Station Casinos, Inc. v. Ray C. Orchard
Claim Number: FA0905001261554
Complainant is Station Casinos, Inc. (“Complainant”), represented by Erin
E. Lewis, of Brownstein Hyatt Farber Schreck,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <fiestastationcasino.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2009.
On May 8, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <fiestastationcasino.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 May
11, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 1, 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@fiestastationcasino.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fiestastationcasino.com> domain name is confusingly similar to Complainant’s FIESTA and STATION CASINOS marks.
2. Respondent does not have any rights or legitimate interests in the <fiestastationcasino.com> domain name.
3. Respondent registered and used the <fiestastationcasino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides gaming, hotel, and entertainment
services under the FIESTA and STATION CASINOS marks. Complainant registered the STATION CASINOS
mark with the United States Patent and Trademark Office (“USPTO”) on November
15, 1994 (Reg. No. 1,863,360).
Complainant registered the FIESTA mark with the USPTO on March 23, 1999
(Reg. No. 2,234,239). Complainant has
used the STATION CASINOS mark continuously in commerce since at least as early
as 1984 to promote its casino properties throughout the
Respondent registered the <fiestastationcasino.com> domain name on February 20, 2001. The disputed domain name does not resolve to any active website.
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 rights in
the FIESTA mark through its trademark registration with the USPTO. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27,
2007) (finding that the complainant’s federal trademark registrations for the
CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights
in the mark pursuant to Policy ¶ 4(a)(i)); see
also
The Panel also finds that Complainant has established rights in the STATION CASINOS mark through its 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 AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that the <fiestastationcasino.com> domain name is confusingly similar to its FIESTA and STATION CASINOS marks. The disputed domain name combines the two marks, and only differs from that combination in two other ways: (1) the letter “S” has been deleted from the end of the STATION CASINOS mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added to end of the combination of the two marks. The Panel finds that where a domain name has merely combined two marks which are both held by a Complainant, that does not diminish the capacity of the disputed domain name to confuse Internet users. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). The Panel also finds that deleting a single letter fails to diminish the likelihood of confusion with a mark, as does the addition of a gTLD. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); 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). Therefore, in light of the inconsequentiality of the differences between Complainant’s marks and the disputed domain name, the Panel finds that the <fiestastationcasino.com> domain name is confusingly similar to the FIESTA and STATION CASINOS marks.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <fiestastationcasino.com> 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, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant contends that Respondent is not commonly known
by the <fiestastationcasino.com>
domain name nor has it ever been the owner or licensee of either the FIESTA
mark or the STATION CASINOS mark. The
WHOIS record for the disputed domain name lists Respondent as “Ray C. Orchard.” Because there is no evidence contrary to
Complainant’s contentions that Respondent is not known by any variant on either
the FIESTA mark or the STATION CASINOS mark, the Panel finds that Respondent is
not commonly known by the <fiestastationcasino.com>
domain name pursuant to
Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also 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).
The <fiestastationcasino.com> domain name does not resolve to an active website.
Complainant contends that
Respondent has failed to make active use of the disputed domain name for over
seven years, and that this failure to
use the disputed domain name is not a bona
fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel agrees, and finds that Respondent’s
failure to make active use of the disputed domain name is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy
¶ 4(a)(ii). See Bloomberg L.P. v. SC Media Servs. &
Info. SRL, FA 296583
(Nat. Arb. Forum Sept. 2, 2004)
(“Respondent is wholly appropriating Complainant’s mark and is not using the
<bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an
active use] 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 Thermo
Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding
that the respondent’s non-use of the disputed domain names demonstrates that
the respondent is not using the disputed domain names for a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel agrees with
previous panels that a finding of bad faith is not limited to the factors set
forth in ¶ 4(b). See 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.”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples
[of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
As established above,
the <fiestastationcasino.com>
domain name does not resolve to an
active website. Complainant
contends that Respondent has failed to make active use of the disputed domain
name for over seven years, and that
this failure to make active use of the disputed domain name is evidence
that Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). The Panel agrees, finding that Respondent’s
failure to make active use of the disputed domain name in a seven-year
timeframe is evidence that Respondent has registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech,
FA 893427 (Nat. Arb. Forum Feb. 28,
2007) (concluding that the respondent’s failure to make active use of its
domain name in the three months after its registration indicated that the
respondent registered the disputed domain name in bad faith); see also 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).
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 <fiestastationcasino.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 16, 2009
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