Nora Baumberger v. Sand WebNames-For Sale Damir Kruzicevic

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nora Baumberger v. SAND WebNames – For Sale

Case No. D2001-0502

1. The Parties

The Complainant is Nora Baumberger, an individual domiciled at Am Schornacker

66, 46485 Wesel, Germany.

The Respondent is SAND WebNames – For Sale, with an address at Vukovarska 43,

Split 21000, and HR, Croatia.

2. The Domain Name and Registrar

The domain name at issue is <dollybuster.com> (the "domain name").

The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia

20170, USA ("NSI").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

"Center") by hardcopy on April 5, 2001, and by email on April

9, 2001. The Center acknowledged that it had received the Complaint on April

9, 2001.

On April 10, 2001, the Center sent to the Registrar a request for verification

of registration data. On April 12, 2001, the Registrar confirmed: 1) that <dollybuster.com>

was registered with the Registrar; 2) that the current registrant of <dollybuster.com>

is SAND WebNames – For Sale, Vukovarska 43, Split 21000, HR; 3) that the Administrative

and Billing Contact are: Damir Kruzicevic, Vukovarska 43, Split 21000, HR, email:

damir@PINKCLUB.COM, telephone number: +385 21 524 348; and that the Technical

Contact is: Superb Internet Corporation, 1400 – 700 West Pender Street, Vancouver

BC V6C 1G8, Canada, email: Hostmaster@SUBERB.NET, telephone number: [+1] 604

638 2525, fax number: [+1] 604 608 2953; 4) that the Uniform Domain Name Dispute

Resolution Policy applies to the domain name; and 5) that the domain name is

currently active.

On April 20, 2001, the Center made a printout of Respondent’s website www.dollybuster.com,www.dollybuster.com,

and of the website www.karasxxx.com, which is linked to Respondent’s website.

The Center forwarded the Complaint to the Respondent with copies to ICANN and

to the Registrar by email on April 20, 2001, by fax on April 22, 2001, and by

post/courier on April 23, 2001. Respondent’s email address at postmaster@dollybuster.com

had permanent fatal errors. The Center formally notified the Respondent that

the Complaint satisfied the formal requirements of the ICANN Uniform Domain

Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform

Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules"); that payment of the required sum had been made by the Complainant;

and that an administrative proceeding had been commenced against the Respondent.

A deadline of May 12, 2001, was fixed for the Response.

No Response was submitted. Accordingly, the Center issued a Notification of

Respondent Default to both parties on May 14, 2001.

On May 25, 2001, the Center notified the Parties that an Administrative Panel

composed of a single member, Dr. Kamen Troller, had been appointed and that

the Panelist had duly submitted a Statement of Acceptance and Declaration of

Impartiality and Independence to the Center. Absent exceptional circumstances,

the Panelist was required to forward its decision to the Center in accordance

with Paragraph 15 of the Rules by June 7, 2001.

The Panelist examined all notifications of the Center, and the Complaint, and

finds that they comply with the formal requirements of the Rules and Supplemental

Rules, and that the Administrative Panel was properly constituted.

4. Factual Background

A. The Complainant

The Complainant is a pornographic pornography star known under the pseudonym

"Dolly Buster".

The Complainant owns German trademark registration No. 398 23 997 "Dolly

Buster" and Community trademark registration No. 000809731 "Dolly

Buster" (the "Trademark") for the following goods and services:

– CL03: perfumery, cosmetics;

– CL09: apparatus for recording, transmission or reproduction of sound or images,

magnetic data carries, recording discs, CDs, mini-discs, CD-ROMs, floppy discs,

video cassettes, films, automatic vending machines;

– CL16: paper, cardboard and goods made from these materials, printed matter,

bookbinding material, photographs, artists materials, playing cards, printers’

type;

– CL24: textiles and textile goods, bed and table covers;

– CL25: clothing, headgear;

– CL27: carpets, rugs, mats and matting, linoleum and other materials for covering

existing floors, wall hangings (non-textile);

– CL28: games and playthings, gymnastic and sporting articles;

– CL32: beers, mineral and aerated waters and other non-alcoholic drinks, fruit

drinks and fruit juices, syrups and other preparations for making beverages;

– CL35: advertising, business management;

– CL38: telecommunications;

– CL41: entertainment, in particular by means of telephone tape recording services,

production of television, radio, telephone, audiotext and Internet broadcasts

and performances; and

– CL42: computer programming.

