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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Playboy TV UK Limited v. CDMAX Enterprises
Case No. D2001-1457
1. The Parties
The Complainant in this administrative proceeding is Playboy TV UK Limited ("Playboy"), a limited company incorporated under the laws of England and Wales. Its principle place of business in the UK is Aquis House, Station Road, Hayes, Middlesex, UB3 4DX.
The Respondent in this administrative proceeding is CDMAX Enterprises, 19204 Coslin Avenue, Carson, CA 90746. It would appear that CDMAX is a US Corporation trading from Carson, USA.
2. The Domain Name and Registrar
The disputed domain name is <adultchannel.com>. The Registrar of the domain name is Network Solutions, Inc.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of one member was appointed on February 15, 2002, by WIPO.
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on December 14, 2001, by email and on December 18, 2001, by hardcopy. An Amended Complaint was filed with WIPO on January 4, 2002, by email and on January 14, 2002, by hardcopy. On January 15, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On February 6, 2002, the Center issued a Notification of Respondent Default.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
The Panel was duly constituted by the WIPO Center. A Statement of Acceptance and Impartiality and Independence was submitted to the WIPO Center by the Panelist on February 14, 2002, and the Panelist was appointed on February 15, 2002.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The following information is derived from the Complainant’s material.
The Complainant is the owner and registered proprietor of a number of trade mark registrations for the trade mark "The Adult Channel" in the United Kingdom, Benelux, Denmark and Spain.
In the United Kingdom, the trade mark registrations cover the following:
a) Class 9 including "Sound and/or video recordings, compact discs, cassettes, cinematography films, smart cards, encoded cards and encoded tapes";
b) Class 16 including "printed publications, books, magazines, brochures, stationery";
c) Class 38 including " broadcasting services for television, provisional and operation of satellite and of cable network communications systems, rental of communications apparatus";
d) Class 41 including "entertainment and education services by means of television, film and video recordings, productions and distribution of films and of video recordings".
The Complainant also has two pending applications for the Adult Channel as a Community Trade Mark in Classes 6, 9, 16, 20, 21, 24, 25, 38 and 41 of the trade mark register. The applications cover the following:
a) Class 6 including "goods of common metal, key rings";
b) Class 9 including "apparatus for recording, transmission, receiving and reproducing sound and images; pre-recorded films, tapes and discs; electronic publications; cinematic apparatus and instruments; mouse mats; sunglasses; computer games; parts and fittings for all the aforesaid goods";
c) Class 16 including "printed matter; stationery; writing implements; calendars, diaries, personal organisers; posters; photographs; playing cards; goods of papers, card and cardboard, beer mats, coasters, napkins and serviettes, paper table clothes";
d) Class 20 including "furniture; mirrors; picture frames; goods of wood, cork, reed, wicker, cane, horn, bone ivory, whalebone, shell, amber, mother of pearl, meerschaum and of substitutes for these materials and of plastics, key rings of plastics";
e) Class 21 including "kitchen and household utensils and containers; combs and sponges; brushes, glassware, porcelain, china and earthenware goods, mugs, cups, plates and bowls, beer mats and coasters included in this class";
f) Class 24 including "textile and textile goods, bed-covers, table-covers, beer mats and coasters of cloth";
g) Class 25 including "clothing, footwear and headgear";
h) Class 38 including "broadcasting services";
i) Class 41 including "entertainment services, live performances; rental of films, video recordings and audio recordings; recording studio services; publication services; films and television production; production of video and audio recordings; organisation of competitions, exhibitions, conferences and workshops".
The Complainant also has a number of European trade mark registrations including the following: Benelux 16, 38 and 41; Denmark Class 16; France Class 16; Germany Class 16; and Italy Class 16.
The Adult Channel was launched on February 1, 1992, as a satellite delivered television channel service. It is the oldest of the adult entertainment film channels distributed from the United Kingdom on satellite and it has acquired a substantial reputation and following throughout the United Kingdom and Europe. As at October 2001, The Adult Channel had 90,000 monthly subscribers and approximately 20,000 viewers per month on a pay per night basis. Each month in the United Kingdom as well as nearly 100,000 monthly subscribers in the Benelux countries and 750,000 subscribers in the rest of Continental Europe.
The Adult Channel has a substantial reputation and following throughout the United Kingdom and Europe. In the United Kingdom, the Complainant has an annual marketing and advertising budget for the Adult Channel and Playboy of Ј1.4m. Of that Ј1.4m, approximately Ј30,000 per month is spent on advertising the Adult Channel in the Satellite and Cable television press. It also advertises the Adult Channel in all of the leading satellite and cable publications throughout the United Kingdom and Europe.
The Complainant has its own website, <theadultchannel.co.uk> and the address for the web site appears on the majority of its advertisement. It uses its website to publicize its program listings, synopsis and other promotional material. The Adult Channel website generates 25 million hits per month of which 39% are from the United States of America.
The Complainant also owns the domain names <adultchannel.co.uk>, <theadultchannel.net> and <adultchannel.net>.
The Respondent has no trading presence as the Adult Channel, no licence so to trade from the Complainant and no reason to use the subject domain name. The subject domain name is not in use.
The Complainant wrote to the Respondent on a number of occasions including August 9, 2001, September 17, 2001, and September 25, 2001, asserting that most members of the public will associate the subject domain with the trading name of the Complainant. The Complainant received no response from the Respondent.
The Complainant acknowledges there has been a delay in filing its Complaint. The delay was caused by a mistaken belief that its parent company Playboy TV International had issued proceedings. It in turn thought that the Complainant had done so.
The Respondent filed no material in this proceeding.
5. Parties’ Contentions
The Complainant relies on its trade mark registrations and use of the words "adult channel" and says that the subject domain name is "highly likely to engender in the minds of the public" confusion with the Complainant’s marks.
Noting that the Respondent has made no use of the subject domain name and is not associated with it, the Complainant contends that the Respondent does not have a legitimate interest in it.
As to bad faith, the Complainant says that the only obvious reason for the Respondent’s registration of the subject domain name is to sell it or to deprive the Complainant of the opportunity to do so.
The Respondent made no submission.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the words "adult channel". It differs from the Complainant’s marks only by the addition of ".com", which substantively is not relevant. Essentially, the subject domain name is identical to the Complainant’s marks.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent’s Rights or Legitimate Interests
A respondent is not obliged to participate in a domain name proceedings, but if it were to fail to do so, it would be subject to the inferences that flow naturally from the information presented by the Complainant.
In this case, the Respondent has had the subject domain name for some time and has made no use of it. There is no indication that it has taken any steps to make use of the subject domain name. It is not known by the words "adult channel".
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The conclusions that a respondent has no legitimate interest in a domain name, which is identical to the trade mark of a complainant, do not lead to a conclusion that the domain name has been registered and is being used in bad faith, but the facts that support those conclusions may be relevant to the issue.
The complete lack of any use, preparation for use or association by the Respondent with the words "adult channel", suggests that the Respondent had an ulterior motive for registering the subject domain name. Its failure to respond to the Complainant or to the allegations in this proceeding weighs against it.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on its findings of fact and conclusions, the Administrative Panel decides that the Complainant has established its case. It asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: February 25, 2002