Pascua Yaqui Tribe v. Jack Muller
Claim Number: FA0801001139085
Complainant is the Pascua Yaqui Tribe (“Complainant”), represented by Karen
A. Brennan of Winthrop & Weinstine, P.A., Minnesota,
USA. Respondent is Jack Muller
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <casino2sun.com>, registered with Onlinenic, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 18, 2008; the National Arbitration Forum received a hard copy of the Complaint January 21, 2008.
On January 22, 2008, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <casino2sun.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. verified that Respondent is bound by the Onlinenic, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2008, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
After notice and a copy of the rules and the Complaint, Respondent Jack Muller sent an inquiry to the Forum. He asked what the Forum wanted from him, stated that he owns the <casino2sun.com> domain name, stated that it is “pretty worthless,” and asked why the representative from the Forum wanted a domain in which “you have no rights?” This is not a Response, was not filed pursuant to the Rules, but at the same time it evidences notice of the claim and sufficient awareness to have responded had Respondent been inclined to do so. Nevertheless, the Panel reviewed the email and finds that the material contained in the email would not require a result that is different from the situation in which there is no Response.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <casino2sun.com>, is confusingly similar to Complainant’s CASINO OF THE SUN mark.
2. Respondent has no rights to or legitimate interests in the <casino2sun.com> domain name.
3. Respondent registered and used the <casino2sun.com> domain name in bad faith.
B. Respondent submitted the email inquiry referenced above but did not submit a
Response in this proceeding.
Complainant, Pascua Yaqui Tribe, is a federally recognized
Indian tribe. Complainant owns and
operates Casino of the Sun and Casino Del Sol casinos in
Respondent registered the disputed domain name April 5, 2005. The domain name currently resolves to a website hosting links to on-line casino services.
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 proper Response or to raise an issue that would suggest the need for a different result from that which the Panel reaches here, the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Registration of the CASINO IN THE SUN mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that Complainant’s legal rights in the CASINO SUN mark are established and that Complainant further used the domain name <casinosun.com> to permit Internet users to access Complainant’s goods and services there. The disputed domain name <casino2sun.com> is confusingly similar to both Complainant’s marks and the domain name that Complainant has chosen to advance its interest on the Internet.
The Panel also finds that Complainant’s use of the terms CASINO SUN in the market place to market materials, billboards, and on the Internet since 1989 establishes a secondary meaning that confers common law rights in the CASINO SUN mark for Complainant. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
The disputed domain name is confusingly similar to Complainant’s mark. The <casino2sun.com> domain name adds the number “2” to Complainant’s common law mark. The Panel also finds that the disputed domain name confusingly similar to Complainant’s registered mark. The removal of two general terms, “of” and “the,” and the addition of the number “2” is insufficient to limit confusion for the Internet user. The Panel finds the disputed domain name to be confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has no rights to nor
legitimate interests in the disputed domain name, which contains the essential
words of both Complainant’s legal and common law marks and is confusingly
similar to the marks and the domain name that Complainant chose to advance its
interests on the Internet, pursuant to Policy ¶ 4(a)(ii). Complainant has the initial burden of showing
that Respondent does not have rights or legitimate interests in the disputed
domain name. Once
Complainant has made a prima facie
case, the burden shifts to Respondent.
The Panel finds that Complainant met the initial burden of showing that
Respondent lacks rights and legitimate interests, and therefore has made a prima facie case under Policy ¶ 4(a)(ii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
Because Respondent’s inquiry was not a formal Response to the Complaint, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, preferring substance over procedure, the Panel set out above the contentions in the email inquiry that Respondent sent after receiving the Complaint and a copy of the Rules and the Panel has examined all of the evidence in the record to determine if the evidence suggested that Respondent has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c). It did not.
Complainant asserts that Respondent has never been
authorized to use the CASINO OF THE SUN mark or the CASINO SUN mark, and that
Respondent is not and has never been commonly known by the disputed domain
name. Further, the WHOIS information identifies
Respondent as “Jack Muller” and gives no indication that Respondent is or has
ever been commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not
commonly known by the <casino2sun.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Moreover, Respondent is using the <casino2sun.com> domain name to advertise links to third parties who would seek to compete with Complainant. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that given the similarity of the domain
name, the record on its face permits an inference that Respondent knowingly
used the mark of another in registering the <casino2sun.com> domain name. Further, Respondent’s use of
the <casino2sun.com> domain
name to commercially gain by advertising links to competing services
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Complainant contends that Respondent is using the <casino2sun.com>
domain name for commercial gain by advertising links to competing services, and
benefiting from the likely confusion between Complainant’s mark and the
disputed domain name. The Panel finds
that the similarity between the disputed domain name and Complainant’s marks is
likely to create confusion as to Complainant’s source, sponsorship,
affiliation, or endorsement of the website that resolves from the disputed
domain name under Policy ¶ 4(b)(iv). See AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name
resolved to a website that offered links to third-party websites that offered
services similar to the complainant’s services and merely took advantage of
Internet user mistakes); see also
The Panel finds that Complainant satisfied 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 <casino2sun.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 27, 2008.
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