The Complainant provided the Panel with copies of the registration certificates

and a translation of the German certificate (Complainant’s Exhibit 3).

The Complainant operates her principal websites at "www.dolly-buster.com",

"www.dolly-buster.de" and "www.dollybuster.de", where she

makes available pornographic photographs and video clips, and offers merchandise,

such as ashtrays, calendars, posters and books.

The Complainant stated that she intends to use the Trademarks, in the future,

for the goods and services for which they are registered. The Complainant submitted

that the Trademarks which were registered on December 14, 1998 and February

24, 2000, are still in the 5-year grace period of use which will end in 2003

and 2005.

B. The Respondent

The Respondent registered the domain name <dollybuster.com> on January

12, 2000. The domain name resolves to a website that contains five (5) times

the phrase "CONTINUE….". When clicking one of the phrases, Internet

users are automatically linked to a succession of pornographic websites, amongst

which are: www.karasxxx.com and www.hotbabes.com.

C. Facts Underlying the Dispute

The Complainant asserts that she requested the Respondent several times by

email, with copies to the Technical Contact Hostmaster@SUPERB.NET, to cease

using the domain name. According to the Complainant, neither the Respondent

nor the Technical Contact reacted to these requests.

On February 8, 2001, the Complainant’s lawyer sent a warning letter to the

Respondent and requesting the Respondent to sign the following declaration:

"1. SAND and Kruzicevic will with immediate effect refrain from further

using the name "Dolly Buster", especially the website "dollybuster.com".

2. SAND and Kruzicevic accept a contractual penalty of DM 50.000 for every

individual case of infringement against the above declaration.

3. SAND and Kruzicevic acknowledge their liability for damages caused to

Dolly Buster by using the website "dollybuster.com".

4. SAND and Kruzicevic undertake to provide Dolly Buster with all necessary

information about the use of the name "Dolly Buster" especially the

number of users which have had access to the website "dollybuster.com"."(Complainant’s

Exhibit 4).

The Complainant states that the Respondent has connected the disputed domain

name to the Complainant’s domain name <dolly-buster.com>dolly-buster.com

in so far as the content of the Complainant’s website www.dolly-buster.com should

automatically be opened when a user tries to open the Respondent’s website www.dollybuster.com.

However, according to the Complainant, the Respondent does not constantly keep

the connection to the Complainant’s website, and still sometimes uses the domain

name for his own commercial gains. The Panel went to the Respondent’s website

at www.dollybuster.com and was – after clicking on one of the phrases "CONTINUE…"

- automatically linked to the website www.karasxxx.com and to several other

websites, but not to any website owned by the Complainant.

5. Parties’ Contentions

A. The Complainant

The Complainant contends that each of the three elements specified in paragraph

4(a) of the Policy are applicable to the disputed domain name. More precisely,

the Complainant submits that:

(1) the domain name <dollybuster.com> is confusingly similar to the Complainant’s

Trademark, "because the wording is identical except that the two words

are not separated with a blank space which is not possible in the URL-Language";

(2) the Respondent has no rights or legitimate interests in the domain name,

"because neither has he used or prepared to use the domain name in connection

with a bona fide offering of goods or services nor has he been commonly known

by the name "Dolly Buster" nor is he making a legitimate noncommercial

or fair use of the domain name without intend for commercial gain"; and

(3) the domain name was registered and is being used in bad faith for the following

reasons:

