World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LFP IP, LLC v. MAY BE FOR SALE EMAIL YOUR OFFER PREMIUM DOMAINS, Premium domains, Dave Wright

Case No. D2011-2152

1. The Parties

The Complainant is LFP IP, LLC of Beverly Hills, California, United States of America, represented by Lipsitz Green Scime Cambria LLP, United States of America.

The Respondents are MAY BE FOR SALE EMAIL YOUR OFFER PREMIUM DOMAINS, Premium domains, Dave Wright of Austin, Texas, United States of America (hereinafter the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <barelylegaltv.com> is registered with UdomainName.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 8, 2011, the Center transmitted by email to UdomainName.com LLC. a request for registrar verification in connection with the disputed domain name. On December 8, 2011, UdomainName.com LLC. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on December 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2012.

The Center appointed Nicolas Ulmer as the sole panelist in this matter on January 12, 2012. 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 following facts and background provided by the Complainant appear clearly and undisputed. The Complainant is a company in the adult publication and entertainment business with its principal place of business in Beverly Hills, California, United States of America; the Complainant’s founder is Larry Flint. The Complainant has held United States Trademarks for BARELY LEGAL since 1993. The Complainant makes use of this trademark in connection with an adult entertainment website, “www.barelylegal.com”, the sale of adult-content videos, and a nightclub.

The Complainant also has an affiliated magazine, “Barely Legal XXX”. The Complainant appears to have regularly filed trademarks to cover new adult entertainment offerings and appears to be a significant and well known presence in the adult entertainment industry.

The Complainant also asserts that it owns the HUSTLER trademark which it uses in connection with adult entertainment, including television and broadcasting services, and a website “www.hustlertv.com”.

According to the Registrar’s verification response, the disputed domain name was created on December 9, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is obviously confusingly similar to its trademark as it incorporates the entirety of such well-known trademark. The addition of “tv” in the disputed domain name does not change this conclusion and is likely an attempt to suggest a counterpart to the Complainant’s “www.hustlertv.com” website. The Complainant further contends that the Respondent has no rights and has made no bona fide use offering of goods and services in connection with the disputed domain name. Finally, the Complainant asserts that it is evident that the Respondent registered and then used the disputed domain in bad faith by seeking to profit from Complainant’s well-known and long-existing trademark in the adult entertainment industry. In particular, the Respondent made use of the disputed domain name to sell competing third-party adult-content material and is offering the disputed domain name for sale for USD 2,750.00.

The Complainant accordingly requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name includes the entirety of the Complainant’s trademark. In this Panel’s view, the addition of the suffix “tv” does little or nothing to dissipate the evident confusion with the Complainant’s trademark, all the more so as the Complainant is, inter alia, in the video and TV business. The disputed domain name is accordingly confusingly similar within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Respondent is not known as “barely legal” and there is no evidence or indicia on the record to suggest that Respondent has any rights or legitimate interests in the disputed domain name. In the absence of a Response from the Respondent, the Complainant’s clear motivated assertions of the Respondent’s lack of rights satisfies its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered long after the Complainant’s well-known trademark was registered and was in extensive use in the adult entertainment industry and, in this Panel’s view, with likely knowledge of the same. Moreover, the evidence shows that disputed domain name has been used to sell adult-content material, or connect to third-party adult-content websites which compete with the Complainant in the sale of adult-content material, and this for the Respondent’s commercial gain. Secondly, the website to which the disputed domain name resolves offers the sale of the disputed domain name for USD 2,750.00, a sum far in excess of its registration costs. Both of the foregoing activities are constitutive of bad faith use within the meaning of the Policy. Accordingly the Panel finds that the Complainant has also proven the bad faith registration and use under paragraph 4(a)(iii) of the Policy.

7. Decision

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

Nicolas Ulmer
Sole Panelist
Dated: January 23, 2012

 

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