NP IP Holdings LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2207002002857
Complainant is NP IP Holdings LLC (“Complainant”), represented by Erin Lewis of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stationscasinoinfo.com> and <stationcasinoinfo.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2022; the Forum received payment on July 1, 2022.
On July 5, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stationscasinoinfo.com> and <stationcasinoinfo.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2022 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@stationscasinoinfo.com, postmaster@stationcasinoinfo.com. Also on July 6, 2022, 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 August 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant provides luxury resort hotel and casino services. Complainant has rights in the STATION CASINOS trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,864,405, registered Nov. 22, 1994). The <stationscasinoinfo.com> and <stationcasinoinfo.com> domain names are identical or confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark, merely removing the letter “S” from the term “CASINOS” before adding the generic term “info” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <stationscasinoinfo.com> and <stationcasinoinfo.com> domains because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s STATION CASINOS trademark. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domains resolve to a parked webpages hosting pay-per-click hyperlinks which direct Internet users to various websites both related and unrelated to Complainant’s business.
Respondent has registered and uses the <stationscasinoinfo.com> and <stationcasinoinfo.com> domain names in bad faith because Respondent uses the disputed domain names to attract commercial gain. Respondent also engages in inactive holding of the disputed domain names. In addition, Respondent engages in typosquatting and had knowledge of Complainant’s rights in the STATION CASINOS trademark prior to registering the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 1,864,405 STATION CASINOS (word, with disclaimer for “CASINOS”), registered on November 22, 1994 for services in Intl Class 41;
- No. 4,515,123 STATION CASINOS (word, with disclaimer for “CASINOS”), registered on April 15, 2014 for services in Intl Class 41;
- No. 1,863,360 STATION CASINOS (word, with disclaimer for “CASINOS”), registered on November 15, 1994 for services in Intl Class 42;
- No. 2,224,338 STATION CASINOS (word), registered on February 16, 1999 for goods in Intl Class 25;
- No. 3,626,345 STATION CASINOS SPORTS CONNECTION (fig, with disclaimer for “CASINOS” and “SPORTS”), registered on May 26, 2009 for services in Intl Class 41;
- No. 5,813,827 STATION CASINOS WORLD SERIES OF KENO (fig, with disclaimer for “CASINOS” and “KENO”), registered on July 23, 2019 for services in Intl Class 41;
- No. 1,494,589 PALACE STATION HOTEL-CASINO (fig, with disclaimer for “HOTEL-CASINO”), registered on June 28, 1988 for services in Intl Class 41;
- No. 1,494,641 PALACE STATION HOTEL-CASINO (fig, with disclaimer for “HOTEL-CASINO”), registered on June 28, 1988 for services in Intl Class 42;
- No. 1,494,471 PALACE STATION HOTEL-CASINO (fig, with disclaimer for “HOTEL-CASINO”), registered on June 28, 1988 for services in Intl Class 35;
The disputed domain names <stationscasinoinfo.com> and <stationcasinoinfo.com> were registered on March 20, 2020.
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 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 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”).
The Complainant asserts rights in the STATION CASINOS trademark based on registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Here, Complainant provides evidence of its registrations with the USPTO for the STATION CASINOS trademark (e.g., Reg. No. 1,864,405, registered Nov. 22, 1994). Therefore, the Panel find that Complainant has rights in the STATION CASINOS trademark under Policy ¶ 4(a)(i).
