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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CCA Industries, Inc. v. Bobby R. Dailey
Case No. D2000-0148
This is the decision of the single member of the Administrative Panel, Clive Duncan Thorne, appointed in the above case under paragraph 6(f) of the Rules for Uniform Domain Name Dispute Resolution Policy "the Rules".
A. Procedural History
The Complainants Complaint was received by the WIPO Arbitration and Mediation Centre in electronic form on March 10, 2000. Notification of the commencement of the administrative proceeding was given to the Respondent on March 15, 2000. The Respondent failed to send a Response by the deadline of April 3, 2000. Notification of the Respondent’s default was sent to him on April 6, 2000, including notification that an administrative panel would be appointed to hear the complaint.
On April 13 the Respondent sent an email to the Complainant’s authorised representative and copied it to me. I shall refer subsequently to this communication which I have annexed to this decision.
B. The Facts
The Complainant is CCA Industries Inc a Delaware corporation whose address is at 200 Murray Hill Parkway, East Rutherford, New Jersey 07073, USA. It is represented by Mr Keith E Danish of Trademark & Patent Counselors of America PC of 915 Broadway, New York, NY10010. The Respondent is an individual, Mr. Bobby Dailey whose address is 1203 Pearce Crescent, Victoria, British Columbia, V8X 3S8, Canada.
The domain name in dispute is "www.bikinizone.com". The Registrar with whom the domain name is registered is Network Solutions Inc of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA.
The Complainant owns the registered trade mark BIKINI ZONE registered in the US trade mark office under registered number 2,121,231 dated 16 December 1977 for "topical analgesic creme" in class 5. First use of the mark is claimed since February 28, 1997. The Complainant has also registered the mark in Australia, Canada and South Africa. The Complainant has applied to register the trade mark BIKINI ZONE in the US Trade Mark Office for "clothing, foot ware and hardware in class 25 under application number 75/253,772 filed on March 7, 1997.
The Complainant registered the domain name "www.bikini-zone.com" on December 19, 1997 which it uses as the address for web site advertising its bikini zone products. This appears (from exhibit C) to be an ointment for the relief of irritation on bikini area skin. It is claimed that it provided "fast relief of itching, pain and bumps after shaving, waxing and depilatories".
The Complainant claims that the respondent registered the domain name www.bikinizone.com on May 17, 1998 which it should be noted is subsequent to:-
(a) The first use of the trade mark bikinizone by the complainant.
(b) The filing dates of all applications to register the trade mark BIKINI ZONE filed by the Complainant.
(c) The registration date of the Complainants domain name www.bikinizone.com.
The Complainant also avers that the Respondent has never used BIKINIZONE or BIKINI ZONE as a trade mark or other trade symbol or in a descriptive manner merely to describe the Respondents own goods or services and that the Respondent is not known by the designation BIKINIZONE or BIKINI ZONE.
In about June 1999, the Complainant discovered it could not register "www.bikinizone.com" as a domain name because of the existence of the Respondent’s domain name registration. This appeared to be linked to a pornographic web site "www.xxxhoneys.com". The Complainant apparently protested to the Respondent about the tarnishment of its trade mark by reason of its linkage to a pornographic web site. The Responded promised to cut the link but also proposed that the Complainant offer the Respondent money for his domain name.
In September 1999, the Complainant discovered that the Respondent’s domain name was still linked to a pornographic web site which could be accessed when "bikinizone.com" was entered without the prefix "www". The Complainant apparently brought this to the attention of the Respondent. The Respondent’s response was to say "if your client wants the name then your client needs to make an offer for it". As a result of this on or about September 30, 1999, the Complainant invoked the domain name dispute policy of Network Solutions Inc and had the Respondents domain name placed "on hold". However the domain name was released from "on hold" status on or about February 4, 2000, and the current domain name dispute policy subsequently implemented.
The Complainant maintains that the domain name "www.bikinizone.com" is operated by Entertek Online Inc of Tampa, Florida. Its web site advertises that it sells revenue programmes, advertising programmes and content packages to webmasters. The subject matter of these programmes and packages is pornography and the "flagship site" is named "AMERICANSMUT.COM" (sic). The domain name "www.bikinizone.com" currently links to a page bearing the words "Online Bikini Contest Coming Soon" with a further link to "hitbox.com" and to "world1000.com" one feature of which is "1 – 2 – 3 – Date" a "hot sex dating service". The Respondent is also the owner of many domain names which are used or are likely to be used to identify pornography websites including "www.trashysluts.com", "www.pornsexlive.com", "www.pussymine.com", "www.virginhardcore.com", "www. xxxhoneys.com" and "www.pervxxx.com". A full list of all of the .com domain names owned by the Respondent, obtained from a search dated March 6, 2000, was exhibited to the Complainants complaint (exhibit D).
No response having been filed by the Respondent, there is no contrary evidence submitted by the Respondent save for the email of April 13 which I have referred to above which in summary states :-
(i) The only reason the domain name in dispute was not deleted or transferred was because the Complainant failed to offer compensation for the Respondent’s registration fee.
