WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Do The Hustle, LLC v. Monkey Media, LLC

Case No. D2000-0625

 

1. The Parties

Complainant is Do The Hustle, LLC, a New York Limited Liability Company, with a principal place of business at 352 7th Avenue, 17th Floor, New York, New York 10001 USA.

Respondent is Monkey Media, LLC, a Limited Liability Company with a principal address of P.O. Box 242064, Anchorage, Alaska USA and listing additional addresses at 7639 Wisteria Street, Anchorage, Alaska 99502 USA and 4137 Raspberry Road, Anchorage, Alaska 99502 USA.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <cultureclub.com> (the "Domain Name"). The registrar is Tucows.com Inc., 96 Mowat Avenue, Toronto, Ontario M6K 3M1 Canada.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the original Complaint of Complainant via email on June 19, 2000. On June 21, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On June 22, 2000, the Center received hardcopy of the original Complaint. The Complainant paid the required fee.

On June 21, 2000, the Center sent to Network Solutions Inc., being the Registrar identified in the complaint, a Request for Registrar Verification. On June 25, 2000, the Network Solutions, Inc. responded that it was not the registrar.

On June 28, 2000, the Center sent a request addressed to the Complainant regarding the need to amend the Complaint.

On July 6, 2000, the Center received a revised Complaint via email. On July 10, 2000, the Center received hardcopy of the revised Complaint.

On July 7, 2000, the Center sent a second request for verification of registration data to the Registrar. On July 10, 2000, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

On July 10, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On July 11, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 29, 2000, the Center received a Response from Respondent and the Center acknowledged receipt of the Response.

Complainant has tendered a Reply and the Respondent has tendered a Sur-Reply for consideration by the Panel.

On August 22, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"), the Center notified the parties of the appointment of a three-arbitrator panel consisting of the Presiding Panelist together with Mark V. B. Partridge, Esq. as Complainantís party-appointed panelist and G. Gervaise Davis, III, Esq. as Respondentís party-appointed panelist.

The Panel has determined that it will consider the Reply and Sur-Reply.

 

4. Factual Background

Complainant is the owner of United States Service Mark Registration No. 2,189,224 for the mark CULTURE CLUB in International Class 42 for bar and nightclub services, which Registration issued on September 15, 1998. Since at least as early as 1997 and continuing through the present, Complainant has continuously used the mark CULTURE CLUB in connection with 1980ís theme bars and dance clubs. Complainantís CULTURE CLUB establishments are located in cities throughout the United States, including Chicago, Denver, Houston, New York, Philadelphia, San Antonio, San Francisco, San Jose, Scottsdale, Seattle, and Washington, D.C. Complainant has expended substantial time, money and resources advertising, marketing and promoting its CULTURE CLUB establishments, such that the name and mark CULTURE CLUB has become widely known and recognized as the source identifier of Complainantís establishments.

On December 11, 1998, Respondent registered the domain name <cultureclub.com>.

Respondent has not set up the Domain Name to resolve to any website nor posted content on a website. Respondent has made no apparent use of the Domain Name.

Complainant alleges that Respondent has registered at least forty-eight other domain names, but has failed to develop most of these names into actual websites. The few websites that Respondent has developed are pornographic.

On April 28, 2000, Complainant sent email to Respondent demanding that Respondent refrain from its allegedly violative activities and transfer the Domain Name to Complainant. Complainant received no response to said e-mail.

On or about May 10, 2000, Complainant sent a formal cease and desist letter to Respondent demanding that Respondent immediately cease and desist from using the domain name <cultureclub.com> and agree to immediately transfer the registration of the Domain Name to Complainant.

Complainant alleges that on June 2, 2000 Complainant requested that Respondent transfer the Domain Name and that Respondentís registered agent indicated that she would be willing to sell the Domain Name to Complaint for $10,000.00.

 

5. Partiesí Contentions

A. Complainant contends that it has a registered service mark in CULTURE CLUB. Complainant further contends that the Domain Name is identical with and confusingly similar to the CULTURE CLUB service mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent did not contest Complainantís assertion that it has a service mark in CULTURE CLUB or that the Domain Name is identical with or confusing similar to the trademarks.

Respondent contends that it has rights or legitimate interest in the Domain Name.

Respondent denies that the registration and use of the Domain Name is in bad faith.

 

6. Discussion and Findings

Identity or Confusing Similarity.

The Domain Name in dispute <cultureclub.com> incorporates "cultureclub" which is identical with Complainantís service mark CULTURE CLUB. Therefore, the Panel finds that the Domain Name is identical with and confusingly similar to the CULTURE CLUB service mark owned by Complainant pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant asserts that Respondent has no rights or legitimate interest in the Domain Name. Complainant has exclusive service mark rights to the CULTURE CLUB mark and has not given Respondent permission to use the CULTURE CLUB service mark. Complainant has no relationship with Respondent that would in any way entitle Respondent to use the CULTURE CLUB mark.

The Policy paragraph 4(c) allows three methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has offered no evidence that it made demonstrable preparations to develop a website prior to the dispute.

Respondent has offered no evidence that it has been commonly known by the Domain Name.

Respondent has offered an explanation that it selected the Domain Name because it matched the name of a popular rock group and for possible use as a fan site. The panel finds that the possibility of setting up a fan website without making any demonstrable preparations does not constitute sufficient evidence that Respondent made non-commercial or fair use of the Domain Name.

Respondent offers insufficient evidence of the applicability of any of the criteria in the Policy paragraph 4(c).

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

There is no evidence that respondent registered and used the Domain Name for the purpose of profiting from Complainant's service mark. The offer to sell the domain name to settle this dispute does not necessarily establish bad faith.

The evidence does not support the assertion that Respondent engages in a pattern of conduct that intentionally prevents others from using their marks as domain names. Rather Respondent engages in a pattern of conduct involving the registration of names that are likely to attract persons to adult entertainment sites. Most of these names could not serve as trademarks because they would be deemed scandalous. The Panel is troubled by the tendency of Respondent to post pornographic material on its websites, but does not feel that in the circumstances of the present case the use of pornography constitutes a legal basis for finding bad faith.

There is no evidence that Respondent is seeking to prevent the use of a mark by a competitor.

The evidence is insufficient to demonstrate that Respondent intentionally selected the Domain Name for the purpose of attracting attention to a commercial site using confusion with Complainant's mark. Complainant's mark was first used in 1997, approximately one year before Respondent registered the domain name. It appears that its use was regionally limited and Respondent is not located in that region. The evidence suggests instead that Respondent registered the Domain Name, because it was the same as the name of a well-known rock band and could be useful in attracting persons to its adult websites. The evidence may support bad faith with respect to the rock band, but it is not bad faith with respect to Complainant's service mark.

The Panel finds that Complainant has not shown the necessary elements of the Policy paragraph 4(b) or that Respondent has registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Panel concludes (a) that the domain name <cultureclub.com> is identical with and confusingly similar to the service mark CULTURE CLUB and its variations and (b) that Respondent has no rights or legitimate interest in the Domain Name. However, the Panel further concludes that Complainant has failed to demonstrate (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel does not order that the Domain Name be transferred to Do The Hustle, LLC.


Richard W. Page
Presiding Panelist

G. Gervaise Davis III Mark V. B. Partridge
Panelists

September 5, 2000