- The Complainant is commonly known by her pseudonym and trademark "Dolly

Buster" in the field of goods and services the trademark is registered

for, especially in the field of erotic video clips, photos, television and internet

performances. Either the Complainant or one of her companies are owner of the

domains "dolly-buster.de", "dollybuster.de" and "dolly-buster.com";

- The Respondent managed to register a domain which was not yet owned by the

Complainant but which also contains her trademark. As it can be seen from the

Respondent’s name "SAND WebNames – For Sale" he obviously acquires

domain names to sell or rent to the owners of corresponding trademarks or to

competitors. This also follows from the fact that the Respondent does not have

any relation to the Complainant or to any other person or enterprise by this

name;

- In addition, the Respondent not only prevents the Complainant from reflecting

her trademark in a corresponding domain name but also uses the domain name to

disrupt the business of the Complainant. The Respondent uses the domain "dollybuster.com"

to place automatic links to the pornographic website "karasxxx.com".<karasxxx.com>.

The owner of this website offers not only pornographic material but also goods

similar to those the Complainant offers on her websites, like erotic video clips

and photos. In addition, by opening the website at issue several different websites

with similar contents are automatically opened. Internet users who do not know

exactly the spelling of the Complainant’s websites are caught by competitive

offers. Due to the similarity with regard to the kind of several offers [sic]

the Respondent creates a likelihood of confusion with the Complainant’s mark

as to the source, sponsorship and affiliation of the Respondent’s website;

- The Respondent obviously tries to exploit the famous and very well conceived

trademark and business of the Complainant and to attract Internet users who

only know the name and trademark "Dolly Buster" but who are not exactly

aware how to find the Complainant’s websites;

- Moreover, the probability that Internet users associate the Respondent’s

website with the Complainant brings the Complainant into disrepute because the

Respondent not only offers erotic goods like the Complainant’s, but also improper

pornographic goods.

The Complainant requests the Administrative Panel to issue a decision that

the domain name be transferred to the Complainant.

B. The Respondent

No response was submitted.

6. Discussion and Findings

Referring to paragraph 14 of the Rules, in the absence of a response to the

Complainant’s allegations by the Respondent, the Panel may consider those claims

in light of the unchallenged evidence submitted by the Complainant. The Panel

cannot decide in the Complainant’s favor solely based upon the Respondent’s

default, but is entitled to draw, and in this case does draw, such inferences

as it deems appropriate and just under the circumstances from the Respondent’s

failure to respond.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove that each

of the following three elements are present:

(i) the Respondent’s 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

domain name; and

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

(a) Identical or confusingly similar

The only differences between the domain name and the Trademark are that: (1)

the domain name eliminates the space between the two terms; and (2) the domain

name has ".com" at the end.

The differences between Complainant’s Trademark and Respondent’s domain name

are minor and do nothing to distinguish the mark from the domain name. The addition

of the designation ".com" is non-distinctive because it is a gTLD required for

registration of a domain name. (Footnote

1) Similarly, the elimination of the space between terms is without any

significance since this change is dictated by technological factors and common

practice amongst domain name registrants and users. (Footnote

2)

The Panel concludes that the Complainant has satisfied the requirements of

paragraph 4(a)(i) of the Policy.

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent

to demonstrate "rights to and a legitimate interest in the domain name".

The Respondent is only required to demonstrate any one of the following

circumstances (in particular and without limitation) to prove its rights to

or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain

name, without intent for commercial gain to misleadingly divert consumers or

to tarnish the trademark or service mark at issue.

The Complainant alleges that the Respondent has no rights in the domain name

because none of the above circumstances is fulfilled.

The Respondent has not offered any evidence demonstrating the applicability

of any of the criteria in paragraph 4(c) of the Policy.

The Panel finds that the requirements of paragraph 4(c) of the Policy have

not been satisfied. The Respondent’s only proven use of the domain name is to

provide a website with links ("CONTINUE…") to other companies’ websites.

