General Media Communications, Inc v Crazy Troll, LLC
Plaintiff General Media Communications (GMCI) and defendant Crazy Troll dispute the domain
name “penthouseboutique.com†after GMCI allowed ownership of the domain name to elapse
and Crazy Troll purchased it.
Facts:
GMCI is a corporation organized and existing under the laws of the State of New York. GMCI is
the publisher of Penthouse Magazine and the owner of penthouse.com and
penthousestore.com. In 2003, General Media (GMI), GMCI’s former parent, filed for
bankruptcy. After reorganization, it emerged as Penthouse Media Group Inc. (PMG). One of
PMG’s subsidiaries is GMCI. For a period of time prior to reorganization, GMCI owned the
domain name penthouseboutique.com, but allowed the registration to lapse during the GMI
bankruptcy.
The defendant owns and operates internet-based businesses offering web design and hosting,
domain name registration, and related services. The defendants also register domain names for
profit, registering more than 1,400 domain names with the intent of using them to revenue. On
October 14, 2004, the defendants registered the domain name “penthouseboutique.com†and
offered it for rent or sale through Crazy Troll’s services. The page contained contact information and stated that the domain name was for sale. The page also contained numerous links to third party web sites.
In April 2005, GMCI became aware of the defendants use of the domain name, and they sent
them a letter regarding the unauthorized registration of the penthouseboutique.com domain
name and their use of the Penthouse trademarks. Receiving no response, GMCI sent a second
letter in February of 2006. On February 28, 2006, GMCI filed a complaint under the UDRP with
the NAF in an attempt to reclaim the domain name. Crazy Troll opposed the complaint and
claimed reverse domain name hijacking.
Discussion:
The Rules for UDRP proceedings define reverse domain name hijacking as “using the Policy in
bad faith to attempt to deprive a registered domain-name holder of a domain name.†However,
since GMCI’s rights in the Penthouse mark were well-established and the defendant’s domain
name was, at a minimum, confusingly similar, the first element of the UDRP test has been
satisfied (“the registrant’s domain name is ‘identical or confusingly similar to a trademark or service mark in which the complainant has rights’â€) and the reverse domain name hijacking
claim has no weight.
The court also reviews the three circumstances in which an alleged cybersquatter could prove
to have a legitimate interest in the domain name. They conclude that if there was evidence that established or even arguably established all three elements of the UDRP, GMCI could not have brought its proceeding in bad faith as the sole panelist found.
Conclusion:
The court finds that there was no basis for a finding of reverse domain name hijacking and
declares that GMCI did not initiate the UDRP proceeding in bad faith. For these reasons, GMCI
is granted partial summary judgment on its declaratory relief. Further adjudication will be
needed on the remaining counts in the complaint.
Plaintiff General Media Communications (GMCI) and defendant Crazy Troll dispute the domain
name “penthouseboutique.com†after GMCI allowed ownership of the domain name to elapse
and Crazy Troll purchased it.
Facts:
GMCI is a corporation organized and existing under the laws of the State of New York. GMCI is
the publisher of Penthouse Magazine and the owner of penthouse.com and
penthousestore.com. In 2003, General Media (GMI), GMCI’s former parent, filed for
bankruptcy. After reorganization, it emerged as Penthouse Media Group Inc. (PMG). One of
PMG’s subsidiaries is GMCI. For a period of time prior to reorganization, GMCI owned the
domain name penthouseboutique.com, but allowed the registration to lapse during the GMI
bankruptcy.
The defendant owns and operates internet-based businesses offering web design and hosting,
domain name registration, and related services. The defendants also register domain names for
profit, registering more than 1,400 domain names with the intent of using them to revenue. On
October 14, 2004, the defendants registered the domain name “penthouseboutique.com†and
offered it for rent or sale through Crazy Troll’s services. The page contained contact information and stated that the domain name was for sale. The page also contained numerous links to third party web sites.
In April 2005, GMCI became aware of the defendants use of the domain name, and they sent
them a letter regarding the unauthorized registration of the penthouseboutique.com domain
name and their use of the Penthouse trademarks. Receiving no response, GMCI sent a second
letter in February of 2006. On February 28, 2006, GMCI filed a complaint under the UDRP with
the NAF in an attempt to reclaim the domain name. Crazy Troll opposed the complaint and
claimed reverse domain name hijacking.
Discussion:
The Rules for UDRP proceedings define reverse domain name hijacking as “using the Policy in
bad faith to attempt to deprive a registered domain-name holder of a domain name.†However,
since GMCI’s rights in the Penthouse mark were well-established and the defendant’s domain
name was, at a minimum, confusingly similar, the first element of the UDRP test has been
satisfied (“the registrant’s domain name is ‘identical or confusingly similar to a trademark or service mark in which the complainant has rights’â€) and the reverse domain name hijacking
claim has no weight.
The court also reviews the three circumstances in which an alleged cybersquatter could prove
to have a legitimate interest in the domain name. They conclude that if there was evidence that established or even arguably established all three elements of the UDRP, GMCI could not have brought its proceeding in bad faith as the sole panelist found.
Conclusion:
The court finds that there was no basis for a finding of reverse domain name hijacking and
declares that GMCI did not initiate the UDRP proceeding in bad faith. For these reasons, GMCI
is granted partial summary judgment on its declaratory relief. Further adjudication will be
needed on the remaining counts in the complaint.