Rick's Cabaret International Inc. v. Domain Administrator
Claim Number: FA0904001259936
Complainant is Rick's
Cabaret International Inc. (“Complainant”), represented by Brenda K.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <clubonyx.com>, registered with eNom, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On May 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 2, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <clubonyx.com> domain name is identical to Complainant’s CLUB ONYX mark.
2. Respondent does not have any rights or legitimate interests in the <clubonyx.com> domain name.
3. Respondent registered and used the <clubonyx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rick's Cabaret International Inc., is the owner
of the CLUB ONYX mark, registered with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 3,515,375 issued
Respondent registered the <clubonyx.com> domain
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.
The Panel finds that Complainant has established its rights
in the CLUB ONYX mark based on its registration of the mark with the USPTO
under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum
Complainant alleges that Respondent’s disputed domain name
is identical to Complainant’s CLUB ONYX mark.
Respondent’s domain name incorporates Complainant’s CLUB ONYX mark in
its entirety, with the deletion of the space between the terms and the addition
of the generic top-level domain name “.com.”
The Panel finds that such alterations fail to sufficiently distinguish
Respondent’s <clubonyx.com> domain name from Complainant’s CLUB
ONYX mark under Policy ¶ 4(a)(i). See
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks all rights and legitimate interests in the disputed domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must present a prima facie case in support of its allegations, and then the burden shifts to Respondent. Respondent then has to put forth evidence to bring themselves within the purview of Policy ¶ 4(c), establishing rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). In these proceedings, Complainant has presented a sufficient prima facie case and Respondent has failed to respond to Complainant’s allegations. From this failure, the Panel may infer that Respondent lacks any rights or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel now chooses to evaluate the evidence to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the <clubonyx.com>
domain name. The WHOIS information lists Respondent as “Domain
Administrator,” which suggests that Respondent is not commonly known by the <clubonyx.com>
domain name. Moreover, there is no evidence in the record
to suggest otherwise. The Panel
therefore concludes that Respondent is not commonly known by the disputed
domain name under Policy ¶ 4(c)(ii). See Braun Corp. v.
Loney, FA 699652 (Nat.
Arb. Forum July 7, 2006) (concluding that the respondent
was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
The disputed domain name resolves to a website containing sponsored click-through links, which further resolve to various commercial websites. Complainant alleges that Respondent is generating click-through fees and such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. The Panel concludes that Respondent’s use of the identical disputed domain name to capitalize on Complainant’s mark does not satisfy Policy ¶ 4(c)(i) or (iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was 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 pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant has satisfied Policy ¶ 4(a)(ii).
In order for Complainant to succeed under Policy ¶ 4(a)(iii), it must establish that Respondent registered the
disputed domain name in bad faith. The
WHOIS information provided states that Respondent originally registered the
disputed domain name on
Complainant has not satisfied Policy ¶ 4(a)(iii).
For the reasons stated above, this Panel concludes that the requested relief should be DENIED.
Accordingly, it is Ordered that the domain name <clubonyx.com> not be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 18, 2009
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