The Complainant is MGM Grand Hotel, LLC of Las Vegas, Nevada, United States of America, represented by Brownstein Hyatt Farber Schreck, United States of America.
The Respondent is Fantasy Media Group, LLC of Seattle, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sexstudio54.com> is registered with Intercosmos Media Group, Inc. dba directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2008. On December 12, 2008, the Center transmitted by email to Intercosmos Media Group, Inc. dba directNIC.com a request for registrar verification in connection with the disputed domain name. On December 12, 2008, Intercosmos Media Group, Inc. dba directNIC.com transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 12, 2009.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 22, 2009. 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 Complainant is a United States of America company that has operated a night club in Las Vegas, Nevada, named “Studio 54”, since 1997. The Complainant has obtained valid service mark registrations from the United States Patent and Trademark Office (the “USPTO”) for the mark STUDIO 54 (e.g., Registration No. 1,870,863, December 27, 1994; Registration No. 2,238,271, April 13, 1999; and Registration No. 2,261,694, July 13, 1999).
The disputed domain name is registered by the Respondent, and the record of registration was created on May 12, 1999. The website found at the name provides Internet users with links to pornographic material and third party pornographic websites.
5. Parties' Contentions
A. Complainant
Since 1997, the Complainant has operated continuously a night club named Studio 54 in Las Vegas, Nevada, United States of America. The Complainant has expended substantial sums of money to advertise and promote that night club in print, through television and over the Internet, such that it has become internationally known, respected and famous.
The Complainant has registered the service mark STUDIO 54 several times with the USPTO. Moreover the Complainant has registered and used the domain name <studio54.com> to further the operation of its night club.
The disputed domain name, <sexstudio54.com>, is confusingly similar to the Complainant's registered service mark, STUDIO 54. The mere addition of the descriptive word “sex” and the gTLD “.com” do not distinguish the name from the mark. “Sex” is descriptive of the Respondent's website found at the disputed domain name, since the website offers links to pornographic photographs and third party pornographic websites.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent's use of the domain name for linkage to third party pornographic websites on a pay-per-click basis is clearly commercial, but does not constitute a legitimate interest. There is no evidence that the Respondent has ever been known by the disputed domain name, and the website established there makes no reference to the Complainant's night club or the night club Studio 54, which was once located in New York City.
The Complainant is the successor-in-interest to service mark rights in said New York night club.
The Respondent registered and is using the disputed domain name in bad faith. The Respondent had constructive, and probably actual, knowledge of the Complainant's rights as the disputed domain name was registered after the Complainant's USPTO service mark applications.
Through the use of a confusingly similar domain name, the Respondent is attempting to redirect Internet users who seek information about the Complainant's night club to the Respondent's pornographic website operations for its profit. Moreover, this pornographic linkage to a domain name that incorporates the Complainant's service mark tarnishes that mark.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraphs 4(a)(i)-(iii) of the Policy, the Complainant will succeed in these proceedings and obtain possession of the disputed domain name, <sexstudio54.com>, if the Complainant can show that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used by the Respondent in bad faith.
The Respondent has failed to submit a response and, as a result, the Panel will consider true all of the reasonable contentions put forward by the Complainant and draw all inferences that are reasonable and pertinent unless they are contradicted otherwise in the record or clearly contrary to the Panel's prior experience. See Hyatt Corporation v. Sinichi Akiyama, NAF Claim No. FA839408 (“In view of Respondent's failure to submit a response (…) The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.”) and Randstad General Partner (U.S.), LLC v. Domains For Sale For You,
WIPO Case No. D2000-0051.
A. Identical or Confusingly Similar
The Complainant's submission to the Panel of clear evidence that the Complainant possesses valid USPTO registrations for the service mark, STUDIO 54, demonstrates to the Panel's satisfaction that the Complainant has rights in that mark for the purposes of paragraph 4(a)(i) of the Policy. See VICORP Restaurants, Inc. v. Anastasios Triantafillos, NAF Claim No. 485933 and Vivendi Universal Games and Davidson & Associates, Inc. v. XBNetVentures Inc., NAF Claim No. 198803 (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed domain name, <sexstudio54.com>, fully incorporates Complainant's mark, STUDIO 54. However, the name and the mark are not identical. Instead, the name adds the word “sex” and the gTLD “.com”, and excludes the space between the word “studio” and the number “54”. These distinctions are minor and do not negate the dominance of the Complainant's mark in the disputed domain name. “Sex” is a common descriptive English language word, the addition of which would not avoid a finding of confusing similarity under the Policy. As a result, the Panel believes that Internet user confusion between the disputed domain name and the Complainant's service mark is inevitable. Thus, the Panel determines that the name is confusingly similar to that mark. See America Online, Inc. v. Chris Hoffman,
WIPO Case No. D2001-1184 (where, among others, the disputed domain names <timeforaol.com> and <itstimeforaol.com>, were found by the panel to be confusingly similar to the service mark, AOL) and Mattel, Inc. v. Yesbarbie, NAF Claim No. 114754 (finding <yesbarbie.com> to be confusingly similar to the mark BARBIE).
As reasoned above, the Panel finds that the Complainant has succeeded in establishing that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant's has rights.
