WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chippendales USA, LLC v. Registerfly.com
Case No. D2006-0488
1. The Parties
Complainant is Chippendales USA, LLC, Plainview, New York, United States of America, represented by Pitney Hardin LLP, United States of America.
Respondent is Registerfly.com, West Orange, New Jersey, United States of America.
2. The Domain Names and Registrar
The disputed domain names, <chippendalecasino.com>, <chippendalesbingo.com>, <chippendalescasino.com>, and <chippendalespoker.com> (the “Domain Names”) are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2006. On April 19, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Names. On April 19, 2006, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on May 1, 2006. In accordance with the Rules, paragraph 5(a), the Response due date was May 21, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2006.
The Center appointed Michael A. Albert as the sole panelist in this matter on June 1, 2006. 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.
4. Factual Background
The evidence submitted by Complainant, which, in the absence of any response by Respondent is undisputed, indicates that Complainant is a Delaware corporation providing nightclub entertainment services for women featuring exotic male dancing.
As part of its business, Complainant has secured a variety of United States and international trademark registrations for the mark CHIPPENDALES, as well as various logos incorporating the term. Complainant has appended to its Complaint evidence of these mark registrations, the earliest of which dates back to 1982. These registrations cover use of the CHIPPENDALES mark for nightclub entertainment services, recorded media of such live performances, slot machines, and merchandise such as calendars and posters.
The disputed Domain Names were registered on August 9, 2005. The Domain Names currently redirect to a website for Info Mediair, a Dutch software/web applications company (“www.infomediair.nl”).
5. Parties’ Contentions
Complainant contends that it has established trademark rights by virtue of its long use of the CHIPPENDALES mark in commerce, its federal and international registrations of the mark, and its substantial investment in building consumer goodwill in the marks. Complainant also argues that the disputed Domain Names are confusingly similar to its marks, because they consist of nothing more than the identical mark followed by a generic word and a top level domain. Furthermore, Complainant alleges that the addition of the terms “casino,” “poker,” and “bingo” seek to exploit the “close connection between Chippendales and gaming in general.” Complainant argues that this close connection is established by its hundreds of shows in U.S. casinos, as well as the recent construction of The Chippendales Theatre at The Rio in Las Vegas, Nevada.
Complainant also argues that Respondent has no rights or legitimate interest in the Domain Names. The Whois data lists Registerfly.com, a domain name registration and web hosting company, as the registrant of the disputed Domain Names. Complainant argues that Registerfly.com acts as a “name shield” for the true registrant of the Domain Names. According to Complainant, the circumstances indicate that although formal ownership vests in Registerfly.com, the actual party in interest controlling the disputed Domain Names is a different entity, one likely to be benefiting from its control of the disputed Domain Names by virtue of redirection to the “www.infomediair.nl” website.
Complainant contends that the well-known nature of its mark supports an inference of bad faith on the part of Respondent. Complainant also argues that the use of the Domain Names for nothing more than redirection, presumably for commercial gain, is further evidence of bad faith. Lastly, Complainant argues that the beneficial owner of the registrations of the Domain Names acted in bad faith by hiding its identity through Respondent’s ProtectFly privacy protection service.
As noted above, Respondent is in default pursuant to the Rules, paragraphs 5(e), and 14 and paragraph 7(c) of the Supplemental Rules, because no Response was received from Respondent by the applicable deadline.
Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for Complainant. Rather, under paragraph 4(a) of the Policy, it remains Complainant’s burden to establish that all three of the required criteria for a transfer of the Domain Name or other remedy have been met.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.
6. Discussion and Findings
In order to obtain transfer of the disputed Domain Names, the Complainant must show under paragraphs 4(a)(i-iii) of the Policy:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed Domain Names; and
(iii) the disputed Domain Names were registered and is being used in bad faith.
A. Identity of the Respondent
Before addressing the requirements of the Policy, the nature and identity of Respondent in this case must be addressed. Registerfly.com is the formal Respondent in this case. It is the entity that is recorded on the Whois register for the disputed Domain Names and the Verification Response from the Registrar (eNom). It is, therefore, the party against whom any complaint should be initiated and upon whom service should be effected under Paragraph 2 of the Rules.
It is clear from the content of the Complaint that Registerfly.com provides domain name and other internet related services. Additional evidence submitted by Complainant confirms that Registerfly.com is one of a growing number of entities offering so called “Whois privacy protection” services. The proposition that underlies these services is that the provision of registration details that are accessible through Whois services may result in unsolicited e-mails, regular mail or even phone calls. These so called “privacy” or “masking” services operate by allowing the “true” (or beneficial) owner of a domain name to transfer the registration of the domain name into the name of the service provider. The service provider then holds the domain name on behalf of the beneficial owners and the Whois details are amended accordingly.
