NP IP Holdings LLC v. Amit N
Claim Number: FA2010001917992
Complainant is NP IP Holdings LLC (“Complainant”), represented by Erin Lewis of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is Amit N (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <station.casino>, registered with Porkbun LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2020; the Forum received payment on October 22, 2020.
On October 22, 2020, Porkbun LLC confirmed by e-mail to the Forum that the <station.casino> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@station.casino. Also on October 26, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the intellectual property holding company for, and a wholly owned subsidiary of, Station Casinos LLC located in Las Vegas, Nevada. Complainant has rights in the trademark STATION CASINOS through Complainant’s use in commerce since 1984 and its multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”), the earliest of which dates back to 1994. Respondent’s <station.casino> domain name, registered on July 24, 2020, is nearly identical and confusingly similar to Complainant’s STATION CASINOS mark as it (1) uses a period in place of the space between “STATION” and “CASINOS”, and (2) uses the singular word “CASINO” as a generic top-level domain (“gTLD”) rather than the plural word “CASINOS”.
Respondent lacks rights or legitimate interests in the <station.casino> domain name. Respondent is not commonly known by the disputed domain name and has not received authorization from Complainant to use the STATION CASINOS mark. Additionally, Respondent offered to sell the disputed domain name to Complainant. Further, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent fails to make an active use of the disputed domain name.
Respondent registered and uses the <station.casino> domain name in bad faith. Shortly after registering the disputed domain name, Respondent offered to sell the domain name to Complainant. Additionally, Respondent fails to make an active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) of the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the STATION CASINOS mark through its multiple registrations thereof with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) As Complainant has submitted screenshots from the USPTO website evidencing its ownership of the asserted registrations, the Panel finds that Complainant has sufficiently established rights in the STATION CASINOS mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <station.casino> is virtually identical and confusingly similar to Complainant’s STATION CASINOS mark as it (1) uses a period in place of the space between “STATION” and “CASINOS”, and (2) uses the singular word “CASINO” rather than the plural “CASINOS”. The addition of a period and a gTLD while omitting the letter “s” from a mark fails to sufficiently distinguish a disputed domain name from the mark per Policy ¶ 4(a)(i). See ShipCarsNow, Inc. v Wet Web Design LLC, FA 1601260 (Forum Feb. 26, 2015) (establishing a confusing similarity between the <shipcarnow.com> domain name and the SHIPCARSNOW mark because the domain name simply removes the letter “s”). Further, while the gTLD itself is most often disregarded by Panels for purposes of the ¶ 4(a)(i) analysis, here it is particularly relevant where it consists of a portion of Complainant’s asserted mark. See 23andMr, Inc. v. A. Kemper, FA 1681113 (Forum July 22, 2016) (finding <23and.me> confusingly similar to the complainant’s 23ANDME trademark). Here, the Panel finds that the disputed <station.casino> domain name is confusingly similar to Complainant’s STATION CASINOS mark and so Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <station.casino> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the STATION CASINOS mark. In considering this issue, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS record for the disputed domain name, as disclosed by the concerned Registrar after the Complaint was filed, lists the registrant as “Amit N” and Complainant states that it did not authorize Respondent to use the STATION CASINOS mark. Therefore, the Panel finds no basis upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also contends that Respondent lacks rights or legitimate interests in the <station.casino> domain name as Respondent offered to sell the disputed domain name to Complainant. Depending upon all of the circumstances of a given case, a respondent’s offer to sell a disputed domain name may indicate that it does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Here, Complainant provides screenshots of Respondent’s unsolicited email, dated August 13, 2020, in which it offers to sell the disputed domain name to Complainant. The Panel notes that this unsolicited offer from Respondent was made to Complainant twenty days after Respondent registered the disputed domain name. This strongly supports a finding that Respondent’s primary intended use of the disputed domain name was to sell it to Complainant and that this is not a bona fide use under Policy ¶ 4(c)(i).
Complainant further argues that Respondent fails to use the <station.casino> domain name in connection with a bona fide offering of goods or services or to make a legitimate noncommercial or fair use as Respondent fails to make an active use of the disputed domain name. Failure to make an active use of a disputed domain name may indicate the lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Here, Complainant provides screenshots of the website that resolves from the disputed domain name highlighting that the page displays a message that “[t]his site can’t be reached.” As Respondent has filed no Response or made any other submission in this case to refute Complainant’s assertions or explain its actions, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
In light of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Although not directly asserted by Complainant, inherently prerequisite to a finding of bad faith under Policy ¶ 4(a)(iii) is some attribution of knowledge of a complainant’s trademark, whether actual or based upon a conclusion that a respondent should have known of the mark. See, Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”). See also WIPO Overview 3.0, par. 3.1.1 (when examining whether “circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark”, Panels may consider such issues as “the respondent’s likely knowledge of the complainant’s rights”). Here, Complainant asserts that it has “spent millions of dollars to advertise and promote the STATION Marks in print, broadcast media and on the Internet” and further claims to have “made extensive use of the STATION Marks on, among other things, signage, wearing apparel, souvenirs and promotional materials”. In support of these factual claims Complainant submits a declaration of its Vice President and Associate General Counsel who repeats these claims. Conspicuously missing from Complainant’s pleadings are any photographs or other evidence of most of these items. Complainant does submit a screenshot of its internet home page and copies of its trademark registrations but these do not speak to any reputation that the STATION CASINOS mask has gained with Complainant’s customers or the broader public and, in particular, to the issue of whether Respondent knew or should have known of the mark at the time it registered the disputed domain name. However, the fact that Respondent took the initiative to email the Complainant and offer to sell the disputed domain name – and so soon after its registration – leads this Panel to find it more likely than not that Respondent did have actual knowledge of Complainant’s mark at the time that it registered the disputed domain name.
Next, Complainant contends that Respondent registered the <station.casino> domain name in bad faith as Respondent offered to sell the disputed domain name to Complainant a mere twenty days after it was registered by Respondent. Offering to sell a disputed domain name, and so soon after registration, can demonstrate bad faith Policy ¶ 4(b)(i). See Deutsche Bank AG v. Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was registered in bad faith because of the short time frame between the respondent’s registration and the unsolicited offer of sale to the complainant). As noted, Complainant provides a screenshot of Respondent’s unsolicited offer to sell the disputed domain name to Complainant only twenty days after it was registered by Respondent registered. In view of this evidence, the Panel finds that Respondent specifically targeted Complainant’s mark and registered the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant further contends that Respondent registered and uses the <station.casino> domain name in bad faith as Respondent fails to make an active use of the disputed domain name. Failure to make an active use of a disputed domain name can demonstrate bad faith after taking into account all of the circumstances of a case. Although lack of use does not neatly fit within Policy ¶ 4(b), It has long been recognized by UDRP Panels that the examples set out in that sub-paragraph are merely illustrative and are not exclusive to finding bad faith. Beginning with Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), Panels have consistently held that, after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to acting in bad faith.” Id. The Panel in Teltstra specifically noted that “paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.” Id. See also Autoshop 2 Di Battaglia Ferruccio C. S.N.C. v. Willamette RF Inc., D2004-0250 (WIPO June 2, 2004) (collecting cases citing Telstra). As noted, Complainant provides a screenshot of the website content that resolves from the disputed domain name and notes the “[t]his site can’t be reached” message on that page. As Respondent has not participated in this case to refute Complainant’s assertion or explain the lack of any website content or other activity with the disputed domain name, the Panel finds that it registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <station.casino> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 23, 2020
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