Hard Rock Cafe International
(
Claim Number: FA0811001235573
PARTIES
Complainant is Hard Rock Cafe International (USA), Inc., represented by Zachary
D. Messa, of Johnson, Pope, Bokor, Ruppel & Burns,
LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hardrockwinery.com>, registered with
GoDaddy.com,
Inc.
PANEL
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.
Dawn Osborne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 24, 2008; the
National Arbitration Forum received a hard copy of the Complaint on November 26, 2008.
On November 24, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <hardrockwinery.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. 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 December 4, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 24, 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@hardrockwinery.com by
e-mail.
A timely Response was received and determined to be complete on December 24, 2008.
On December 31, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dawn Osborne as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is a
In addition, the Complainant obtained the domain name, <hardrock.com>
in July 1998 and has continually used the domain to feature its website.
Based on this, the Hard Rock marks have acquired goodwill and have
developed distinctiveness and are recognized as well known and high quality
goods and services which have their origin with or have been authorized by the
Complainant.
The Respondent is the owner of the domain name, <hardrockwinery.com>. On July 28, 2008, the Complainant sent the
Respondent a demand letter informing the Respondent that its use of the term
Hard Rock Wine Company and the domain name, <hardrockwinery.com>
infringed their trade marks. The
Respondent duly signed and returned the demand letter accepting the terms set
forth in the letter, including the transfer of the domain name to the
Complainant.
The Respondent failed to transfer the domain name despite the
Complainant sending a letter demanding the agreed upon transfer.
The disputed domain name consists of the Complainant’s trade mark Hard
Rock and the generic/descriptive term “winery”.
The addition of the generic term winery is not sufficient to avoid
confusion between the domain name and the Complainant’s marks. This is further
evidenced by the Complainant as shown in an email received from Margaret
Pedersen stating as follows:
“the name Hard Rock [is] rather confusing and
wanted to find out if there is any affiliation to the world-wide Hard Rock
franchise”.
The Respondent has no legitimate rights or interests in the domain
name. For instance, the demand letter
signed by the Respondent shows that the Respondent recognized that it had no
legitimate rights or interests in the domain name and without hesitation it agreed
to transfer the domain name to the Complainant.
Moreover, the Respondent’s lack of legitimate rights or interests was
evidenced when it completed the dissolution and abandonment of the name Hard
Rock Wine Company, LLC.
Further, the Respondent’s use of the domain name simply provides links
to third party websites and is therefore not a bona fide or legitimate use of the aforementioned domain name.
Having signed the demand letter, the Respondent implicitly agreed that
the registration and maintenance of the hardrockwinery.com domain was in bad
faith. Despite such recognition, the
Respondent failed to transfer the domain name to the Complainant.
Compounding the evidence of bad faith the Respondent has made attempts
to sell the domain name to the Complainant for $27,000. This sum is well in excess of the
Respondent’s out of pocket costs attributable to the registration of the domain
name.
B. Respondent
The Respondent did not provide a formal response to the Complainant’s
contentions, but wrote a letter to NAF saying he had contacted GoDaddy to
transfer the name to the Complainant and inviting the Complainant to contact
GoDaddy.
FINDINGS
The Panelist finds that the
Complainant does have trade mark rights which are confusingly similar to the
Domain Name for the purposes of the Policy the Respondent does not have rights
or a legitimate interest in the Domain Name which was registered and used in
bad faith.
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.
Apart from the .com suffix which is
not taken into account for the purposes of the Policy, the Domain Name consists
of the Complainant’s HARD ROCK registered mark and the generic word “winery”.
The addition of the word “winery” does not serve to distinguish the Domain Name
from the Complainant’s mark. See Arthur Guinness Son &
Co. (
The Respondent has
not filed a Response. The Complainant has indicated that a demand letter was
sent to the Respondent, where upon the Respondent signed and returned the letter
stating it would transfer the domain name to the Complainant. The Respondent did not. The Respondent has indicated to NAF that it
has contacted GoDaddy to transfer the name but this does not appear to have
taken place. The Complainant has also
indicated that it has not endorsed the Respondent in any way and the
Respondent’s business has no connection with the Complainant”. The Respondent
is not commonly known by a name equivalent to the Domain Name. Complainant contends that Respondent’s
disputed domain name resolves to a website displaying third-party links to
unrelated websites. This type of use of a confusingly similar domain name
is neither a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See
Paragraph 4 (b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“circumstances indicating [the Respondent] has registered or [has] acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of [its] documented out of pocket costs directly related to the Domain Name.”
“by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
The Respondent requested $27,000 to
transfer the name to the Complainant. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain
name for $2,000 sufficient evidence of bad faith registration and use under
Policy ¶ 4(b)(i)); see
also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's general offer of the disputed domain name registration
for sale establishes that the domain name was registered in bad faith under Policy
¶ 4(b)(i).”).
The Domain Name has been used to point to third party links not connected with the Complainant. As such it appears that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or the products or services on its web site.
As such the Complainant has proven that the Respondent has registered and used the Domain Name in bad faith under Paragraphs 4 (b) (i) and (iv) of the Policy.
Further, the
criteria in
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 <hardrockwinery.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dawn Osborne Panelist
Dated: 14 January 2009
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