WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nora Baumberger v. SAND WebNames Ė For Sale
Case No. D2001-0502
1. The Parties
The Complainant is Nora Baumberger, an individual domiciled at Am Schornacker 66, 46485 Wesel, Germany.
The Respondent is SAND WebNames Ė For Sale, with an address at Vukovarska 43, Split 21000, and HR, Croatia.
2. The Domain Name and Registrar
The domain name at issue is <dollybuster.com> (the "domain name"). The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by hardcopy on April 5, 2001, and by email on April 9, 2001. The Center acknowledged that it had received the Complaint on April 9, 2001.
On April 10, 2001, the Center sent to the Registrar a request for verification of registration data. On April 12, 2001, the Registrar confirmed: 1) that <dollybuster.com> was registered with the Registrar; 2) that the current registrant of <dollybuster.com> is SAND WebNames Ė For Sale, Vukovarska 43, Split 21000, HR; 3) that the Administrative and Billing Contact are: Damir Kruzicevic, Vukovarska 43, Split 21000, HR, email: damir@PINKCLUB.COM, telephone number: +385 21 524 348; and that the Technical Contact is: Superb Internet Corporation, 1400 Ė 700 West Pender Street, Vancouver BC V6C 1G8, Canada, email: Hostmaster@SUBERB.NET, telephone number: [+1] 604 638 2525, fax number: [+1] 604 608 2953; 4) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name; and 5) that the domain name is currently active.
On April 20, 2001, the Center made a printout of Respondentís website www.dollybuster.com,www.dollybuster.com, and of the website www.karasxxx.com, which is linked to Respondentís website.
The Center forwarded the Complaint to the Respondent with copies to ICANN and to the Registrar by email on April 20, 2001, by fax on April 22, 2001, and by post/courier on April 23, 2001. Respondentís email address at email@example.com had permanent fatal errors. The Center formally notified the Respondent that the Complaint satisfied 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"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of May 12, 2001, was fixed for the Response.
No Response was submitted. Accordingly, the Center issued a Notification of Respondent Default to both parties on May 14, 2001.
On May 25, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by June 7, 2001.
The Panelist examined all notifications of the Center, and the Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted.
4. Factual Background
A. The Complainant
The Complainant is a pornographic pornography star known under the pseudonym "Dolly Buster".
The Complainant owns German trademark registration No. 398 23 997 "Dolly Buster" and Community trademark registration No. 000809731 "Dolly Buster" (the "Trademark") for the following goods and services:
Ė CL03: perfumery, cosmetics;
Ė CL09: apparatus for recording, transmission or reproduction of sound or images, magnetic data carries, recording discs, CDs, mini-discs, CD-ROMs, floppy discs, video cassettes, films, automatic vending machines;
Ė CL16: paper, cardboard and goods made from these materials, printed matter, bookbinding material, photographs, artists materials, playing cards, printersí type;
Ė CL24: textiles and textile goods, bed and table covers;
Ė CL25: clothing, headgear;
Ė CL27: carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile);
Ė CL28: games and playthings, gymnastic and sporting articles;
Ė CL32: beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages;
Ė CL35: advertising, business management;
Ė CL38: telecommunications;
Ė CL41: entertainment, in particular by means of telephone tape recording services, production of television, radio, telephone, audiotext and Internet broadcasts and performances; and
Ė CL42: computer programming.
The Complainant provided the Panel with copies of the registration certificates and a translation of the German certificate (Complainantís Exhibit 3).
The Complainant operates her principal websites at "www.dolly-buster.com", "www.dolly-buster.de" and "www.dollybuster.de", where she makes available pornographic photographs and video clips, and offers merchandise, such as ashtrays, calendars, posters and books.
The Complainant stated that she intends to use the Trademarks, in the future, for the goods and services for which they are registered. The Complainant submitted that the Trademarks which were registered on December 14, 1998 and February 24, 2000, are still in the 5-year grace period of use which will end in 2003 and 2005.
B. The Respondent
The Respondent registered the domain name <dollybuster.com> on January 12, 2000. The domain name resolves to a website that contains five (5) times the phrase "CONTINUEÖ.". When clicking one of the phrases, Internet users are automatically linked to a succession of pornographic websites, amongst which are: www.karasxxx.com and www.hotbabes.com.