(ii) The Respondent fails to understand why a surfer would type in "bikinizone.com" as opposed to www.bikinizone.com.
(iii) The Respondent finds it hard to believe that the Complainant’s trade mark can be tarnished by a site that receives no traffic.
(iv) The Respondent also advertises on a site that sells sex toys and refers to "www.shopinprivate.com/buyinprivate/bikzongelsto.html"
(v) The Respondent accepts that the company that hosts the BIKINI ZONE website "www.bikini-zone.com" also provides hosting for "adult sites".
The Respondent concludes "as I have told Mr Danish before, you can take the domain out of my name, I have already tried to delete it. What I have said all along is I will not just "transfer" that domain name over. However it goes I will be glad when it has gone. This whole ordeal would not have transpired had I been approached and talked to like a human being (sic) rather than the way it was handled".
It should be noted that in an earlier email dated April 12, 2000, the Complainant indicated that it wished to supplement the allegations in the Complaint by noting that as of 11 April the Respondent was continuing to use his domain name which was connected to a web site advertising "sextoys" and in particular inviting signing up with a pornography web site named "American Smut".
C. The Complainants Submissions
The Complainant submits that the dispute falls within paragraph 4(a) of the Rules because:
1. The domain name is identical or confusingly similar to a trade mark in which the complainant has rights; and
2. The Respondent has no rights or legitimate interest in respect of the domain name; and
3. The domain name was registered as being used in bad faith.
1. The domain name is identical or confusingly similar to a trade mark in which the complainant has rights
I accept for the purposes of this decision that the Complainant has rights in the trade mark "BIKINI ZONE" in the United States, Australia, Canada and South Africa. I also accept that the Respondents domain name www.bikinizone.com is confusingly similar to the Complainants trade marks.
2. The Respondent has no rights or legitimate interest in respect of the domain name
No evidence has been filed by the Respondent alleging that he has any rights or legitimate interest in respect of the domain name "www.bikinizone.com". I therefore accept the Complainants submission to this effect and in particular that under Section 22 of the US Trade Mark Act the Respondent had constructive notice of the complainant’s trade mark BIKINI ZONE as of the Respondent’s registration of the domain name on May 17, 1998. I accept the Complainant’s submission in this respect.
3. The Respondents domain name has been registered and is being used in bad faith
Under the Rules, for the purpose of considering paragraph 4(a)(iii), circumstances are set out in paragraph 4(b) which are, without limitation, and if found by the Panel to be present, evidence of the registration and use of a domain name in bad faith. It is therefore open to me to rely on paragraph 4(b)(i) or (ii) or (ii) or (iv) or any other circumstances which I find to be evidence of registration and use of a domain name in bad faith.
Paragraph 4(b)(i) provides that it shall be evidence of use of the domain name registration use in bad faith when there are circumstances indicating that the Respondent has registered or acquired a domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of documented out of pocket costs directly relating to the domain name. In paragraph 20 of its complaint the Complainant refers to an exchange between the Respondent and the Complainant’s attorney in which the Respondent is alleged to have stated "if your client wants the name then your client needs to make an offer for it". In the absence of evidence to the contrary from the Respondent I accept this as evidence of bad faith.
Paragraph 4(b)(iv) provides evidence of bad faith in circumstances in which the Respondent by using the domain name has intentionally attempted to attract, for commercial gain, internet users to his web site or other on line location by creating a likelihood of confusion with the Complainant’s mark so as to the source sponsorship affiliation or endorsement of the Respondent’s web site or location of a product or service on the Respondent’s web site or location.
I am in no doubt that there is a likelihood of confusion between the Complainant’s mark and domain name registration and that of the Respondent. The issue is whether the Respondent has used the domain name in an intentional attempt to attract internet users to his web site for commercial gain. In the absence of a Response from the Respondent I am prepared to accept paragraph 25 of the Complainant’s case to the effect that the Respondent’s recent actions in linking the domain name "www.bikinizone.com" to pornography web sites and registering many names intended to identify pornography web sites make it likely that he will use the domain name "www.bikinizone.com" to identify a pornography web site which will attract confused users of the Complainants web site.
Finally the Complainant has placed substantial emphasis on the damage that it will suffer as a result of the linkage of its own trade mark BIKINI ZONE and its domain name registration to a pornographic web site and indeed continues to do so despite having been requested otherwise by the Complainant. I am satisfied that this association with a pornographic web site can itself constitute a bad faith.
It follows that the Complainant succeeds in its complaint and that the contested domain name should be transferred to the Complainant.
For all of the foregoing reasons the Panel decides that the domain name in dispute and registered by the Respondent "www.bikinizone.com" is confusingly similar to the trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interest in respect of the domain name and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4 i of the Rules the Panel requires that the registration of the domain name "www.bikinizone.com" be transferred to the Complainant.
Clive D. Thorne
Dated: April 26, 2000