E.D. Publications, Inc. v. Rick Stevens

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

E.D. Publications,

Inc. v. Decorum

Case No.

D2001-0589

1. The Parties

The Complainant is E.D.

Publications, Inc., a corporation organized in the State of Texas, United States

of America (USA), with place of business in Clearwater, Florida, USA.

The Respondent is Decorum,

with address in Hollywood, California, USA.

2. The Domain Name and

Registrar

The disputed domain name

is <exoticdancer.com>.

The registrar of the disputed

domain name is Network Solutions, Inc., with business address in Herndon, Virginia,

USA.

3. Procedural History

The essential procedural

history of the administrative proceeding is as follows:

(a) Complainant initiated

the proceeding by the filing of a complaint via courier mail received by the

WIPO Arbitration and Mediation Center ("WIPO") on April 24, 2001,

and received by WIPO via e-mail on April 26, 2001. Payment by Complainant of

the requisite filing fees accompanied the courier mailing. On April 26, 2001,

WIPO transmitted a Request for Registrar Verification to the registrar, Network

Solutions (with the Registrar’s Response received by WIPO on April 27, 2001).

(b) On May 1, 2001,

WIPO notified the Complainant of a formal filing deficiency in regard to the

identity of the Respondent as advised by the Registrar. On May 3, 2001, WIPO

received an amended Complaint via e-mail, and on May 7, 2001, WIPO received

an amended Complaint in hardcopy.

(c) On May 9, 2001,

WIPO transmitted notification of the complaint and commencement of the proceeding

to Respondent via e-mail.

(d) On May 29, 2001,

WIPO transmitted notification to Respondent of its default in responding to

the complaint via e-mail.

(e) On June 7, 2001,

WIPO invited the undersigned to serve as panelist in this administrative proceeding,

subject to receipt of an executed Statement of Acceptance and Declaration of

Impartiality and Independence ("Statement and Declaration"). On June

8, 2001, the undersigned transmitted by fax the executed Statement and

Declaration to WIPO.

(f) On June 11, 2001,

Complainant and Respondent were notified by WIPO of the appointment of the undersigned

sole panelist as the Administrative Panel (the "Panel") in this matter.

WIPO notified the Panel that, absent exceptional circumstances, it would be

required to forward its decision to WIPO by June 24, 2000. On June 11,

2001, the Panel received an electronic file in this matter by e-mail from WIPO.

The Panel subsequently received a hard copy of the file in this matter by courier

mail from WIPO.

The Panel has not received

any requests from Complainant or Respondent regarding further submissions, waivers

or extensions of deadlines, and the Panel has not found it necessary to request

any further information from the parties (taking note of Respondent’s default

in responding to the complaint). The proceedings have been conducted in English.

4. Factual Background

Complainant has registered

the word trademark "EXOTIC DANCER" on the Principal Register of the

United States Patent and Trademark Office (USPTO), reg. no. 1,678,514, dated

March 10, 1992, in International Class (IC) 16, covering "periodical directory

of men’s entertainment clubs", claiming first use in commerce of January 1, 1991,

(Complaint, Annex C). Claimant has filed an application for trademark registration

with the USPTO for the word service mark "EXOTIC DANCER" in IC’s 35,

38 and 41, ser. no. 761840032, dated December 20, 2000. Such application covers

various services in relation to the adult entertainment industry, including

conducting trade shows, broadcasting and computer services. (Id., Annex

D).

Complainant has registered

the domain name <exotic-dancer.com> and uses the domain name in connection

with maintaining an active commercial website providing information concerning

adult men’s entertainment clubs.

According to the registrar’s

verification response to WIPO, dated April 27, 2001, Respondent is the listed

registrant of the disputed domain name <exoticdancer.com>. The Administrative

Contact, at the same address, is "Stevens, Rick". According to a Network

Solutions’ WHOIS database printout furnished by Complainant, the record for

the disputed domain name was created on September 28, 1995, and was last updated

on September 20, 2000 (Complaint, Annex A).

There is no evidence on

the record of this proceeding of any use of the disputed domain name in connection

with the maintenance of an active Internet website.

