Aztar Corporation v. Hambledon N.V./ Smart Answer
Claim Number: FA0904001257917
Complainant is Aztar Corporation (“Complainant”), represented by Kelley
L. Nyquist of Brownstein Hyatt
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <casinoaztar.net>, registered with Namesdirect.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 16, 2009; the National Arbitration Forum received a hard copy of the Complaint April 21, 2009.
On April 16, 2009, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <casinoaztar.net> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect verified that Respondent is bound by the Namesdirect registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 20, 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@casinoaztar.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <casinoaztar.net>, is confusingly similar to Complainant’s AZTAR mark.
2. Respondent has no rights to or legitimate interests in the <casinoaztar.net> domain name.
3. Respondent registered and used the <casinoaztar.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant and its parent company, Tropicana Entertainment
Holdings, own and operate ten casinos and resorts in the
Respondent registered the <casinoaztar.net> domain name March 17, 2009. The disputed domain name resolves to a website that features down-loadable gaming software and pay-per-click links to gaming websites that compete with Complainant’s business.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant established sufficient rights in the AZTAR mark through registration of the mark with the USPTO 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 Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that
Respondent’s <casinoaztar.net> domain name is confusingly similar to its AZTAR mark. The <casinoaztar.net> domain name differs from Complainant’s mark in two ways:
(1) the descriptive term “casino” has been added to the beginning of the mark;
and (2) the generic top-level domain (gTLD) “.net” has been added. The Panel finds that neither the addition of
a descriptive term nor the addition of the gTLD “.net” sufficiently
distinguishes a domain name from the incorporated mark for the purposes of
Policy ¶ 4(a)(i).
See Caterpillar Inc.
v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain
names <caterpillarparts.com> and <caterpillarspares.com> were
confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER
DESIGN because “the idea suggested by the disputed domain names and the
registered trademarks is that the goods or services offered in association with
[the] domain name are manufactured by or sold by the Complainant or one of the
Complainants [sic] approved distributors. The disputed trademarks contain one
distinct component, the word Caterpillar”); see
also Brambles Indus. Ltd. v. Geelong
Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain
name <bramblesequipment.com> is confusingly similar because the
combination of the two words "brambles" and "equipment" in
the domain name implies that there is an association with the complainant’s
business); see also Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name
is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that because these
changes do not minimize or eliminate the resulting likelihood of confusion,
Respondent’s disputed domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <casinoaztar.net> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent is not commonly known
by the <casinoaztar.net>
domain name and that Respondent has never been the owner or licensee of the
AZTAR mark. The WHOIS listing for the
disputed domain name lists Respondent as “Hambledon
N.V./ Smart Answer
At the website that
resolves from the <casinoaztar.net>
domain name, Respondent is offering
goods and services and linking to websites that compete with Complainant’s
business. The Panel finds that the
competitive nature of Respondent’s use of the
<casinoaztar.net> domain name renders this use as neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <casinoaztar.net>
domain name under Policy
¶ 4(c)(iii). See 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.”); 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 satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent is diverting Internet
customers from Complainant’s website to Respondent’s website that resolves from
the disputed domain name, through the confusion caused by the similarity
between the AZTAR mark and the <casinoaztar.net>
domain name. Complainant also contends
that Respondent intended to disrupt Complainant’s business by diverting
confused customers to Respondent’s website, as well as those of third parties,
where they would mistakenly think they were downloading Complainant’s
products. Respondent’s disruption of
Complainant’s business by offering competing goods and services compels the
Panel to find that Respondent has registered and used the disputed domain name
in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum
Oct. 30, 2006) (concluding that the respondent registered and used the
<sportlivescore.com> domain name in order to disrupt the complainant’s
business under the LIVESCORE mark because the respondent was maintaining a
website in direct competition with the complainant).
Complainant also contends that
Respondent is gaining commercially from promoting competing goods and services
on the website that resolves from the <casinoaztar.net>
domain name, and collecting click-through fees from the third-party websites. The Panel finds that Respondent’s commercial
gain is evidence of Respondent’s registration and use of the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iv)). See
AOL LLC v. AIM Profiles, FA 964479
(Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from
the likelihood of confusion between the complainant’s AIM mark and the
competing instant messaging products and services advertised on the
respondent’s website which resolved from the disputed domain name); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA
536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers
that Respondent receives click-through fees for diverting Internet users to a
competing website. Because Respondent’s
domain name is identical to Complainant’s
The Panel finds that Complainant satisfied the elements of ICANN 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 <casinoaztar.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 5, 2009.
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