Rio Properties, Inc. v. Stealth Commerce
Claim Number: FA0203000105756
Complainant is Rio Properties, Inc., Las Vegas, NV (“Complainant”) represented by David J. Stewart, of Alston & Bird LLP. Respondent is Stealth Commerce, Tortola, BRITISH VIRGIN ISLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riohotellasvegas.com>, registered with Intercosmos Media Group, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 6, 2002; the Forum received a hard copy of the Complaint on March 11, 2002.
On March 6, 2002, Intercosmos Media Group, Inc. confirmed by e-mail to the Forum that the domain name <riohotellasvegas.com> is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On April 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) 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.” 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.
1. The disputed domain name <riohotellasvegas.com> is confusingly similar to Complainant’s RIO LAS VEGAS and RIO marks.
2. Respondent’s use of the domain name in connection with a website that offers sexually explicit activity along with Respondent’s offer to sell the disputed domain name to Complainant is evidence that Respondent does not have a right nor a legitimate interest in the disputed domain name.
3. Because of the fame associated with Complainant’s mark, Respondent’s registered the confusingly similar domain name with intent to trade on the good will associated with Complainant’s famous mark. Further, Respondent has made an attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s RIO mark as to the source, affiliation or endorsement of Respondent’s website. Finally, Respondent has prevented Complainant from reflecting its mark in the corresponding domain name and since Respondent has a history of such activity, Respondent has registered and used the disputed domain name in bad faith.
No Response was submitted.
Complainant owns and operates the “Rio All-Suite Hotel & Casino” in Las Vegas, NV, which has become one of the largest and most renowned casino entertainment facilities in the world. Complainant owns numerous trademarks incorporating the RIO mark, including: RIO, registered on July 19,1994, Reg. No. 1,845,968; and RIO LAS VEGAS, registered on April 22, 1997, Reg. No. 2,053,740. Since as early as February 1, 1989, Complainant has used the RIO mark in connection with its hotel, casino and entertainment services.
According to Complainant, Respondent’s alter ego “Telmex” registered the disputed domain name on October 27, 2001 and used <riohotellasvegas.com> in connection with a website that featured highly suggestive photographs of semi-nude and nude women in various poses. Complainant sent a cease and desist letter to Telmex on November 8, 2001 and received an answer on November 15, 2001. The reply stated that Telmex was willing to sell the disputed domain name to Complainant for $4,000.
On February 15, 2002, Telmex transferred the disputed domain name to Respondent. Upon information and belief, Complainant asserts that Telmex and Respondent are one and the same. Complainant contends that due to a recent UDRP decision in a complainant’s favor (See Nat’l Cable Satellite Corp. v. Telmex Mgmt. Services, FA 102820 (Nat. Arb. Forum Feb. 4, 2002) (transferring <cspantv.com>from Respondent to Complainant)), Telmex did not want to associate with the disputed domain name in this case and, consequently, trasferred it to “Stealth Commerce.” Telmex and Stealth Commerce share the same business address; and, despite the transfer, the content on the website has remained the same.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant has established its rights to the RIO LAS VEGAS mark through registration and continuous use. The Panel finds that <riohotellasvegas.com> is confusingly similar to Complainant’s RIO LAS VEGAS mark. The addition of the generic term “hotel” to Complainant’s mark does not distinguish the disputed domain name form Complainant’s mark. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Park Place Entm’t Corp. v. Conille, FA 95492 (Nat. Arb. Forum Oct. 6, 2000) (finding the domain name <casinoparislasvegas.com>" confusingly similar to PARIS LAS VEGAS). The disputed domain name is even more confusingly similar considering that the generic term “hotel” describes Complainant’s business. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark “Marriott”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
By using the domain name in dispute to display sexually explicit pictures, Respondent has not made a bona fide use of <riohotellasvegas.com> pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
According to Complainant, Respondent has been known as “Telmex,” and is currently known as “Stealth Commerce.” Respondent has not provided any evidence that it has been known as “riohotellasvegas.” Thus, Respondent is not commonly known as <riohotellasvegas.com> and can not satisfy Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name where Respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Due to the peculiar similarities between the initial registrant of <riohotellasvegas.com> “Telmex” and Respondent “Stealth Commerce,” the Panel will presume that they are the same entity. See Digital Channel Partners Ltd.. v. Bilham Solutions, D2000-1246 (WIPO Dec. 14, 2000) (finding that since there “is a clear commonality between the individuals, entities, contact details and addresses sufficient to establish” that Respondent and Telmex Management Services should be treated as one entity “for the purposes of any factual determinations relevant to this decision”).
In light of the fame of Complainant’s RIO LAS VEGAS mark and the RIO family of marks in reference to hotel services in Las Vegas, it is apparent that Respondent knew of Complainant’s famous mark when it registered <riohotellasvegas.com>. Therefore, Respondent registered the disputed domain name in bad faith. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the long use and fame of the Complainant’s mark, the Respondent’s conduct is evidence of bad faith).
By offering to sell the disputed domain name to Complainant for $4,000, the Panel concludes that Respondent has registered the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Tech. Prop., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent verbally offered the domain names for sale for $2,000).
Furthermore, by registering and using <riohotellasvegas.com>, Respondent has prevented Complainant from reflecting its mark in the corresponding domain name. Respondent has engaged in this activity before. See Nat’l Cable Satellite Corp. v. Telmex Mgmt. Services, FA 102820 (Nat. Arb. Forum Feb. 4, 2002) (finding Respondent has engaged in bad faith registration and use of <cspantv.com> and thus transferring the disputed domain name from Respondent to Complainant). Therefore, Respondent has registered <riohotellasvegas.com> in bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks).
Finally, by using the dipsuted domain name which is confusingly similar to Complainant’s mark to divert Internet users to a commercial website, Respondent has attempted to attract Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website. Therefore, Respondent has used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <riohotellasvegas.com> be transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 22, 2002
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