WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LFP IP, LLC v. John Stewart, Dragon Domains Limited
Case No. DCO2011-0060
1. The Parties
Complainant is LFP IP, LLC of Beverly Hills, California, United States of America, represented by Lipsitz Green Scime Cambria, LLP, United States of America.
Respondent is John Stewart, Dragon Domains Limited of Werrington Downs, Australia.
2. The Domain Name and Registrar
The disputed domain name <hustler.co> (“the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On November 4, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On November 7, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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 Respondent of the Complaint, and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 1, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on December 9, 2011. 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
According to the Registrar PublicDomainRegistry.com, the Domain Name was registered on July 16, 2010.
5. Parties’ Contentions
Complainant states that it is the registered owner of the trademark HUSTLER, and that it has been used by it, and its affiliates, licensees and/or its predecessors-in-interest (collectively referred to as “LFP”) since the early 1970’s. Complainant asserts that LFP is currently one of the largest manufacturers, wholesalers and retailers of adult entertainment goods and services in the United States and throughout much of the world.
Complainant advises that the HUSTLER trademark was first used in the United States at least as early as 1972 in connection with an adult entertainment magazine and a gentlemen’s nightclub (or cabaret). Presently over 154 HUSTLER and HUSTLER-related trademarks are registered in over 50 countries, and it is now used in connection with magazines, videos, DVDs, adult toys, Internet websites, clothing items, nightclubs and a casino located in Los Angeles, California. Complainant states that in 1998 the retail chain HUSTLER HOLLYWOOD opened its first store and now has many stores throughout the United States, selling various HUSTLER brand items including, but not limited to, t-shirts, hats, lingerie, DVDs, novelties, lighters, magnets, books and magazines.
Complainant contends that the HUSTLER trademark (the “Mark”) is world-famous and submits it is the most widely known mark in all of adult entertainment. In the 1960’s the Mark was used in United States commerce in connection with a string of gentlemen’s clubs called the Hustler Club. Then in the early 1970’s the Mark was used extensively in connection with the HUSTLER magazine, a full-length men’s periodical with national distribution. Complainant states the Mark was federally registered in the United States in 1974.
Complainant advises that over the decades the use of the Mark has expanded into various countries throughout the world, including adult video production and a collection of Internet sites including a by-subscription online version of HUSTLER magazine. Complainant notes that Hustler’s founder Larry Flynt and the HUSTLER magazine were immortalized by Hollywood in 1997 in the Oscar nominated motion picture, “The People vs. Larry Flynt”, which offered a gritty depiction of the Mark’s proprietor and the business of HUSTLER.
Complainant also states that by 1998 LFP was using the Mark in connection with a chain of successful adult-themed retail stores across the United States. Now there are over 10 Hustler Clubs spanning the globe from New York City to Paris; a casino bearing the Mark located in California, a clothing line HUSTLER apparel, which offers hundreds of original HUSTLER designs featuring the Mark on shirts, shorts, hats and lingerie. In addition to is physical stores, HUSTLER has also enjoyed success on the Internet and offers thousands of original HUSTLER products, including DVDs, adult toys and novelties, books, magazines, and bath and body products. Complainant submits that as a result of this diversification, over 5,000 official HUSTLER web domains incorporating the Mark are presently active online, both in the United States and abroad.
Complainant states that the Domain Name is identical to the HUSTLER trademark in that <hustler.co> is only one letter away from a domain name registered to LFP Internet Group, LLC, which is an affiliate of Complainant, i.e. <hustler.com>, and is a common misspelling of LFP’s domain name.
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name, and since Complainant became aware of the Domain Name there has been no evidence of Respondent’s use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Complainant submits that Respondent has registered the Domain Name in bad faith and continues to use the Domain Name in bad faith. On or around August 1, 2011, the Domain Name directs Internet users to websites not owned or affiliated with LFP and providing goods and services in direct competition with those offered by LFP under the Mark. Then on or around August 30, 2011, and November 3, 2011, Respondent configured the Domain Name to automatically redirect Internet users to “www.vivid.com”, a website offering adult DVDs, videos and other adult entertainment, owned and operated by a competitor of LFP.
Complainant alleges Respondent is intentionally attempting to attract, for commercial gain, Internet users to an on-line location other than one belonging to LFP, by creating a likelihood of confusion with LFP’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or those websites to which Respondent directs Internet traffic.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established that it is the owner of the HUSTLER trademark and has used the Mark in the area of adult entertainment and obtained numerous trademark registrations worldwide for marks that consist of or include the word “hustler”. Complainant relies upon rights acquired through its use of the HUSTLER Mark as well as by virtue of the said trademark registrations. Such rights date back to 1972, which is well before the date of registration of the Domain Name.
It is clear that by virtue of its operation of one of the world’s largest adult entertainment businesses, including clubs and websites, none of which is disputed, that an unrelated entity using a very similar domain name is likely to lead to members of the public being confused and deceived.
Complainant contends that the Domain Name is identical to the HUSTLER Mark in that <hustler.co> is only one letter away from a domain name registered to LFP Internet Group, LLC, which is an affiliate of Complainant, i.e. <hustler.com>, and is a common misspelling of this “.com” domain name.
The Panel finds that the Domain Name is adapted to take advantage of typographical errors likely to be made by Internet users seeking Complainant’s website and materials.
The Panel further concludes that the overall impression is that Domain Name is necessarily connected to Complainant and/or the HUSTLER Mark.
On this basis it is found that:
a) Complainant has rights in respect of the HUSTLER Mark.
b) The Domain Name is confusingly similar to the HUSTLER Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Complainant contends that Respondent is using the Domain Name to direct Internet users to websites not owned or associated with Complainant or its affiliates and providing goods and services in direct competition with those offered by Complainant’s affiliates under the HUSTLER Mark. In particular it is alleged that Respondent has configured the Domain Name to automatically redirect visitors to “www.vivid.com”, a website offering adult DVDs, videos and other adult entertainment, owned and operated by a competitor of Complainant and its affiliates. These allegations are not challenged.
This permits the inference to be drawn that the websites associated with Respondent are designed to attract Internet users and that this is done for commercial gain. The Panel also infers that Respondent is involved in some way in a click-through operation and that by using a deliberately similar version of Complainant’s Mark this will attract Internet users. As before, these assertions are not disputed by Respondent.
The Panel is of the view that the Domain Name is being employed as a means of diverting Internet users. In those circumstances it is difficult to see how Respondent’s conduct could be characterized as legitimate. The business model of registering well-known trademarks and names as domain names and deriving revenue from “click through” business is all too well known.
On this basis it is found that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel concludes that Respondent is engaged in activities designed to attract for commercial gain Internet users to its websites or other online locations not related to Complainant, thereby creating a likelihood of confusion with Complainant and/or the HUSTLER Mark.
The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Internet users who may wish to access Complainant’s websites, materials and services and bad faith registration is borne out by the fact that Complainant’s HUSTLER Mark pre-dated Respondent’s registration of the Domain Name and in light of the widespread use and protection of the HUSTLER Mark.
Accordingly, the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hustler.co> be transferred to Complainant.
Clive L. Elliott
Dated: December 20, 2011