C. Facts Underlying the Dispute
The Complainant asserts that she requested the Respondent several times by email, with copies to the Technical Contact Hostmaster@SUPERB.NET, to cease using the domain name. According to the Complainant, neither the Respondent nor the Technical Contact reacted to these requests.
On February 8, 2001, the Complainantís lawyer sent a warning letter to the Respondent and requesting the Respondent to sign the following declaration:
"1. SAND and Kruzicevic will with immediate effect refrain from further using the name "Dolly Buster", especially the website "dollybuster.com".
2. SAND and Kruzicevic accept a contractual penalty of DM 50.000 for every individual case of infringement against the above declaration.
3. SAND and Kruzicevic acknowledge their liability for damages caused to Dolly Buster by using the website "dollybuster.com".
4. SAND and Kruzicevic undertake to provide Dolly Buster with all necessary information about the use of the name "Dolly Buster" especially the number of users which have had access to the website "dollybuster.com"."(Complainantís Exhibit 4).
The Complainant states that the Respondent has connected the disputed domain name to the Complainantís domain name <dolly-buster.com>dolly-buster.com in so far as the content of the Complainantís website www.dolly-buster.com should automatically be opened when a user tries to open the Respondentís website www.dollybuster.com. However, according to the Complainant, the Respondent does not constantly keep the connection to the Complainantís website, and still sometimes uses the domain name for his own commercial gains. The Panel went to the Respondentís website at www.dollybuster.com and was Ė after clicking on one of the phrases "CONTINUEÖ" - automatically linked to the website www.karasxxx.com and to several other websites, but not to any website owned by the Complainant.
5. Partiesí Contentions
A. The Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, the Complainant submits that:
(1) the domain name <dollybuster.com> is confusingly similar to the Complainantís Trademark, "because the wording is identical except that the two words are not separated with a blank space which is not possible in the URL-Language";
(2) the Respondent has no rights or legitimate interests in the domain name, "because neither has he used or prepared to use the domain name in connection with a bona fide offering of goods or services nor has he been commonly known by the name "Dolly Buster" nor is he making a legitimate noncommercial or fair use of the domain name without intend for commercial gain"; and
(3) the domain name was registered and is being used in bad faith for the following reasons:
- The Complainant is commonly known by her pseudonym and trademark "Dolly Buster" in the field of goods and services the trademark is registered for, especially in the field of erotic video clips, photos, television and internet performances. Either the Complainant or one of her companies are owner of the domains "dolly-buster.de", "dollybuster.de" and "dolly-buster.com";
- The Respondent managed to register a domain which was not yet owned by the Complainant but which also contains her trademark. As it can be seen from the Respondentís name "SAND WebNames Ė For Sale" he obviously acquires domain names to sell or rent to the owners of corresponding trademarks or to competitors. This also follows from the fact that the Respondent does not have any relation to the Complainant or to any other person or enterprise by this name;
- In addition, the Respondent not only prevents the Complainant from reflecting her trademark in a corresponding domain name but also uses the domain name to disrupt the business of the Complainant. The Respondent uses the domain "dollybuster.com" to place automatic links to the pornographic website "karasxxx.com".<karasxxx.com>. The owner of this website offers not only pornographic material but also goods similar to those the Complainant offers on her websites, like erotic video clips and photos. In addition, by opening the website at issue several different websites with similar contents are automatically opened. Internet users who do not know exactly the spelling of the Complainantís websites are caught by competitive offers. Due to the similarity with regard to the kind of several offers [sic] the Respondent creates a likelihood of confusion with the Complainantís mark as to the source, sponsorship and affiliation of the Respondentís website;
- The Respondent obviously tries to exploit the famous and very well conceived trademark and business of the Complainant and to attract Internet users who only know the name and trademark "Dolly Buster" but who are not exactly aware how to find the Complainantís websites;
- Moreover, the probability that Internet users associate the Respondentís website with the Complainant brings the Complainant into disrepute because the Respondent not only offers erotic goods like the Complainantís, but also improper pornographic goods.
The Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.
B. The Respondent
No response was submitted.
6. Discussion and Findings
Referring to paragraph 14 of the Rules, in the absence of a response to the Complainantís allegations by the Respondent, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. The Panel cannot decide in the Complainantís favor solely based upon the Respondentís default, but is entitled to draw, and in this case does draw, such inferences as it deems appropriate and just under the circumstances from the Respondentís failure to respond.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:
(i) the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(a) Identical or confusingly similar
The only differences between the domain name and the Trademark are that: (1) the domain name eliminates the space between the two terms; and (2) the domain name has ".com" at the end.
The differences between Complainantís Trademark and Respondentís domain name are minor and do nothing to distinguish the mark from the domain name. The addition of the designation ".com" is non-distinctive because it is a gTLD required for registration of a domain name. (Footnote 1) Similarly, the elimination of the space between terms is without any significance since this change is dictated by technological factors and common practice amongst domain name registrants and users. (Footnote 2)
The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
(b) Rights or legitimate interests
Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:
(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 non-commercial 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.
The Complainant alleges that the Respondent has no rights in the domain name because none of the above circumstances is fulfilled.
The Respondent has not offered any evidence demonstrating the applicability of any of the criteria in paragraph 4(c) of the Policy.
The Panel finds that the requirements of paragraph 4(c) of the Policy have not been satisfied. The Respondentís only proven use of the domain name is to provide a website with links ("CONTINUEÖ") to other companiesí websites. The Respondent has not replied to the Complainantís request to provide information about how it is using the website and how many users have had access to the website. Internet users clicking on one of the "CONTINUEÖ" links on Respondentís website are automatically taken to a chain of pornographic and advertisement sites. The linking process cannot be stopped, except by shutting down the Internet Explorer program. This makes the Panel believe that the Respondent gains revenue from the linked site owners. Such use does not establish rights or legitimate interests in the domain name in the sense of paragraph 4(c) of the Policy, for the following reasons:
With respect to element 4(c)(i), the Panel finds that the Respondent is not using the domain name for a "bona fide offering of goods and services". The Respondent is not offering any goods or services for sale. It is only providing links to other companies that offer to sell goods or services.
With respect to element 4(c)(ii), the Panel notes that the Respondent has offered no evidence that it has been commonly known by the domain name < dollybuster.com> .
With respect to 4(b)(iii), the Panel finds that the Respondent is not making a legitimate non-commercial or fair use of the domain name, and that it is misleadingly diverting consumers for its own commercial gain. Respondentís use of the name of a well-known pornographic star to attract confused users to its site, and the Panelís belief that Respondent is profiting from Internet users who purchase goods or services from sites linked to its own website, is sufficient to prove that the requirements of paragraph 4(b)(iii) have not been met.
The Panel finds that the absence of any legitimate use and Respondentís failure to justify the use of "Dolly Buster" in its domain name, constitute at least prima facie evidence of a lack of rights to or legitimate interest in the domain name. (Footnote 3)
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
(c) Bad faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:
(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 website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Complainant seems to rely on all the elements of paragraph 4(b) of the Policy (see Complainantís contentions, summarisedsummarized on page 4-5 of this decision).
By not submitting a Response, the Respondent has failed to address the Complainantís allegations.
The Panel does not agree with the Complainantís contention that the Respondent has acquired the domain name for the purpose of selling or renting it to the Complainant or to competitors. The Respondent has identified itself as "SAND WebNames Ė For Sale". The inclusion of the words "FOR SALE" in the registration record may lead one to suspect that the Respondent is willing to sell or otherwise transfer the domain name. (Footnote 4) However, in the case at hand, there is no indication whatsoever that the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or one of her competitors, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. The Panel therefore finds that the criteria of paragraph 4(b)(i) of the Policy for bad faith are not fulfilled.
