Harveys Casino Resorts v. Vertical Axis,
Inc.
Claim Number: FA0207000117320
PARTIES
Complainant
is Harveys Casino Resorts,
Stateline, NV, USA (“Complainant”) represented by Andrew J. Wilson, of Alston
& Bird, LLP. Respondent is Vertical Axis, Inc., Central, Hong
Kong, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <harveys-tahoe.com>,
registered with The Registry at Info
Avenue d/b/a IA Registry.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 30, 2002; the Forum received a hard copy of the
Complaint on July 31, 2002.
On
August 15, 2002, The Registry at Info Avenue d/b/a IA Registry confirmed by
e-mail to the Forum that the domain name <harveys-tahoe.com>
is registered with The Registry at Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the disputed name. The Registry at Info Avenue d/b/a IA
Registry verified that Respondent is bound by The Registry at Info Avenue d/b/a
IA Registry 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
August 15, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
4, 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 postmaster@harveys-tahoe.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
September 26, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The
<harveys-tahoe.com> domain
name is confusingly similar to Complainant's HARVEY’S mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the
disputed domain name in bad faith.
B.
Respondent failed to submit a Response.
FINDINGS
Complainant registered its HARVEY’S mark
with the United States Patent and Trademark Office as Registration Numbers
1,878,054; 2,026,250; 2,038,045; and 2,240,209. Complainant owns and operates Harvey’s Resort and Casino, located
on the south shore of Lake Tahoe, Nevada.
Complainant’s hotel offers its customers luxurious guest room accommodations
with picturesque views of Lake Tahoe and the surrounding mountains. Complainant’s facilities also include a
5,000-seat amphitheater that features musicians and entertainers such as Robin
Williams and Tim McGraw. Complainant’s
resort includes a casino, other resort amenities, and restaurant services. Complainant’s hotel has received a
Four-Diamond rating from the American Automobile Association for the past nine
years, a Four-Star rating from Mobil’s travel guide and was named one of the
Top 50 Ski Resort Hotels in North America by Conde Nast Traveler
magazine in 2001.
Respondent registered the disputed domain
name on November 13, 2001. Respondent
is using the disputed domain name to display banner advertisements for debt
consolidation and web hosting services.
It also features links to airline tickets, vacations, hotels and
travel. Visitors to the website are
barraged with a series of pop-up windows offering wireless video cameras, auto
loans, and web hosting services.
DISCUSSION
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
shall draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the Rules.
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.
Complainant established in this
proceeding that it has rights in the HARVEY’S mark through registration with
the United States Patent and Trademark Office and by continuous use of the
mark.
The domain name registered by Respondent,
<harveys-tahoe.com>, is confusingly similar to Complainant’s
HARVEY’S mark because it incorporates Complainant’s entire mark and merely adds
the descriptive term “tahoe” and a hyphen.
The addition of the term “tahoe” does not create a distinct mark because
it describes Complainant’s hotel and casino resort located on Lake Tahoe. The addition of a term to Complainant’s mark
that describes Complainant’s business does not create a distinct mark capable
of overcoming a claim of confusing similarity.
See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity).
Furthermore,
the addition of a hyphen between words of a domain name is not relevant when
determining whether or not a domain name is confusingly similar. See Teleplace, Inc. v. De
Oliveira, FA 95835 (Nat.
Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>,
<tele-place.com>, and <theteleplace.com> are confusingly similar to
Complainant’s TELEPLACE trademark); see also Easyjet Airline
Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it
obvious that the domain name <easy-jet.net> was virtually
identical to Complainant's EASYJET mark and therefore that they are confusingly
similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent did not come forward with a
Response. Therefore, the Panel is
permitted to make reasonable inferences in favor of Complainant and accept
Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); 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”).
Furthermore, based on Respondent’s
failure to respond, it is presumed that Respondent lacks all rights and
legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interest in the domain name because Respondent never submitted a Response nor
provided the Panel with evidence to suggest otherwise).
Respondent is using a domain name that is
confusingly similar to Complainant’s HARVEY’S mark in order to attract Internet
users to Respondent’s website, which is filled with advertisements and links to
competing hotel and travel services.
The use of a domain name that is confusingly similar to Complainant’s
mark in order to attract Internet users to an advertising website is not
considered to be in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), and is not considered to be a legitimate,
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by using Complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”).
No evidence on the record establishes
that Respondent is commonly known as anything other than “Vertical Axis,
Inc.” In order to establish rights and
legitimate interests under Policy ¶ 4(c)(ii), Respondent must prove that it is
commonly known as HARVEY’S TAHOE or <harveys-tahoe.com>. Respondent has not proffered any evidence
and therefore has failed to establish that it has rights or legitimate
interests in the disputed domain name pursuant to 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 when
Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name and is not using the domain name in
connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
The fame of Complainant’s HARVEY’S mark
and the widespread reputation of Complainant’s Lake Tahoe resort and casino
permit the inference that Respondent knowingly included the word “tahoe” in its
domain name; using Complainant’s HARVEY’S mark in order to attract Internet
users that would be seeking to access Complainant’s services in Lake
Tahoe. The circumstances permit the
inference that Respondent had actual knowledge of Complainant’s rights in the
HARVEY’S mark when Respondent registered the disputed domain name. Registration of a domain name that
incorporates Complainant’s mark, despite actual knowledge of Complainant’s
rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Yahoo!
Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of
the YAHOO! mark negated any plausible explanation for Respondent’s registration
of the <yahooventures.com> domain name).
The evidence also permits the inference
that Respondent is profiting from the advertisements, links and pop-ups
featured at its <harveys-tahoe.com> domain name. Therefore, Respondent is commercially
benefiting from the likelihood of confusion created by the disputed domain
name. These circumstances also are
evidence of bad faith use pursuant to Policy ¶ 4(b)(iv). See 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); see
also ESPN, Inc. v. Ballerini, FA
95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent
linked the domain name to another website <iwin.com>, presumably to
receive a portion of the advertising revenue from the site by directing
Internet traffic to the site, thus using a domain name to attract Internet
users, for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <harveys-tahoe.com>
be transferred from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 10, 2002.
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