OpBiz, LLC d/b/a Planet Hollywood Resort & Casino v. Steven Davis
Claim Number: FA0810001229112
Complainant is OpBiz,
LLC d/b/a Planet Hollywood Resort
& Casino (“Complainant”), represented by Lauri S. Thompson, of Greenberg Traurig, LLP,
REGISTRAR
The domain names at issue are <planethollywoodtowers.com> and <planethollywoodtowersbywestgate.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 13, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <planethollywoodtowers.com> and <planethollywoodtowersbywestgate.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@planethollywoodtowers.com and postmaster@planethollywoodtowersbywestgate.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <planethollywoodtowers.com> and <planethollywoodtowersbywestgate.com> domain names are confusingly similar to Complainant’s PLANET HOLLYWOOD mark.
2. Respondent does not have any rights or legitimate interests in the <planethollywoodtowers.com> and <planethollywoodtowersbywestgate.com> domain names.
3. Respondent registered and used the <planethollywoodtowers.com> and <planethollywoodtowersbywestgate.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, OpBiz LLC, has been the owner and operator of
the “Planet Hollywood Resort & Casino” in
Complainant is the licensee of three trademarks registered with
the United States Patent and Trademark Office:
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 has shown that it is the licensee of the
federally-registered
Complainant contends that Respondent’s <planethollywoodtowers.com> and <planethollywoodtowersbywestgate.com>
domain names are confusingly
similar to the foregoing marks. Complainant
contends that the disputed domain names merely add the generic terms “towers,”
“by,” and/or “westgate;” terms which are directly related to Complainant’s
business. In furtherance of this
contention, Complainant submitted evidence that it began using the
Accordingly, the Panel finds that these circumstances
sufficiently establish that Respondent’s <planethollywoodtowers.com> and <planethollywoodtowersbywestgate.com>
domain names are confusingly similar to the
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names. The Panel finds that this burden has been met and that
it is now incumbent upon Respondent to prove that it has rights or legitimate
interests in the disputed domain names. See
Respondent has failed to reply to the Complaint. Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names. Nonetheless, the Panel will proceed to examine the record in consideration of the elements listed under Policy ¶ 4(c). See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
The WHOIS information in the record identifies Respondent as
“Steven Davis.” Additionally, Complainant contends that at no time has it
authorized or otherwise granted permission to Respondent to use its marks in
any way. Without any further information, the Panel finds that Respondent is
not commonly known by either of the disputed domain names pursuant to Policy ¶
4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there is no evidence in the record indicating that
the respondent is commonly known by the disputed domain name); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Both of the disputed domain names have been registered for
more than two years and Respondent has failed to make any active use of the
disputed domain names. This long period of inactivity demonstrates to the Panel
that Respondent has made no bona fide
offering of goods or services with the disputed domain names pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. &
Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb.
Forum Apr. 20, 2005) (“The Panel finds that the [inactive] holding of a domain
name that is identical to Complainant’s mark is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii).”); see also Bloomberg L.P. v. Sandhu, FA
96261 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel considers the elements listed under Policy ¶ 4(b)
to be non-exclusive and only illustrative of examples of bad faith. The Panel
is free to look to the totality of the circumstances in making its
determination under Policy ¶ 4(a)(iii). See
Digi Int’l Inc. v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets
forth certain circumstances, without limitation, that shall be evidence of
registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat.
Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a
complainant prove that domain names are being used in bad faith does not
require that it prove in every instance that a respondent is taking positive
action. Use in bad faith can be inferred from the totality of the circumstances
even when the registrant has done nothing more than register the names.”).
Two factors are most compelling in this determination: (1) that Respondent has failed to make any active use of the disputed domain names for over two years, and (2) that Respondent has not provided any evidence of demonstrable plans to use either of the disputed domain names. Without any further information, the Panel finds that these factors compel the Panel to conclude that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use); Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Furthermore, the
Panel also takes note of the date upon which the domain names were
registered—January 2006. This was the
same month that construction began on the first of the three towers to be part
of the PH Towers by Westgate, a partnership between Planet Hollywood Resort
& Casino and Westgate Resorts. Previous
panels have considered the timing when a disputed domain name was registered to
indicate opportunistic bad faith. Once again, without any further information
in the record, the Panel considers this to be additional evidence of
Respondent’s bad faith registration and use of the disputed domain names
pursuant to Policy ¶ 4(a)(iii). See Thermo
Electron Corp. v. Xu, FA
713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as
to bad faith, the fact that registration was on the same day the news leaked
about the merger, which was put in evidence, is a compelling indication of bad
faith that Respondent has to refute and which he has failed to do. The Panel finds a negative inference from
this.”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The
Respondent took advantage of the public announcement that Tandy Corporation was
changing its name to RadioShack by registering the domain names on the same day
as a public announcement of a company’s name change. This is also evidence of bad faith.”).
The Panel concludes 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 <planethollywoodtowers.com> and <planethollywoodtowersbywestgate.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: December 8, 2008
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