Hard Rock Cafe International (
Claim Number: FA0902001246460
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by Zachary
D. Messa, of Johnson, Pope, Bokor, Ruppel & Burns,
LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hardrockcafelasvegas.net>, <hardrockcasinobiloxi.net>, <hardrockcasinotampa.net>, <hardrockhotelandcasino.org>, <hardrockhotellasvegas.net>, <hardrockhotelorlando.net>, <hardrocklasvegas.net>, <hardrocktampa.net>, <seminolehardrockcasino.org>, and <hardrockhollywoodcasino.com>, registered with Namesdirect.
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 February 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 9, 2009.
On February 6, 2009, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <hardrockcafelasvegas.net>, <hardrockcasinobiloxi.net>, <hardrockcasinotampa.net>, <hardrockhotelandcasino.org>, <hardrockhotellasvegas.net>, <hardrockhotelorlando.net>, <hardrocklasvegas.net>, <hardrocktampa.net>, <seminolehardrockcasino.org>, and <hardrockhollywoodcasino.com> domain names are registered with Namesdirect, and that Respondent is the current registrant of the names. Namesdirect has verified that Respondent is bound by the Namesdirect 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 February 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2009 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@hardrockcafelasvegas.net, postmaster@hardrockcasinobiloxi.net, postmaster@hardrockcasinotampa.net, postmaster@hardrockhotelandcasino.org, postmaster@hardrockhotellasvegas.net, postmaster@hardrockhotelorlando.net, postmaster@hardrocklasvegas.net, postmaster@hardrocktampa.net, postmaster@seminolehardrockcasino.org, postmaster@hardrockhollywoodcasino.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 18, 2009, 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 <hardrockcafelasvegas.net>, <hardrockcasinobiloxi.net>, <hardrockcasinotampa.net>, <hardrockhotelandcasino.org>, <hardrockhotellasvegas.net>, <hardrockhotelorlando.net>, <hardrocklasvegas.net>, <hardrocktampa.net>, <seminolehardrockcasino.org>, and <hardrockhollywoodcasino.com> domain names are confusingly similar to Complainant’s HARD ROCK mark.
2. Respondent does not have any rights or legitimate interests in the <hardrockcafelasvegas.net>, <hardrockcasinobiloxi.net>, <hardrockcasinotampa.net>, <hardrockhotelandcasino.org>, <hardrockhotellasvegas.net>, <hardrockhotelorlando.net>, <hardrocklasvegas.net>, <hardrocktampa.net>, <seminolehardrockcasino.org>, and <hardrockhollywoodcasino.com> domain names.
3. Respondent registered and used the <hardrockcafelasvegas.net>, <hardrockcasinobiloxi.net>, <hardrockcasinotampa.net>, <hardrockhotelandcasino.org>, <hardrockhotellasvegas.net>, <hardrockhotelorlando.net>, <hardrocklasvegas.net>, <hardrocktampa.net>, <seminolehardrockcasino.org>, and <hardrockhollywoodcasino.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe International (USA), Inc., operates music-related ventures, including restaurants, hotels, casinos, and theme parks. Complainant promotes and markets these ventures under the HARD ROCK mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on August 14, 2001 (Reg. No. 2,478,328). Complainant currently has over 120 restaurants worldwide, and its venues service over 30 million customers. Complainant has used the HARD ROCK mark continuously in commerce since at least as early as 1978 through its predecessors and affiliates.
Respondent registered the <hardrockcafelasvegas.net>, <hardrockcasinobiloxi.net>, <hardrockcasinotampa.net>, <hardrockhotellasvegas.net>, <hardrockhotelorlando.net>, <hardrocklasvegas.net>, and <hardrocktampa.net> domain names on May 7, 2008. Respondent registered the <hardrockhotelandcasino.org> and <seminolehardrockcasino.org> domain names on May 8, 2008. Respondent registered the <hardrockhollywoodcasino.com> domain name on February 6, 2009. The disputed domain names resolve to an online gambling website.
Respondent has been a respondent in previous UDRP proceedings in which bad faith registration and use of domain names has been found on its part, including Wynn Resorts Holdings, LLC v. Smart Answer S.A. c/o Susan Gonzales, FA 1221523 (Nat. Arb. Forum, Oct. 10, 2008), and Harrah’s License Company, LLC, Caesar’s World, Inc. v. Smart Answer S.A., D200-1515 (WIPO Nov. 27, 2008).
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 established
rights in the HARD ROCK mark through its federal trademark registration
with the USPTO. See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is
registered with the USPTO, [the] complainant has met the requirements of Policy
¶ 4(a)(i).”); see also Miller
Brewing
Complainant contends that the disputed domain names are confusingly similar to its HARD ROCK mark. The disputed domain names differ from the HARD ROCK mark in that they all include the addition of non-distinctive descriptive and/or geographic terms to the mark, as well as the addition of a generic top-level domain. The Panel finds that marks that include these changes are not sufficiently distinguished from the marks they incorporate. Therefore, the disputed domain names in this dispute are confusingly similar to the HARD ROCK mark under Policy ¶ 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends that Respondent is not commonly known
by the disputed domain names, nor has it ever been the owner or licensee
of the HARD ROCK mark. The WHOIS record
for the disputed domain name identifies Respondent as “Susana Gonzales c/o Smart Answer, S.A. c/o Hambledon N.V./ Smart Answer
S.A.,” and no evidence elsewhere indicates that Respondent has ever been
commonly known by the disputed domain names. Because Respondent has failed to
show any evidence contrary to Complainant’s contentions and the information in
the record, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v.
Kaner, FA 768859
(Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was
not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain names and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute); see also M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence
in the record).
Respondent is using the disputed domain names to link to an online gambling site. As Complainant operates casinos, the Panel finds that this use by Respondent of the disputed domain names is in competition with Complainant’s business, and is therefore neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has engaged in a pattern of incorporating marks into domain names, and consequently has been the respondent in previous UDRP proceedings in which bad faith registration and use of domain names has been found on its part, including Wynn Resorts Holdings, LLC v. Smart Answer S.A. c/o Susan Gonzales, FA 080800122523 (Nat’l Arb. Forum, October 10, 2008), and Harrah’s License Company, LLC, Caesar’s World, Inc. v. Smart Answer S.A., WIPO D2002-1515 (WIPO Nov. 27, 2008). The Panel concludes that Respondent has engaged in a pattern of bad faith registration and use of domain names, including the instant case, under Policy ¶ 4(b)(ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).
Although Complainant does not so contend, the record
suggests that Respondent has used the confusion caused by the similarity of the
HARD ROCK mark and the disputed domain names to divert Internet customers from Complainant’s
website to Respondent’s gambling website.
The Panel finds that Respondent intended to disrupt Complainant’s
business by this diversion, and therefore did register and use the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see
also
The record also suggests that Respondent has gained
commercially from the diversion, as Respondent is using the disputed domain
names to link to Respondent’s own gambling website. The Panel finds that Respondent is intentionally
using the disputed domain names for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s
registration and use in bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see also Busy
Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000)
(finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the
complainant were in the same line of business and the respondent was using a
domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to
attract Internet users to its <efitnesswarehouse.com> domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hardrockcafelasvegas.net>, <hardrockcasinobiloxi.net>, <hardrockcasinotampa.net>, <hardrockhotelandcasino.org>, <hardrockhotellasvegas.net>, <hardrockhotelorlando.net>, <hardrocklasvegas.net>, <hardrocktampa.net>, <seminolehardrockcasino.org>, and <hardrockhollywoodcasino.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 1, 2009
National
Arbitration Forum