Complainant has furnished

a copy of e-mail correspondence from Mr. Peter Zimble of InterPacket Group,

Inc. to David at dfox@foxman.com containing a confirmation of conversation pursuant

to which Mr. Zimble proposed to license the use of <exoticdancer.com>

to the party referred to as David for $25,000 per year for a three year term,

plus other commercial terms and conditions. Said e-mail is dated March 28, 1997.

The additional terms and conditions include an offer to sell the disputed domain

name for three times the gross revenue generated by the website identified by

the name over the prior twelve month period. In its complaint, Complainant represents

that the aforesaid e-mail was from a representative of Respondent to Complainant,

although supporting data concerning the identity of the parties to the subject

e-mail is not provided.

By certified letter, fax

and e-mail dated March 22, 2001, Complainant via counsel sent a cease and desist

and transfer demand to Respondent. As evidenced by a postal delivery receipt,

the certified letter was delivered to Respondent’s principal address listed

in its registration. There is no evidence of a reply from Respondent. Although

Complainant’s letter was successfully delivered to the contact address listed

for Respondent, there is evidence presented by Complainant that delivery to

the telefax number and the administrative contact address listed in Respondent’s

contact details was not successful.

5. Parties’ Contentions

A. Complainant

Complainant states that

it has registered the trademark "EXOTIC DANCER" at the USPTO and that

it uses such trademark in commerce in connection with print media and Internet

services providing information concerning men’s entertainment clubs (see

Factual Background supra and Complaint). Complainant asserts that it

also uses the mark in connection with organizing trade shows and industry events.

Complainant indicates that

is has applied for registration of its trademark in connection with the services

it provides outside its directory business.

Complainant asserts that

its mark is "inherently distinctive" and thus entitled to the "maximum

level of protection afforded to any trademark".

Complainant asserts that

the disputed domain name is essentially identical to a trademark in which it

has rights.

Complainant asserts that

Respondent has not used the disputed domain name in connection with establishing

or maintaining an active website. Complainant asserts that Respondent has demonstrated

no rights or legitimate interests in the disputed domain name, and that registration

alone does not establish such rights.

Complainant alleges that

Respondent registered and has used the disputed domain name in bad faith. Complainant

alleges that such bad faith is evidence by (1) registration of Complainant’s

inherently distinctive mark (2) the provision of inaccurate registration data

(3) passive holding of the disputed domain name and (4) Respondent’s offer to

sell the disputed domain name to Complainant.

Complainant requests that

the Panel direct the registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply

to Complainant’s contentions.

6. Discussion and Findings

The Uniform Domain Name

Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing

documents approved on October 24, 1999), is addressed to resolving

disputes concerning allegations of abusive domain name registration. The Panel

will confine itself to making determinations necessary to resolve this administrative

proceeding.

It is essential to dispute

resolution proceedings that fundamental due process requirements be met. Such

requirements include that a respondent have notice of proceedings that may substantially

affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute

Resolution Policy (the "Rules"), establish procedures intended to

assure that respondents are given adequate notice of proceedings commenced against

them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a),

Rules).

In this case, the Panel

is satisfied that WIPO took all steps reasonably necessary to notify the Respondent

of the filing of the complaint and initiation of these proceedings, and that

the failure of the Respondent to furnish a reply is not due to any omission

by WIPO.

Paragraph 4(a) of the Policy

sets forth three elements that must be established by a Complainant to merit

a finding that a Respondent has engaged in abusive domain name registration

and use, and to obtain relief. These elements are that:

(i) Respondent’s domain

name is identical or confusingly similar to a trademark or service mark in which

the complainant has rights; and

(ii) Respondent has

no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain

name has been registered and is being used in bad faith.

Each of the aforesaid three

elements must be proved by a complainant to warrant relief.

Because the Respondent

has defaulted in providing a response to the allegations of Complainant, the

Panel is directed to decide this administrative proceeding on the basis of the

complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn

by the Panel on the basis of Complainant’s undisputed representations (id.,

paragraph 15(a)).

Complainant is the holder

of a valid and subsisting word trademark registration for "EXOTIC DANCER"

in the United States and is using that mark in commerce (see Factual

Background, supra). Complainant’s registration of the "EXOTIC DANCER"

mark on the Principal Register at the USPTO establishes a presumption of its

validity in U.S. law (footnote 1).

