Athena’s Home Novelties, Inc. v. Midnight Madness and I Leased My Site.Com

Case No. D2003-0904

The Complainant is Athena’s Home Novelties, Inc., Woonsocket, Rhode Island, United States of America, represented by Duffy & Sweeney Ltd., United States of America.

The Respondents are Midnight Madness ("Midnight Madness") and I Leased My Site.Com ("ILMS"), Salem, New Hampshire, United States of America.

The disputed domain name <athenashomenovelties.com> is registered with Network Solutions, Inc. Registrar. The disputed domain name <athenasnovelties.com> is registered with Go Daddy Software, Inc. ("Domain Names").

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 12, 2003. On November 13, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar and Go Daddy Software, Inc. a request for registrar verification in connection with the Domain Names. On November 13, 2003, Go Daddy Software, Inc. transmitted by email to the Center its verification response confirming that ILMS is listed as the registrant of <athenasnovelties.com> and providing the contact details for the administrative, billing, and technical contact. On November 18, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that Midnight Madness is listed as the registrant of <athenashomenovelties.com> 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 December 1, 2003. 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 Respondents of the Complaint, and the proceedings commenced on December 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was December 22, 2003. The Respondents did not submit a Response. Accordingly, the Center notified the parties of the Respondents’ default on December 23, 2003.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on December 31, 2003. 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.

The Complainant is engaged in the adult novelty products business. The Complainant markets and sells its products under the name and mark ATHENA’S HOME NOVELTIES. The mark ATHENA’S HOME NOVELTIES has been in continuous use since 1998, and is a federally registered trademark in the United States.

The Complainant’s official website is connected to the domain name <athenashn.com>.

According to the Registrars, the domain name <athenashomenovelties.com> was registered by Midnight Madness and the domain name <athenasnovelties.com> was registered by ILMS.

The Complainant offers for sale adult novelty products, educational materials, literature, games, jewelry, and health and beauty products under the name and mark ATHENA’S HOME NOVELTIES. The Complainant offers these products for sale throughout the United States via its on-line store located at "www.athenashn.com", in-home parties and distributors located in 22 states. The popularity of Complainant’s products has soared recently, resulting in total annual sales of more than $4.5 million.

The Complainant has continuously used the trademark ATHENA’S HOME NOVELTIES to identify its business. The mark is listed on the principal register of the United States Patent and Trademark Office.

The Complainant has invested approximately $250,000 advertising and promoting its mark and its associated products and services on the Internet and through other media channels. The mark has gained widespread nationwide recognition and has become regarded as synonymous with the Complainant. As a result, the Complainant’s trademark embodies valuable goodwill and is an extremely valuable corporate asset.

The domain name <athenashomenovelties.com> is identical to Complainant’s trademark ATHENA’S HOME NOVELTIES with the exception of the apostrophe, which may not be included in a domain name. In addition, the domain name <athenasnovelties.com> is identical to the Complainant’s trademark but for the omission of the apostrophe and the word "home." The Domain Names are therefore confusingly similar to the Complainant’s trademark.

The Respondents have no rights or legitimate interests in the Domain Names. The Respondents are not, and have never been, commonly known by either of the Domain Names and have no registered or common law trademark rights or other rights in the Domain Names. The Complainant has never licensed or assigned any rights in the Complainant’s mark to the Respondents.

The Respondents are not currently using the Domain Names for a legitimate non-commercial or fair use of the Complainant’s mark. The domain name <athenashomenovelties.com> does not resolve an active website, and the domain name <athenasnovelties.com> resolves directly to the commercial Midnight Madness website.

The Respondents’ registration and use of the Domain Names was to intentionally attract, for commercial gain, Internet users to the Midnight Madness website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation of the Midnight Madness website and the products listed thereon. In addition, the Respondents intentionally disrupted the business of the Complainant by misdirecting Internet users away from its website.

Midnight Madness is a direct competitor of the Complainant which also sells adult novelty items via the Internet, in-home parties and distributors. ILMS is a company directly affiliated with Midnight Madness and its domain name <athenasnolvelties.com> resolves directly to the Midnight Madness website. The Complainant believes that Midnight Madness and ILMS are owned or controlled by the same principal.

In late 1998, the owner of Midnight Madness contacted the president of the Complainant, with whom she had previously worked, and requested that the Complainant use Midnight Madness as one of its wholesale novelty product suppliers. Shortly after the Complainant refused to purchase supplies from Midnight Madness, it learned that Midnight Madness had registered the domain name <athenashomenovelties.com> and was using the domain name to point to the Midnight Madness website.

On or about February 1, 1999, the Complainant delivered a letter to Midnight Madness demanding that it cease and desist using the domain name <athenashomenovelties.com> and transfer the domain name to the Complainant. Midnight Madness ceased using the domain name to point to its website but refused to transfer ownership of the domain name to the Complainant.

In early 2004, the Complainant learned that ILMS registered the domain name <athenasnovelties.com> and was using it to point to the Midnight Madness website. Shortly thereafter, the Complainant was contacted by an individual who stated that she had used ILMS’ domain name to order products, falsely believing that she was ordering products from the Complainant.

In sum, the Respondents were well aware of Complainant’s use and ownership of the trademark ATHENA’S HOME NOVELTIES prior to registering the Domain Names. The Domain Names are confusingly similar to the Complainant’s mark and there has been actual confusion by consumers. Furthermore, the Respondents registered and are using the Domain Names in bad faith.

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

As a main rule, an UDRP complaint may relate to more than one domain name registration but it can only be against one registrant. However, according to the Complaint, the Respondents in this administrative proceeding are two businesses listed under the same address in Salem, New Hampshire, USA, and Autumn O'Bryan-Rourke seems to be the owner and/or president of both companies. Therefore, this Panel will accept the Complaint although it formally speaking is against two different registrants.

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is 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 respect of the domain name; and

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

The Complainant’s mark ATHENA’S HOME NOVELTIES is a federally registered trademark in the United States. The Complainant’s evidence shows that the mark has been used continuously since 1998, and that the mark has gained significant consumer recognition. The Panel thus finds that the mark is protected by federal and common law.

The Panel finds further that the domain names <athenashomenovelties.com> and <athenasnovelties.com> are confusingly similar to the Complainant’s mark. The domain name <athenashomenovelties.com> is identical to the Complainant’s mark except for the apostrophe, and the domain name <athenasnovelties.com> is identical to the Complainant’s mark except for the apostrophe and the word "home."

The Respondents are not commonly known by either of the Domain Names and are not licensees of the Complainant or otherwise authorized to use any of the Complainant’s marks. The Respondents have not used the Domain Names in connection with a bona fide offering of goods or services. Thus, a prima facie claim has been made by the Complainant.

The Respondents’ failure to submit evidence of their rights or legitimate interests in the Domain Names allows the inference that the evidence would not have been favorable to the Respondents.

Accordingly, the Panel finds that the Respondents have no legitimate interests or rights in the Domain Names.

The Respondents have not demonstrated a good faith use of the Domain Names. The Respondents registered the Domain Names after first offering to sell their products to the Complainant. Having been refused, they registered the Domain Names using the Complainant’s mark and caused the Domain Names to resolve to the Midnight Madness website, in effect diverting Internet users to the direct competitor of the Complainant. Such use has created actual confusion as to the source of the Domain Names and has led Complainant’s customers to falsely believe that the Respondents’ products were those of the Complainant. The Respondents are thus using the goodwill of the Complainant for their own commercial gain. Accordingly, the Panel finds that the Respondents have registered and used the Domain Names 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 <athenashomenovelties.com> and <athenasnovelties.com> be transferred to the Complainant.