Domain name – Domain name dispute resolution policy – U.S. trademark – Identical – Confusingly Similar - Bad faith registration – Bad faith use – Knowledge of trademark – Divert customers – Dilute trademarks.

Complainant owns many trademarks that are made up of the terms “Penthouse”. Respondent registered the domain name, penthouse.net. Complainant alleged that Respondent had no legitimate interest or rights in the domain name and is using it in bad faith.

HELD, Name Transferred to Complainant.

It is clear that the domain name PENTHOUSE.NET is nearly identical or confusingly similar to the terms of numerous trademarks and domain names registered and used by Complainant, PENTHOUSE. It is also clear that Respondent has no rights or legitimate interest in the domain name and thus registered and sought to use it in bad faith. 

Since Respondent offered to sell it to Complainant for a cost exceeding the cost of registration and since Respondent failed to present evidence supporting an alleged attempt to establish a real estate business with the domain name, Respondent has registered and used the domain name in bad faith. Also, Respondent was aware of Complainant's mark. The Panel accepts that Respondent’s use of the domain name “Penthouse.net” would divert some of Complainant’s customers and dilute its trademarks.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Bender, Panelist:-

1. The Parties
The complainant is General Media Communications, Inc. The respondent is JMR Creations.

2. The Domain Name(s) and Registrar(s)
The domain name at issue is <penthouse.net>, which domain name is registered with Network Solutions, Inc.

3. Procedural History
Complainant filed a complaint on April 3, 2000. The National Arbitration Forum reviewed this complaint and determined it to be in administrative compliance. The complaint was forwarded to Respondent on April 7, 2000 and the administrative proceedings was commenced.

Network Solutions, Inc. and Complainant were immediately notified that the administrative proceeding had commenced. Respondent submitted a response to the Forum within twenty days as pursuant to Rule 5(a).

Network Solutions, Inc. confirmed that the domain name <Penthouse.net> is registered with them and that Respondent was the current registrant of the name and that by doing so, Respondent is bound to resolve any dispute regarding this domain name through Network Solutions, Inc. and ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

4. Factual Background
Complainant owns many trademarks that are made up of the terms “Penthouse”. For many years prior to Respondent’s registration, Complainant has used the mark “Penthouse” in various domain names for the purpose of reaching its website and other related websites. The mark “Penthouse” is used significantly by Complainant as a means of promoting both products and services and was used extensively at its portal Website.

Complainant provided evidence which showed that for many years prior to Respondent’s registration, Complainant has used its trademarks extensively and continuously in interstate as well as international commerce regarding the advertising and sale of Complainant’s products and services.

Evidence also demonstrated that Complainant has invested significant sums of money in the development and marketing of its products affixed with its “Penthouse” trademarks. Similarly, “Penthouse” domain names have been used continuously by Complainant. 

Respondent admitted to having an active internet business which serves the adult entertainment market and is also aware of the substantial market penetration of Complainant. It is accepted that Respondent’s use of the domain name “Penthouse.net” would divert some of Complainant’s customers and dilute its trademarks.

There is no evidence that Respondent actively sought to establish a real estate related business, despite protestations by Respondent. Evidence clearly indicates the opposite. Correspondence dated April 28 and 30, 1998 reflects Respondent’s desire to link his adult sites with Complainant’s. The attorney invoice proffered refers to the adult site of the Respondent.

It is clear that Respondent has no rights or legitimate interests in respect to the domain name or mark. Evidence existed to show that bad faith registration and use on the part of the Respondent. Firstly, upon registration of the domain name penthouse.net, Respondent attempted to negotiate the sale of that name to Complainant for at least $10,000 plus further consideration, including links to Respondent’s adult entertainment websites. Secondly, evidence to support Respondent’s contention that he had the intent to conduct a real estate related business with that domain name is completely lacking. Thirdly, correspondence from Respondent’s attorney on April 30, 1998 in which it offered to sell the domain name and other consideration in exchange for tendering the domain name back to Complainant is evidence of Respondent’s profit motive. 

Complainant requests that the domain name “Penthouse.net” be transferred from Respondent to Complainant. 

5. Parties’ Contentions
A. Complainant
It is the contention of the Complainant that respondent has registered as a domain name a mark which is identical to the service mark and trademark registered and used by Complainant, that Respondent has no legitimate interests or rights in respect to this domain name, and that Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent alleged that he registered and used the domain name as a means to establishing a real estate related business. 

6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following: 

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no legitimate interests in respect of the domain name; and
(3) the domain name has been registered and used in bad faith.

There can be no question that the domain name <Penthouse.net> registered by Respondent is nearly identical and confusingly similar to numerous trademarks and domain names in which Complainant has rights and to which Respondent has no right or legitimate interest. 

Since Respondent registered and acquired the domain name <Penthouse.net> with the primary purpose of selling or otherwise transferring this domain name registration to the owner of the trademark, Complainant, or to compete with Complainant, Respondent registered and used the domain name in bad faith. 

7. Decision
Based upon the foregoing reasons and conclusions and pursuant to Rule 4, it is decided by the Panelist that the domain name registered and used by Respondent is identical or confusingly similar to numerous trademarks and domain names in which the complainant has rights, and that Respondent has no rights or legitimate interests in respect of said domain name. Accordingly, as Respondent has registered and used the domain name in bad faith, it is directed by the Panelist that the domain name <Penthouse.net> be transferred to Complainant.