The Respondent has not replied to the Complainant’s request to provide information

about how it is using the website and how many users have had access to the

website. Internet users clicking on one of the "CONTINUE…" links on

Respondent’s website are automatically taken to a chain of pornographic and

advertisement sites. The linking process cannot be stopped, except by shutting

down the Internet Explorer program. This makes the Panel believe that the Respondent

gains revenue from the linked site owners. Such use does not establish rights

or legitimate interests in the domain name in the sense of paragraph 4(c) of

the Policy, for the following reasons:

With respect to element 4(c)(i), the Panel finds that the Respondent is not

using the domain name for a "bona fide offering of goods and services".

The Respondent is not offering any goods or services for sale. It is

only providing links to other companies that offer to sell goods or services.

With respect to element 4(c)(ii), the Panel notes that the Respondent has offered

no evidence that it has been commonly known by the domain name <

dollybuster.com> .

With respect to 4(b)(iii), the Panel finds that the Respondent is not making

a legitimate non-commercial or fair use of the domain name, and that it is misleadingly

diverting consumers for its own commercial gain. Respondent’s use of the name

of a well-known pornographic star to attract confused users to its site, and

the Panel’s belief that Respondent is profiting from Internet users who purchase

goods or services from sites linked to its own website, is sufficient to prove

that the requirements of paragraph 4(b)(iii) have not been met.

The Panel finds that the absence of any legitimate use and Respondent’s failure

to justify the use of "Dolly Buster" in its domain name, constitute

at least prima facie evidence of a lack of rights to or legitimate interest

in the domain name. (Footnote 3)

Accordingly, the Panel finds that the Complainant has satisfied the burden

of proof with respect to paragraph 4(a)(ii) of the Policy.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in

bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances

which shall be evidence that the registration and use of a domain name is in

bad faith:

(i) circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your website 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 your website or location

or of a product or service on your website or location.

The Complainant seems to rely on all the elements of paragraph 4(b) of the

Policy (see Complainant’s contentions, summarisedsummarized on page 4-5 of this

decision).

By not submitting a Response, the Respondent has failed to address the Complainant’s

allegations.

The Panel does not agree with the Complainant’s contention that the Respondent

has acquired the domain name for the purpose of selling or renting it to the

Complainant or to competitors. The Respondent has identified itself as "SAND

WebNames – For Sale". The inclusion of the words "FOR SALE" in

the registration record may lead one to suspect that the Respondent is willing

to sell or otherwise transfer the domain name. (Footnote

4) However, in the case at hand, there is no indication whatsoever that

the Respondent has acquired the domain name primarily for the purpose of selling,

renting, or otherwise transferring it to the Complainant or one of her competitors,

for valuable consideration in excess of the documented out-of-pocket costs directly

related to the domain name. The Panel therefore finds that the criteria of paragraph

4(b)(i) of the Policy for bad faith are not fulfilled.

The Panel does also not agree with the Complainant’s contention that the Respondent

"prevent[s] the Complainant from reflecting her trademark in a corresponding

domain name". The Complainant states that either she or one of her companies

owns the domain names <dolly-buster.de>, <dollybuster.de> and <dolly-buster.com>

(Complaint, p.8). According to NSI’s Whois Information, the registrant of <dolly-buster.de>

and <dolly-buster.com> is Dolly Buster DBM Videovertrieb GmbH, and the

registrant of <dollybuster.de> is COM Online GmbH Multimedia Service &

Co.KG. In addition, the Panel has found that COM Online GmbH Multimedia Service

& Co.KG has also registered the domain names <dollybuster.net> and

<dolly-buster.net>. Taken into account that the Complainant (or one of

her companies) owns five (5) domain names incorporating her Trademark, Respondent’s

registration of <dollybuster.com> cannot be considered to prevent the

Complainant from reflecting her mark in a corresponding domain name. Also, the

Complainant has not proved that Respondent engaged in a "pattern of conduct".