In the case currently before the Panel, it seems highly likely that the reason why the disputed Domain Names are in the name of Registerfly.com is that they are held by Registerfly.com pursuant to some sort of masking or privacy service for a customer.
In the absence of any evidence to the contrary, this Panel accepts Complainant’s contentions in this respect. As a consequence, the Panel considers it appropriate, for purposes of this case, to treat the actions of the beneficial owner of the disputed Domain Names as the actions of Respondent for the purposes of paragraph 4 of the Policy. See Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969 (December 19, 2005).
B. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Names, such as use or preparation to use the Domain Names prior to notice of the dispute, being commonly known by the Domain Names, or making legitimate noncommercial or fair use of the Domain Names.
Moreover, as discussed below, Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question Complainant’s argument that Respondent has acted in bad faith.
C. Complainant’s Proof
(i) Identical or Confusingly Similar
Complainant’s registrations of its marks on the Principal Register of the USPTO establish a presumption of validity of the marks under United States law. See 15 U.S.C. § 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations constitute constructive notice to all other parties of Complainant’s ownership of the marks. See 15 U.S.C. § 1072.
In comparing Complainant’s mark to the Domain Names, it is well-established that the generic top-level domain, in this case “.com,” must be excluded from consideration as being a generic or functional component of the Domain Names. See Sporty’s Farm v. Sportsman’s Market, 202 F.3d 489, 498, (2d Cir. 2000); College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001).
The remaining terms, “chippendalecasino,” “chippendalesbingo,” “chippendalescasino,” and “chippendalespoker” consist solely of Complainant’s trademark CHIPPENDALES, plus the generic terms “casino,” “bingo,” and “poker”.1 Each of the domain names features the word “chippendales” prominently. The addition of a generic term does not ordinarily serve to distinguish a domain name over registered marks. See, e.g., Chippendales USA, LLC v. Latins Finest, WIPO Case No. D2003-0980 (February 6, 2004).
Accordingly, the Panel finds that the Domain Names are confusingly similar to Complainant’s CHIPPENDALES mark, despite the addition of these generic terms. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001). Indeed, these particular generic terms enhance, rather than reduce, the likelihood of confusion, given the “close connection between Chippendales and gaming in general” as alleged by Complainant, and thus further support the Panel’s conclusion on this issue. See AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276 (November 25, 2000).
(ii) Rights or Legitimate Interests
There is no evidence in the record that Respondent has any rights or legitimate interest in the disputed Domain Names. Complainant states that Respondent has no rights or legitimate interest in the Domain Names. This contention is unrebutted as a consequence of Respondent’s default, and the Panel finds it credible.
The use of the disputed Domain Names as described in the Complaint does not appear to be in connection with a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademark. In the Panel’s view, the use of the Domain Names to redirect users to an unrelated Dutch website offering web design services cannot grant Respondent legitimate rights or interests in the disputed domain name. See America On-Line, Inc. v. John Zuccarini, WIPO Case No. D2000-1495 (January 22, 2001).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interest in the disputed Domain Names.
(iii) Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The fourth is “intentionally attempt[ing] to attract, for commercial gain, Internet users to Respondent’s 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 [Respondent’s] web site or location or of a product or service on Respondent’s web site or location.” As noted above, Respondent, as a consequence of its default, has failed to provide any exculpatory information or reasoning that might have led the Panel to question Complainant’s argument that Respondent has acted in bad faith.
In this case, the Panel finds that Complainant has met its burden under the Rules, paragraph 4(b)(iv), because its appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in an attempt to attract users to the “www.infomediair.nl” website for commercial gain due to confusion with Complainant’s mark. See Infospace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075 (April 27, 2000); see also America On-Line, Inc. v. Zuccarini (“Respondent’s has principally used the disputed domain names in connection with redirecting Internet users to websites unrelated to Complainant. Such use is hereinafter determined to be in bad faith.”).
Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith.
In light of the above findings and analysis, the Panel decides that Complainant has met its burden of proving: (1) the Domain Names are identical or confusingly similar to Complainant’s CHIPPENDALES mark; (2) Respondent has no rights or legitimate interest in the Domain Names; and (3) the Domain Names have been registered and are being used by Respondent in bad faith.
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 Names, <chippendalecasino.com>, <chippendalesbingo.com>, <chippendalescasino.com>, and <chippendalespoker.com>, be transferred to the Complainant.
Michael A. Albert
Dated: June 15, 2006
1 Although Complainant does not address the issue, the omission of the trailing “s” from Complainant’s CHIPPENDALES mark in the <chippendalecasino.com> domain name does not affect the Panel’s analysis with respect to this domain name. See Memorydealers.com, Inc. v. Dave Talebi, WIPO Case No. D2004-0409 (July 20, 2004) (where disputed domain name differs from Complainant’s mark only in the lack of a final “s,” “similarity and confusion are obvious.”).