By: www.DefendMyDomain.com/blog

In the recent domain name dispute of L.F.P., Inc. and LFP IP, LLC v. Anthonny, Network Service (WIPO D2009-0984, September 13, 2009), a single member Panel was faced with a dispute over the domain www.hustlerlesbians.com. Complainant is the famous publisher of Hustler magazine and has many other ventures including videos and clothing under the HUSTLER mark. Complainant maintains a web site at www.hustler.com. The disputed domain was registered in September 2007 and the Respondent failed to respond to the complaint.

In accordance with Policy the Complainant must demonstrate that: (i) The disputed 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 disputed domain name; and (iii) The disputed domain name was registered and is being used by the Respondent in bad faith.

In addressing the first element, the Panel noted that L.F.P. (“Larry Flynt Productions”) had valid and long term trademark registrations for the HUSTLER mark. The Panel found that the disputed domain incorporated all of complainant’s mark including the generic word lesbians. The Panel explained:

The Complainant contends persuasively, and without contradiction from the Respondent, that a significant portion of the Complainant’s exploitation of adult entertainment products involves lesbian sexual activity. Ergo, the Panel concludes that a reasonable Internet user would find the similarity between the disputed domain name and the trademark confusing as to the source of the material found at the web site corresponding to the disputed domain name.

As a result, the Panel found Hustler satisfied this element. Moving to the second element, rights or legitimate interests, the Panel found that the disputed domain redirected users to adult material which competed directly with Hustler. The respondent did not make a bona fide offering of goods or services pursuant to the Policy. Additionally the Panel noted that Respondent was not commonly known by the disputed domain. For these reasons, the Panel found Hustler satisfied the second element.

Moving to the final element, bad faith, the Panel explained that HUSTLER has been well known throughout the world and the U.S. for years. The Panel held:

Furthermore, the Complainant has provided the Panel with acceptable visual evidence that the Respondent uses the disputed domain name for its web site that prompts Internet users to acquire material depicting lesbian sexual liaisons. Such material is a mainstay of the Complainant’s business, and the use of the Complainant’s full trademark as the first and dominant part of the disputed domain name compels the Panel to believe that the Respondent deliberately registered the name to confuse the public as to the source of said material for the Respondent’s commercial gain.

As a result, the Panel found that Complainant met all three elements and ordered the domain be TRANSFERRED.