Isle of Capri Casinos, Inc. v. Spike Friedman (3)
Claim Number: FA0909001286679
Complainant is Isle
of Capri Casinos, Inc. (“Complainant”), represented by Christopher W. Schneider,
of
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ladyluckcasino.com>, registered with Dotregistrar.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 30, 2009.
On September 29, 2009, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <ladyluckcasino.com> domain name is registered with Dotregistrar and that Respondent is the current registrant of the name. Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 October 2, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of October 22, 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@ladyluckcasino.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. However, the Panel notes that Respondent, Spike Friedman, sent correspondence to Dotster Inc which Dotster has forwarded to the Forum. In the correspondence to Dotster, Respondent claimed that when he registered the disputed domain, there was no Lady Luck Casino in existence, nor any registration for Lady Luck Casino. In the correspondence, Respondent referenced the language of his earlier June 11, 2009 correspondence to Complainant, which is Complainant’s Exhibit H. Although the Panel will consider Complainant’s Exhibit H as part of the record, the Panel declines to consider Respondent’s correspondence to Dotster as a Response in this proceeding.
On October 29, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <ladyluckcasino.com> domain name is confusingly similar to Complainant’s LADY LUCK mark.
2. Respondent does not have any rights or legitimate interests in the <ladyluckcasino.com> domain name.
3. Respondent registered and used the <ladyluckcasino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Isle of Capri Casinos, Inc., is a developer,
owner, and operator of casinos and related lodging and entertainment facilities
in the
Respondent registered the <ladyluckcasino.com> domain name on March 27, 2002. The disputed domain name currently resolves to a website displaying the message “This website may be for sale by its owner.” The disputed domain name previously resolved to a website containing links to Complainant’s competitors. The disputed domain name has also been put up for online auction.
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 sufficient rights in the LADY LUCK mark through its, and its predecessor-in-interest’s, registration with the USPTO (Reg. No. 1,165,866 issued August 18, 1981) pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).
Complainant contends that
Respondent’s <ladyluckcasino.com>
domain name is confusingly similar to its LADY LUCK mark. The <ladyluckcasino.com> domain name differs from Complainant’s mark in three ways:
(1) the term “casino,” which is descriptive of Complainant’s business, has been
added to the mark; (2) the space has been removed from the mark; and (3) the
generic top-level domain (gTLD) “.com” has been added. The Panel finds that adding a descriptive
term to a mark does not eliminate or reduce the likelihood of confusion between
a domain name and that mark. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept.
14, 2000) (finding that combining the generic word “shop” with the
complainant’s registered mark “llbean” does not circumvent the complainant’s
rights in the mark nor avoid the confusing similarity aspect of the ICANN
Policy); see also Miller Brewing Co. v.
Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding
that the <millerbeers.com> domain name was confusingly similar to the
complainant’s MILLER mark, because “[t]he addition of a descriptive term that
describes Complainant’s business to Complainant’s registered mark, does not
remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The Panel also
finds that neither the removal of a space nor the addition of the gTLD “.com”
does anything to distinguish a domain name from the incorporated mark for the
purposes of Policy ¶ 4(a)(i). See Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the
<wellfargobank.com> domain name is confusingly similar to the WELLS FARGO
mark, because altering the mark by one letter and adding “…the word ’bank,’ a word that both describes
the type of business that Complainant engages in and is included in its
<wellsfargobank.com> domain name, does not alleviate any confusing
similarity.”); 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, and is therefore confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <ladyluckcasino.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). Respondent has not responded in this case; however, the Panel will analyze the facts of this case under Policy ¶ 4(c) to determine if Respondent has any rights or legitimate interests. 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 <ladyluckcasino.com> domain name nor has it ever been the
owner or licensee of the LADY LUCK mark.
The WHOIS listing for the disputed domain name lists Respondent as
“Spike Friedman (3).” Respondent also
has failed to present any evidence that is contrary to Complainant’s
contentions. The Panel therefore finds
that Respondent is not commonly known by the <ladyluckcasino.com> domain name 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 Am.
W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Complainant contends that the website resolving from the <ladyluckcasino.com> domain name previously contained links to third-party websites offering casino services that compete with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to direct Internet users to third-parties competing with Complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <ladyluckcasino.com> domain name under Policy ¶ 4(c)(iii). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not 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)).
Complainant also contends that Respondent is currently offering the disputed domain name for sale, both on the website resolving from the disputed domain name, and on an online auction. The Panel finds that Respondent’s willingness to part with the disputed domain name for an amount in excess of Respondent’s out-of-pocket costs is evidence that Respondent is not using the disputed domain name for 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). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has offered, and is currently offering, the <ladyluckcasino.com> domain name in exchange for more than the out-of-pocket costs to Respondent. The Panel finds that Respondent’s offer to sell the disputed domain name for more than its out-of-pocket costs, both at auction and in its general offer to sell the disputed domain name on the resolving website, is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); 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).”).
Complainant also contends that Respondent intended to
disrupt Complainant’s business by further diverting the confused Internet
customers to the competing third-party websites. The Panel finds that Respondent’s prior disruption
of Complainant’s business, by its diversion of Internet customers to competing
websites, is evidence that Respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel,
FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name
confusingly similar to Complainant's mark to divert Internet users to a
competitor's website. It is a reasonable inference that Respondent's purpose of
registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii)
[and] (iv).”).
Complainant contends that Respondent was previously diverting Internet customers from Complainant’s website to Respondent’s website resolving from the confusingly similar disputed domain name, registered on March 27, 2002. Complainant also contends that Respondent was gaining commercially from the prior diversion of Internet customers, through the “click-through” fees that Respondent presumably collected every time the Internet customers clicked on the third-party links. The Panel finds that Respondent’s commercial gain from the diversion of confused Internet customers is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
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 <ladyluckcasino.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 3, 2009
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