Station Casinos, Inc. v. Mark Yunessa
Claim Number: FA0810001228169
Complainant is Station Casinos, Inc. (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <stationcasino.org>, <stationscasino.org>, <stationscasino.info>, <casinosstation.info> and <casinosstation.net>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2008.
On October 7, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <stationcasino.org>, <stationscasino.org>, <stationscasino.info>, <casinosstation.info> and <casinosstation.net> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 October 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 10, 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@stationcasino.org, postmaster@stationscasino.org, postmaster@stationscasino.info, postmaster@casinosstation.info and postmaster@casinosstation.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <stationcasino.org>, <stationscasino.org>, <stationscasino.info>, <casinosstation.info> and <casinosstation.net> domain names are confusingly similar to Complainant’s STATION CASINOS mark.
2. Respondent does not have any rights or legitimate interests in the <stationcasino.org>, <stationscasino.org>, <stationscasino.info>, <casinosstation.info> and <casinosstation.net> domain names.
3. Respondent registered and used the <stationcasino.org>, <stationscasino.org>, <stationscasino.info>, <casinosstation.info> and <casinosstation.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Station Casinos,
Inc., holds several trademarks registrations with the United States Patent and
Trademark Office (“USPTO”) for the STATION CASINOS mark (i.e., Reg. No.
1,864,405 issued November 22, 1994) in connection with operating several
Respondent registered the <stationcasino.org>, <stationscasino.org>, <stationscasino.info>, <casinosstation.info> and <casinosstation.net> domain names on April 2, 2008. Respondent is using the disputed domain names to operate a website that displays links to online gambling sites not affiliated with Complainant.
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 draw such inferences it 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 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’s registration of the STATION CASINOS mark with the USPTO is sufficient to establish Complainant’s rights in the marks 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.”).
Respondent’s use of
the generic top-level domains “.net,” “.org,” and “.info” is irrelevant for the
purpose of determining whether the disputed domain names are identical or
confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also
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).
The <stationcasino.org>, <stationscasino.org> and <stationscasino.info> domain names incorporate the dominate features of the STATION CASINOS mark by including both words of the mark, omitting the “s” after “casino” and/or adding an “s” after “station.” The Panel finds the disputed domain names are confusingly similar to the STATION CASINOS mark pursuant to Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
The <casinosstation.info>
and <casinosstation.net>
domain names invert the two words in the STATION CASINOS mark. Inverting words in a mark is insufficient to
avoid confusing similarity. The Panel
finds the disputed domain names are confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Reed
Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb.
Forum May 5, 2003) (“Inverting or transposing words in a trademark is not
sufficient to avoid confusing similarity because the two words create the same
commercial impression and meaning.”); see
also Playboy Enters. v. Movie Name Co.,
D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name
<channelplayboy.com> confusingly similar to the mark THE PLAYBOY
CHANNEL).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by any of the disputed domain names. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the STATION
CASINOS mark, and the WHOIS information identifies Respondent as “Mark Yunessa.”
Thus, Respondent has not established rights or legitimate interests in
the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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.”).
Respondent is using
the disputed
domain names to redirect Internet users to Respondent’s website that offers
links to online casinos in competition with Complainant. Respondent’s use of the confusingly similar
domain names to redirect Internet users interested in Complainant’s services to
a website that offers similar services is not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the
domain names pursuant to Policy ¶ 4(c)(iii).
See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum
Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar
domain name to operate a pay-per-click search engine, in competition with the
complainant, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of Complainant’s STATION CASINOS mark in the disputed domain names to redirect Internet users to Respondent’s competing website suggests that Respondent registered the disputed domain names intending to disrupt Complainant’s business. The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also 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).”).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
online gambling sites. Because
Respondent’s domain names are confusingly similar to Complainant’s STATION
CASINOS mark, Internet users accessing Respondent’s disputed domain names may
become confused as to Complainant’s affiliation with the resulting
websites. Thus, Respondent’s use of the
disputed domain names constitute bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also 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).
The Panel finds that Complainant has 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 <stationcasino.org>, <stationscasino.org>, <stationscasino.info>, <casinosstation.info> and <casinosstation.net> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 26, 2008
National
Arbitration Forum