Complainant’s trademark appears to be descriptive of its publication and services

businesses in that Complainant provides information and services concerning

dancers who perform in men’s entertainment clubs. The USPTO has determined that

the words "EXOTIC DANCER" have achieved the level of distinctiveness

or secondary meaning adequate to be accorded registration, and Respondent has

not disputed Complainant’s rights in the mark.

The Panel determines that

Complainant has rights in the trademark "EXOTIC DANCER". Based on

the March 10, 1992, date of the USPTO registration submitted in this proceeding,

and without prejudice to whether Complainant may hold earlier-arising rights

in the mark, the Panel determines that Complainant’s rights in the "EXOTIC

DANCER" mark arose prior to Respondent’s registration, on September 28,

1995, of the disputed domain name.

The disputed domain name

<exoticdancer.com> directly incorporates Complainant’s "EXOTIC DANCER"

mark, eliminates the space between terms and adds the gTLD ".com".

In the context of this proceeding, the differences between the disputed domain

name and mark are not material from a legal standpoint for assessing confusing

similarity (footnote 2). The Panel

determines that the disputed domain name is confusingly similar to Complainant’s

mark in the sense of paragraph 4(a)(i) of the Policy.

Complainant has met the

burden of proving that Respondent is the registrant of a domain name that is

identical or confusingly similar to a trademark in which the Complainant has

rights, and it has thus established the first of the three elements necessary

to a finding that Respondent has engaged in abusive domain name registration.

Respondent has demonstrated

no use of the disputed domain name other than in connection with an offer for

its license and sale. Respondent has asserted no fair use or other right in

the name and Complainant’s mark. Registration alone does not establish rights

or legitimate interests in a disputed domain name within the meaning of paragraph

4(a)(ii) of the Policy. The Panel determines that Respondent has failed to establish

rights or legitimate interests in the disputed domain name within the meaning

of paragraphs 4(a)(ii) and 4(c) of the Policy. Complainant has established the

second element necessary to prevail on its claim that Respondent has engaged

in abusive domain name registration.

The Policy indicates that

certain circumstances may, "in particular but without limitation,"

be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances

are that the domain name has been registered or acquired by a respondent "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 [respondent’s] documented out-of-pocket costs directly related to the domain

name" (id., paragraph 4(b)(i)).

Complainant has established

that it has rights in a mark that Respondent incorporated in the disputed domain

name. Complainant used its trademark in commerce and registered it substantially

before Respondent registered the disputed domain name. Subsequent to registering

the disputed domain name, Respondent offered to sell it to Complainant for a

substantial sum in excess of its out-of-pocket expenses in connection with the

name (footnote 3). Respondent has

demonstrated no other use of the name. On the basis of these facts, the Panel

determines that Respondent registered the disputed domain name primarily for

the purposes of selling it to Complainant for an amount substantially in excess

of its out-of-pocket costs associated with the name, and that this constitutes

bad faith within the meaning of paragraph 4(a)(iii) and 4(b) of the Policy.

Having made the aforesaid

determination, the Panel need not consider the additional grounds of bad faith

asserted by Complainant.

Complainant has established

the third and final element necessary for a finding that the Respondent has

engaged in abusive domain name registration and use.

The Panel will therefore

request the registrar to transfer the domain name <exoticdancer.com> to

the Complainant.

7. Decision

Based on its finding that

the Respondent, Decorum, has engaged in abusive registration and use of the

domain name <exoticdancer.com> within the meaning of paragraph 4(a)

of the Policy, the Panel orders that the domain name <exoticdancer.com>

be transferred to the Complainant, E.D. Publications, Inc.

Frederick

M. Abbott

Sole Panelist

Dated: June

24, 2001

Footnotes:

1. 15 USCS §

1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th

Cir. 1999). (back to text)

2. See Sporty's

Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing

Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir.

1999). (back to text)

3. The Panel notes that

Respondent failed to dispute Complainant’s allegation that Respondent in fact

made the offer referred to by Complainant. (back to text)