The Panel does also not agree with the Complainantís contention that the Respondent "prevent[s] the Complainant from reflecting her trademark in a corresponding domain name". The Complainant states that either she or one of her companies owns the domain names <dolly-buster.de>, <dollybuster.de> and <dolly-buster.com> (Complaint, p.8). According to NSIís Whois Information, the registrant of <dolly-buster.de> and <dolly-buster.com> is Dolly Buster DBM Videovertrieb GmbH, and the registrant of <dollybuster.de> is COM Online GmbH Multimedia Service & Co.KG. In addition, the Panel has found that COM Online GmbH Multimedia Service & Co.KG has also registered the domain names <dollybuster.net> and <dolly-buster.net>. Taken into account that the Complainant (or one of her companies) owns five (5) domain names incorporating her Trademark, Respondentís registration of <dollybuster.com> cannot be considered to prevent the Complainant from reflecting her mark in a corresponding domain name. Also, the Complainant has not proved that Respondent engaged in a "pattern of conduct". Therefore, the bad faith criteria of paragraph 4(b)(ii) of the Policy are not fulfilled.
However, in the case at hand, the following circumstances lead the Panel to conclude that the Respondent is acting in bad faith:
a) The Respondent does not seem to have any relation with the Complainant or with any other person or enterprise bearing the name "Dolly Buster".
b) Respondent uses the domain name to provide a website with links that, when visited, results in a non-stop linking process to other websites, like www.karasxxx.com and www.hotbabes.com. These websites offer pornographic material and goods similar to those the Complainant offers on her websites. According to the Complainant, these websites also offer pornographic goods which in Complainantís opinion are improper. Since Respondent has not contradicted this finding, the Panel is of the opinion that the Complainant must not tolerate to be brought into connection withshould not be forced to be associated with the offering of goods which she considers herself to be improper. Such use may tarnish the Dolly Buster mark, and thus disrupt Complainant's business. Therefore, the conditions of paragraph 4(b)(iii) are fulfilled.
c) The Complainantís Trademark is well known, as evidenced by its substantial use in Germany and in other countries. The Respondent must have been aware of these trademark rights when it registered and first used the domain name. Subsequently, Complainant gave the Respondent actual notice of Complainantís ownership of, and exclusive rights to the Trademark. The Respondent has nonetheless continued to use the mark in the domain name and to use the domain name to access Respondentís website.
d) There is no doubt that the Respondent is seeking to capitalize on the well-known Dolly Buster name. By so doing, the Respondent has acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Respondent is seeking to profit from the likelihood of confusion created by the domain name <dollybuster.com>. The Respondent is intentionally attracting confused users to its site for commercial gain. This is a clear example of bad faith within the meaning of paragraph 4(b)(iv).
e) The Respondent has failed to answer the Complainantís warning letters and the Complaint, and has failed to demonstrate any good faith use. (Footnote 5)
f) The Panel cannot conceive any plausible actual or contemplated active use of the domain name by the Respondent that would not violate or infringebe a passing of, constitute an infringement of the Complainantís trademark rights, or would otherwise be legitimate.
Based on the above, the Panel finds that the Complainant has satisfied the burden of proof with respect to bad faith registration and use of the domain name.
The Panel decides that:
1) the domain name <dollybuster.com> is identical to the trademark "Dolly Buster";
2) the Respondent has no rights or legitimate interest in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith by the Respondent.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the Registrar, NSI, transfer the name <dollybuster.com> to the Complainant.
Dated: June 7, 2001
1. See: Gateway, Inc. v. James Cadieux (D2000-0198); The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395) and Koninklijke Philips Electronics NV v. Ramazan Goktas (D2000-1638). (back to text)
2. See: Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club (D2000-1532); Real Madrid Club de Futbol v. Lander W.C.S. (D2000-1805) and Margaret Drabble v. Old Barn Studios, Ltd. (D2001-0209). (back to text)
3. See: Digital City, Inc. v. Smalldomain For Sale (D2000-1283), at p.6. (back to text)
4. See: Euromarket Designs, Inc. d/b/a Crate & Barrel v. Domain For Sale VMI (D2000-1195); Bayerische Motoren Werke AG v. JMXTRADE.com Selling Premium Domain (D2000-1693). (back to text)
5. See: Pharmacia & Upjohn AB v. Dario H. Romero (D2000-1273), at p.6; Telstra Corporation, Ltd. v. Nuclear Marshmallows (D2000-0003), at p.8. (back to text)