Therefore, the bad faith criteria of paragraph 4(b)(ii) of the Policy are not

fulfilled.

However, in the case at hand, the following circumstances lead the Panel to

conclude that the Respondent is acting in bad faith:

a) The Respondent does not seem to have any relation with the Complainant or

with any other person or enterprise bearing the name "Dolly Buster".

b) Respondent uses the domain name to provide a website with links that, when

visited, results in a non-stop linking process to other websites, like www.karasxxx.com

and www.hotbabes.com. These websites offer pornographic material and goods similar

to those the Complainant offers on her websites. According to the Complainant,

these websites also offer pornographic goods which in Complainant’s opinion

are improper. Since Respondent has not contradicted this finding, the Panel

is of the opinion that the Complainant must not tolerate to be brought into

connection withshould not be forced to be associated with the offering of goods

which she considers herself to be improper. Such use may tarnish the Dolly Buster

mark, and thus disrupt Complainant's business. Therefore, the conditions of

paragraph 4(b)(iii) are fulfilled.

c) The Complainant’s Trademark is well known, as evidenced by its substantial

use in Germany and in other countries. The Respondent must have been aware of

these trademark rights when it registered and first used the domain name. Subsequently,

Complainant gave the Respondent actual notice of Complainant’s ownership of,

and exclusive rights to the Trademark. The Respondent has nonetheless continued

to use the mark in the domain name and to use the domain name to access Respondent’s

website.

d) There is no doubt that the Respondent is seeking to capitalize on the well-known

Dolly Buster name. By so doing, the Respondent has acted in bad faith within

the meaning of paragraph 4(b)(iv) of the Policy. The Respondent is seeking to

profit from the likelihood of confusion created by the domain name <dollybuster.com>.

The Respondent is intentionally attracting confused users to its site for commercial

gain. This is a clear example of bad faith within the meaning of paragraph 4(b)(iv).

e) The Respondent has failed to answer the Complainant’s warning letters and

the Complaint, and has failed to demonstrate any good faith use. (Footnote

5)

f) The Panel cannot conceive any plausible actual or contemplated active use

of the domain name by the Respondent that would not violate or infringebe a

passing of, constitute an infringement of the Complainant’s trademark rights,

or would otherwise be legitimate.

Based on the above, the Panel finds that the Complainant has satisfied the

burden of proof with respect to bad faith registration and use of the domain

name.

7. Decision

The Panel decides that:

1) the domain name <dollybuster.com> is identical to the trademark "Dolly

Buster";

2) the Respondent has no rights or legitimate interest in respect of the domain

name; and

3) the domain name has been registered and is being used in bad faith by the

Respondent.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires

that the Registrar, NSI, transfer the name <dollybuster.com> to the Complainant.

Kamen Troller

Sole Panelist

Dated: June 7, 2001

Footnotes:

1. See: Gateway, Inc. v. James Cadieux (D2000-0198);

The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395) and

Koninklijke Philips Electronics NV v. Ramazan Goktas (D2000-1638).

(back to text)

2. See: Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club

(D2000-1532); Real Madrid Club de Futbol

v. Lander W.C.S. (D2000-1805) and

Margaret Drabble v. Old Barn Studios, Ltd. (D2001-0209).

(back to text)

3. See: Digital City, Inc. v. Smalldomain For Sale (D2000-1283),

at p.6. (back to text)

4. See: Euromarket Designs, Inc. d/b/a Crate & Barrel v. Domain

For Sale VMI (D2000-1195); Bayerische

Motoren Werke AG v. JMXTRADE.com Selling Premium Domain (D2000-1693).

(back to text)

5. See: Pharmacia & Upjohn AB v. Dario H. Romero (D2000-1273),

at p.6; Telstra Corporation, Ltd. v. Nuclear Marshmallows (D2000-0003),

at p.8. (back to text)

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