Complainant argues that the <stationscasinoinfo.com> and <stationcasinoinfo.com> domain names are identical or confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark but for omitting the letter “S” from the term “CASINOS,” added a generic word “info,” and attached the “.com” gTLD. Domain names which incorporate the entire mark, even with slight misspellings, are usually considered confusingly similar, while deleting spaces and adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (“The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy.”); see also FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (June 23, 2015) (holding the <foresmost.com> domain name is confusingly similar to the FOREMOST mark, noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter, ‘s.’”). Further, adding a generic word does not create a sufficient distinction between a domain name and a mark. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Here, Respondent has incorporated the entire trademark with a slight misspelling by omitting the letter “S” in the descriptive word “CASINOS” in the trademark and to one disputed domain name adding a letter “s” to the word “station” in the STATION CASINOS trademark. In addition, Respondent has omitted the space in the trademark, added the generic word “info” and the “.com” gTLD, and as discussed, these changes do not create a sufficient distinction between Complainant’s trademark and the disputed domain names. Therefore, the Panel find that Respondent’s domain names are confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 claims that Respondent does not have rights or legitimate interests in the <stationscasinoinfo.com> and <stationcasinoinfo.com> domain names because Respondent is not commonly known by the disputed domain names and is not associated with Complainant or authorized to use Complainant’s STATION CASINOS trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Additionally, lack of authorization to use a complainant’s trademark may demonstrate that the respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, there is no evidence available in the record to suggest that Respondent is known by the <stationscasinoinfo.com> or <stationcasinoinfo.com> and no information suggests that Complainant authorized Respondent to use the STATION CASINOS trademark. Rather, the WHOIS information lists the registrant of the domains as “Registration Private/Domains By Proxy, LLC.” Only later did the Registrar verify that the registrant of both domains is “Carolina Rodrigues/Fundacion Electronico.” Therefore, the Panel find that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <stationscasinoinfo.com> and <stationcasinoinfo.com> domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the disputed domain name resolves to a parked page. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, the resolving webpage hosts parked links which advertise goods and services both related and unrelated to the Complainant. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered and uses the <stationscasinoinfo.com> and <stationcasinoinfo.com> domains in bad faith because it registered the domains to attract Internet users to the website for commercial gain. Registration and use of a disputed domain name which is confusingly similar to a complainant’s trademark, and using that domain name to host monetized hyperlinks for commercial gain is evidence of bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Respondent’s disputed domain name, as noted above, is not sufficiently distinct from Complainant’s STATION CASINOS trademark. Furthermore, the related/competing hyperlinks on the disputed domain name’s resolving website/s is further evidence that Respondent is attempting to lure confused consumers to its domain name, presumably for commercial gain. The Panel agrees with Complainant’s conclusion/s, and find that Respondent has registered and uses the disputed domains in bad faith under Policy ¶ 4(b)(iv).
Second, Complainant argues that Respondent registered the <stationscasinoinfo.com> and <stationcasinoinfo.com> domains in bad faith because Respondent had constructive and/or actual knowledge of Complainant’s rights in the STATION CASINOS trademark prior to registering the disputed domain names. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel find that Respondent had actual knowledge of Complainant's trademark and rights given the fame of the trademark and therefore determine that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant argues that Respondent had constructive knowledge given Complainant’s prior registration of the trademark with the USPTO. Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the trademark given the fame of the trademark. Further, the Panel notes that the disputed domain names resolve to a webpage hosting parked links which advertise goods and services both related and unrelated to the Complainant. Therefore, the Panel find that Respondent registered the disputed domains in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent fails to make active use of the disputed domain names. Inactive holding of an infringing domain name has been deemed evidence of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, the disputed domain names each resolve to websites lacking any substantive content apart from hyperlinks from which Respondent attempts to generate click-through revenue. Thus, the Panel find that Respondent fails to make active use of the disputed domain names, which supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii).
Lastly, Complainant asserts that Respondent has registered and uses the disputed domain names in bad faith because it engages in typosquatting. Typosquatting, or capitalizing on slight misspellings between the disputed domain name and a complainant’s trademark or a complainant’s legitimate domain name, may be evidence of bad faith under Policy ¶ 4(a)(iii). See Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014) (“Respondent adds an additional letter ‘v’ to Complainant’s OLD NAVY mark in the <oldnavvy.com> domain name, a classic example of typosquatting. Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”). Here, in the disputed domain names Respondent has removed the letter “s” from the word “casinos” in the mark as well as, to one of the domains, added a letter “s” to the word “station” in the trademark, taking advantage of internet users who may attempt to reach Complainant’s domain. The panel agrees that such changes constitute typosquatting, and find bad faith within the meaning of 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 <stationscasinoinfo.com> and <stationcasinoinfo.com> domain names to be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 11, 2022
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