDENTIAL mark.

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

3. Respondent registered and used the <barefoot-confidential.com> domain name in bad faith.

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

FINDINGS

Complainant, Kick Ass Picture, Inc., produces and distributes adult entertainment films.  Complainant produces and distributes the “Barefoot Confidential” series of foot fetish films.  Complainant has been producing this highly successful series since August 1998, and has registered the BAREFOOT CONFIDENTIAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,758,528 issued September 2, 2003). 

Respondent registered the <barefoot-confidential.com> domain name on May 11, 2004.  Respondent’s domain name resolves to a competing commercial foot fetish website.

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 BAREFOOT CONFIDENTIAL mark through registration with the USPTO and through continuous use of the mark in commerce since 1998.  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark; see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

Respondent’s domain name is identical to Complainant’s mark but for the addition of the generic top-level domain “.com” and the placement of a hyphen between the terms of Complainant’s BAREFOOT CONFIDENTIAL mark.  Such changes are insufficient to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”; see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) finding that the hyphens and top-level domains are irrelevant for purposes of the Policy; see also Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”). 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) finding that the failure to challenge a complainant’s allegations allows a panel to accept all of complainant’s reasonable allegations and inferences as true; see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept complainant’s allegations as true.

In addition, the Panel construes Respondent’s failure to respond 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See 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; see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain, one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

Moreover, Respondent has used the <barefoot-confidential.com> domain name to direct Internet users to a competing commercial foot fetish website.  Such competing use of a domain name confusingly similar to Complainant’s BAREFOOT CONFIDENTIAL mark is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by registering a domain name confusingly similar to Complainant’s mark and using it to operate a competing commercial foot fetish website.  See 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; see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business.

Additionally, the Panel finds that Respondent had actual or constructive knowledge of Complainant’s BAREFOOT CONFIDENTIAL mark when registering the <barefoot-confidential.com> domain name because Complainant had registered the mark with the USPTO.  Moreover, the fact that Respondent uses the domain name to operate a competing commercial foot fetish website is further evidence that Respondent had actual or constructive knowledge of Complainant’s mark when registering the disputed domain name.  Therefore, Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); 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; see also Orange Glo Int’l v. 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.”).

Furthermore, Respondent uses the disputed domain name to operate a commercial foot fetish website that directly competes with Complainant.  Since the disputed domain name contains Complainant’s mark, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting website.  Therefore, Respondent’s opportunistic use of the disputed domain name represents bad faith registration and use under Policy ¶ 4(b)(iv).  See Access Res. Servs., Inc. v. Molle, FA 97750 (Nat. Arb. Forum Aug. 13, 2001) (“Respondent's registration and use of the <misscleosucks.com> omain name to promote competing psychic services, assumedly for commercial gain, by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <barefoot-confidential.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  January 21, 2005

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