WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sammy's Management Company v. Keith Wimbley

Case No. D2002-0912

 

1. The Parties

The Complainant is Sammy's Management Company of Pensacola, Florida, United States of America, represented by Balch & Bingham LLP of United States of America.

The Respondent is Keith Wimbley of Mobile, Alabama, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <sammysgirls.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2002. On October 4, 2002, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 4, 2002, Go Daddy Software transmitted by email to the Center its verification response identifying the party listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 15, 2002. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 15, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2002. No Response was filed.

The Center appointed R. Eric Gaum as the sole panelist in this matter on November 12, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On November 27, 2002, the Panel requested additional time in which to issue its decision. On the same date, the Center transmitted notice to the parties of the Panelís request and indicated that the Panel was expected to issue its Decision by December 5, 2002.

 

4. Factual Background

Complainant Sammyís Management Company is the owner of common law rights to the mark SAMMYíS, which it uses as its corporate and trade name. Complainant is a visual entertainment establishment with four locations in Mobile and Birmingham, Alabama, and Pensacola and Ft. Walton, Florida. The SAMMYíS mark has been used continuously and exclusively by Complainant since the early 1970ís.

Respondent is not a licensee of Complainant. Nor is Respondent authorized to use Complainantís SAMMYíS mark. Respondent has registered the domain name <sammysgirls.com>. The Panel was unable to access the domain name at the time this decision was being prepared.

 

5. Partiesí Contentions

A. Complainant

In the early 1970ís, Sam Cantavespre founded a visual entertainment establishment called Sammyís. Although not explicitly stated in the Complaint, it appears that Sammyís is a strip club or menís club. The use of the Sammyís name was assigned from Mr. Cantavespre and his family to Sammyís Management Company ("SMC"). In addition to a Mobile location, there are SMC establishments in Birmingham, Alabama, Pensacola, Florida, and Ft. Walton, Florida. These are the only four locations in which an SMC establishment is located.

On or about June, early July, 2002, Respondent Keith Wimbley was found soliciting the independent contractors who provide services at the SMC establishment in Mobile, Alabama. Mr. Wimbley requested that these individuals appear on his website, "http://www.sammysgirls.com". The website advertises that "Sammyís Girls" has four locations, the same four locations as SMC establishments. The website also listed various individuals as being located in each of the four locations of SMC establishments Ė thereby creating an inference that the girls posing for the "http://www.sammysgirls.com" website are affiliated with the SMC establishments.

Corporate counsel for SMC communicated with Respondent by letter dated July 30, 2002, requesting that he cease and desist from operating the website "http://www.sammysgirls.com" and cease any further solicitation of dancers in any of SMCís premises. Within two weeks of this letter, Complainantís counsel received a telephone call from Respondent. Respondent indicated that he had spoken with an attorney. He also agreed to stop soliciting the girls. Respondent also stated that he designs and builds adult websites, acknowledged that he ran the "http://www.sammysgirls.com" website, and was the owner and operator of the website. However, Respondent also indicated that he would continue to operate the website.

Complainant eventually had other counsel send a demand to Respondent that he cease and desist from the complained of conduct. In response, a lawyer representing the Respondent indicated to Complainantís counsel that Respondent would be willing to sell SMC the "http://www.sammysgirls.com" website and that they would like to receive $5,000.00. Complainant refused to pay for the domain name.

After further attempts to resolve the dispute, Respondent continued to refuse to relinquish the domain name and posted more offensive pornographic material to the "http://www.sammysgirls.com" website.

B. Respondent

Respondent did not file a Response to the Complaint.

 

6. Discussion and Findings

6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

6.3 The Center forwarded notification of the complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. The Center also forwarded notification of default to the Respondent via email.

6.4 Based on the methods employed to provide the Respondent with notice of the Complaint and default, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

6.6 As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.

A. Identical or Confusingly Similar

6.7 Based upon the Complainantís continuous use of the SAMMYíS mark since at least as early as the 1970ís, the Complainant clearly has common law rights in the mark.

6.8 Complainant asserts that the domain name <sammysgirls.com> is virtually identical, and therefore confusingly similar, to the SAMMYíS mark.

6.9 Although the domain name is not identical to the mark, the Panel agrees that the two are confusingly similar. The only differences between the domain name and the mark are the "girls.com" and the apostrophe, which are trivial differences.

6.10 The Panel finds the <sammysgirls.com> domain name is confusingly similar to the common law SAMMYíS mark, and that the Complainant has established it has rights in the mark SAMMYíS, pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.11 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:

(i) before any notice to you [Respondent] 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.

6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <sammysgirls.com>.

6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <sammysgirls.com>, pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b) states:

(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.

6.15 From the uncontested facts set forth in the Complaint, Respondent clearly registered and used the domain name in bad faith. Respondent knew of the SAMMYíS mark when it solicited SMCís dancers to appear on Respondentís website. Respondent misrepresented on its website that it had locations in the same four locations as SMC establishments. Respondent offered goods / services on its website that are similar to those offered by SMC (although perhaps to different degrees). Finally, Respondent sought $5,000.00 to cease and desist from using the domain name. This is an amount well beyond any reasonable costs associated with registering the domain name.

6.16 The Panel finds the Complainant has established that the Respondent registered and used the domain name <sammysgirls.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sammysgirls.com> be transferred to the Complainant.

 


 

R. Eric Gaum
Sole Panelist

Date: December 9, 2002