Pechanga Band of Luiseno
Claim Number: FA0805001191107
PARTIES
Complainant is Pechanga Band of Luiseno Mission Indians
of the Pechanga Reservation (“Complainant”), represented by Elizabeth R. Burkhard, of Holland & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pechangacasino.com>, registered with
Domain-It,
Inc.
PANEL
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 15, 2008; the
National Arbitration Forum received a hard copy of the Complaint on May 16, 2008.
On May 16, 2008, Domain-It, Inc. confirmed by e-mail to the
National Arbitration Forum that the <pechangacasino.com> domain name is
registered with Domain-It, Inc. and that
the Respondent is the current registrant of the name. Domain-It,
Inc. has verified that Respondent is bound by the Domain-It, 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 May 20, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 9, 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 postmaster@pechangacasino.com by e-mail.
A timely Response was received in electronic format only, and not in
hard copy on May 28, 2008. The Response
is therefore incomplete under ICANN Rule 5.
On June 2, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1. The <pechangacasino.com> domain
name is identical or confusingly similar to Complainant's mark.
2. Respondent has no rights or legitimate interest
in the <pechangacasino.com> domain
name.
3. Respondent has registered and used the <pechangacasino.com> domain
name in bad faith.
B. Respondent
Respondent requests the Panel to deny Complainant’s request on the
grounds that he has a legitimate interest in the domain name and that he did
not act in bad faith.
FINDINGS
Complainant has rights in the PECHANGA mark (Reg. No. 3,247,029, issued
May 29, 2007, filed May 26, 2006), which was registered with the United States
Patent and Trademark Office (“USPTO”).
Respondent registered the disputed domain name on September 28,
2007.
Complainant asserts that Respondent is using
the disputed domain name to resolve to a website that features third-party
links and advertisements for Internet gambling, which compete with Complainant’s
gambling operations. Complainant alleges
that Respondent profits from the receipt of advertisement referral fees.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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;
(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.
Preliminary Issue: Is the Response deficient or not?
Respondent’s Response was submitted only by electronic format, and not also in hard copy.
Technically speaking, the Response is not in compliance with ICANN Rule 5.
However, the Panel chooses to accept and consider this Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant asserts rights in the PECHANGA mark (Reg. No. 3,247,029,
issued May 29, 2007, filed May 26, 2006), which was registered with the United
States Patent and Trademark Office (“USPTO”).
Complainant also asserts that Respondent registered the disputed domain
name on September 28, 2007, based on the WHOIS domain name registration
information submitted with the Complaint.
The Panel therefore finds Complainant to hold sufficient rights through
registration of the mark pursuant to Policy ¶ 4(a)(i). See
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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO
Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive.").
Complainant argues that Respondent’s <pechangacasino.com> domain name is confusingly similar to
Complainant’s PECHANGA mark. Complainant
asserts that the disputed domain name wholly incorporates Complainant’s mark
without alteration, while merely adding the generic word “casino,” and the
generic top-level domain (“gTLD”) “.com.”
Complainant argues that the generic word “casino” describes Complainant
and does not distinguish the disputed domain name as Complainant’s trademark
belongs to a class for operating casinos, and because Complainant has operated
such a facility for public use since 2002.
Moreover, Complainant argues that the generic top-level domain cannot be
considered under a Policy ¶ 4(a)(i) analysis.
Therefore, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); 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 the complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity).
While Respondent contends that the <pechangacasino.com>
domain name is comprised of generic and descriptive terms and as such
cannot be found to be confusingly similar to Complainant’s mark, the Panel finds
that such a determination is not necessary under Policy ¶ 4(a)(i)
as this portion of the Policy considers only whether Complainant has rights in
the mark and whether the disputed domain name is identical or confusingly
similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend,
FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the
complainant had received a trademark registration for its VANCE mark, the
respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i));
see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs.,
FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
The Panel points out that Respondent has not made any contentions with
respect to this element of Policy ¶ 4(a).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
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), and then
the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant contends that Respondent is not
commonly known by the disputed domain name.
Though Complainant does not make such an argument, the WHOIS domain name
registration information lists the registrant of the disputed domain name as “Eugene
Levy,” which does not resemble the disputed domain name.
The Panel therefore finds that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered
the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark).
Complainant also asserts that Respondent is
using the disputed domain name to resolve to a website that features
third-party links and advertisements for Internet gambling, which compete with
Complainant’s gambling operations.
Complainant alleges that Respondent profits from the receipt of
advertisement referral fees.
The Panel therefore finds that such a use of
the disputed domain name does not constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (holding that the respondent’s use of the disputed domain name to host a
series of hyperlinks and a banner advertisement was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
domain name).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent is intentionally disrupting its gambling operations by diverting Internet users seeking Complainant’s resort and casino to a website that promotes Internet gambling through the placement of third-party advertisements.
The Panel finds this to be true.
It also finds that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
Complainant alleges that Respondent registered a confusingly similar disputed domain name. Moreover, it asserts that Internet users seeking Complainant will likely believe the disputed domain name to resolve to Complainant’s official website, when in reality it will divert these same Internet users to Respondent’s commercially-competitive gambling advertisement website. Complainant sets forth in its submission evidence that such confusion has already occurred, in that a website promoting music venues improperly lists Complainant’s website as Respondent’s via the disputed domain name.
The Panel finds that Respondent
has created a likelihood of confusion as to Complainant’s source, endorsement,
and affiliation of the disputed domain name for Respondent’s commercial benefit,
and that Respondent has engaged in bad faith registration and use under Policy
¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent registered a domain name confusingly similar to the
complainant’s mark and the domain name was used to host a commercial website
that offered similar services offered by the complainant under its mark).
Complainant argues that Respondent was on constructive and/or actual notice of Complainant’s trademark rights given its trademark status with the USPTO prior to the registration of the disputed domain name, and the general fame and reputation of Complainant’s operations under the PECHANGA mark.
The Panel therefore finds that
Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii) in light of this notice. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb.
Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”); see also Orange
Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pechangacasino.com> domain name be TRANSFERRED
from Respondent to Complainant.
Flip Petillion, Panelist
Dated: June 24, 2008
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