B. Rights or Legitimate Interests
The Policy places the burden on the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, but the overwhelming majority of prior UDRP panels have held that a complainant need only present a prima facie case in order to effectively shift the burden to the Respondent to establish that it possesses such rights or interests. See, for example, Mattel, Inc., supra “Complainant's establishment of a prima facie case shifts the burden to Respondent to show rights or legitimate interests” and Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
In this case, the Complainant has sustained a prima facie case on this issue by demonstrating its rights in a corresponding service mark and asserting reasonably that the Respondent fails to meet any of the three criteria cited in Policy paragraph 4(c) to support its rights or legitimate interests in the domain name in question.
The Respondent's failure to respond to the Complaint leaves the Panel to consider from elsewhere in the record whether the Respondent does indeed fail to meet the paragraph 4(c) criteria. Clearly, the Respondent's name does not appear to correspond in any way to the disputed domain name, so the Panel concludes that the Respondent is not commonly known by the latter name, which negates any chance that paragraph 4(c)(ii) applies in the Respondent's favor. Furthermore, as explained above, the Panel must give credence to the Complainant's reasonable claim that the Respondent receives “pay-per-click” revenue in connection with third party website links found at the web page attached to the disputed domain name. The Panel finds that the collection of this revenue is inconsistent with any possible contentions that the Respondent is engaged in “noncommercial or fair use” of that name per paragraph 4(c)(iii).
The remaining circumstance, found in paragraph 4(c)(i), requires a showing that “before any notice to [the Respondent] of the dispute, [its] use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the name in connection with a bona fide offering of goods or services”. The Respondent was indeed using the disputed domain name prior to notice of this dispute, i.e., to provide links to pornographic websites. However, the consensus of previous UDRP rulings on this issue is that mere linkage to third party websites on a pay-per-click basis does not constitute a “bona fide offering of goods or services”. This is particularly true if the content offered does not relate specifically to the name. See Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan,
WIPO Case No. D2004-0430 (“the sole purpose behind the Respondent's registration and operation of the disputed domain name is to make money from redirected Internet traffic. There is no content that is specific to the disputed domain name (…) The use of the domain in such a way does not constitute a bona fide offering of goods or services giving rise to any right or legitimate interest”.) and Mattel, Inc. v. Domain Park Limited, NAF Claim No. FA1164348.
Per the above, the Panel finds that the Complainant has met its burden to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant seeks to have the Panel apply the circumstance listed in Policy paragraph 4(b)(iv) and find that the Respondent registered and is using the disputed domain name in bad faith, to wit: by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent's web site or location or of a product or service on its web site or location.
The Panel can determine easily that the Respondent is using the disputed domain name to generate commercial gain and that much of that gain will result from confusion with the Complainant's service mark. However, the Panel cannot discern as easily the Respondent's malign intent, which would be dependent upon the Respondent's prior knowledge of the Complainant's rights.
The Complainant is the holder of a trademark registration for STUDIO 54, which is dated about five years before the Respondent's registration of the disputed domain name.
The Panel believes that the Respondent was aware of the earlier New York night club and meant to capitalize on the value created in its name (i.e., the decision to attach “studio54” to the word “sex” instead of, for instance, “studio53”, was not random). Thus the Panel finds that the Respondent clearly knew of the Complainant at the time it registered the disputed domain name.
Regardless of whether the Complainant's night club in Las Vegas was world famous or even famous within the United States at the time of the registration of the disputed domain name, the name “Studio 54” was made famous during the 1970's and 1980's on a worldwide basis in association with a night club in New York City. Certainly, the Respondent, a United States entity, would be expected to have known of such a famous club. The Complainant claims that rights in that name did not lapse with that club's closure and that, to the contrary, the Complainant is the successor-in-interest to those rights. Without effective rebuttal in the record, the Panel has no reason to doubt those claims.
The Complainant's trademarks pre-date the registration date of the disputed domain name. Even if the Panel did not find that the Respondent actually knew of the Complainant and it's predecessor-in-interest's mark at the time of registration of the disputed domain name, in the context of two U.S. parties it should have known, and the registration of the Complainant's mark would at least have put the Respondent on notice to investigate thoroughly existing rights connected with the name “Studio 54”. Thus, the Panel finds that the Respondent at least had constructive notice of the Complainant's rights. See Kate Spade, LLC v. Darmstadter Designs,
WIPO Case No. D2001-1384 (“Since both parties are from the United States and since the trademark application and registration were made with the USPTO, it is fair to apply United States principles of constructive notice to this situation.”) and Kevin Garnett v. Trap Block Technologies, NAF Claim No. 128073.
Again, as the Respondent chose not to respond in these proceedings, the Panel gathers further support for its conclusion concerning constructive knowledge from the reasonable contentions submitted by the Complainant. Given the Panel's conclusion in this regard, the Panel finds that the Respondent did possess the requisite intent to place its actions squarely within the circumstance delineated in paragraph 4(b)(iv) of the Policy. See The Sportsman's Guide, Inc. v. Modern Limited, Cayman Islands,
WIPO Case No. D2003-0305 (“The constructive knowledge of the Complainant's trademark and of the services offered under this trademark, from the side of the (…) Respondent, associated with the use of the disputed domain name for commercial gain, represent, in the opinion of the Panel, evidence for the registration and use in bad faith of the disputed domain name.”).
Accordingly, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith.
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, <sexstudio54.com>, be transferred to the Complainant.
Dennis A. Foster Sole Panelist
Dated: February 5, 2009
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