Hard
Rock Cafe International (
Claim Number: FA0910001289538
Complainant is Hard
Rock Cafe International (USA), Inc. (“Complainant”), represented by Zachary D. Messa of Johnson, Pope, Bokor,
Ruppel & Burns, LLP, Florida, USA.
Respondent is Tasos Papanastasiou
and Interactive Play Net (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hardrockbingo.com> and <hardrockbingos.com>, registered with domainmonster.com.
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 October 14, 2009; the National Arbitration Forum received a hard copy of the Complaint October 16, 2009.
On October 22, 2009, domainmonster.com confirmed by e-mail to the National Arbitration Forum that the <hardrockbingo.com> and <hardrockbingos.com> domain names are registered with domainmonster.com and that Respondent is the current registrant of the names. [D]omainmonster.com verified that Respondent is bound by the domainmonster.com 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 October 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@hardrockbingo.com and postmaster@hardrockbingos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <hardrockbingo.com> and <hardrockbingos.com>, are confusingly similar to Complainant’s HARD ROCK mark.
2. Respondent has no rights to or legitimate interests in the <hardrockbingo.com> and <hardrockbingos.com> domain names.
3. Respondent registered and used the <hardrockbingo.com> and <hardrockbingos.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Café International (USA), Inc., is in the business of leisure and entertainment through different music-related ventures including: restaurants, hotels, casinos, merchandising, theme parks, and live music events. There are more than 120 Hard Rock Café restaurants worldwide. Complainant has operated under its HARD ROCK mark since 1978. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HARD ROCK mark (e.g., Reg. No. 2,478,328 issued August 14, 2001).
Respondent registered the <hardrockbingo.com> and <hardrockbingos.com> domain names June 18, 2009. The disputed domain names resolve to websites that feature commercial links resolving to Complainant and Complainant’s competitors in the leisure and entertainment 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.
Complainant contends it has established rights in the HARD
ROCK mark. Previous panels have found
that trademark registration with a federal trademark authority is sufficient to
establish rights in a mark.
The Panel finds that Complainant established rights in the HARD ROCK mark under Policy ¶ 4(a)(i) through Complainant’s trademark registrations.
Complainant asserts that Respondent’s <hardrockbingo.com> and <hardrockbingos.com> domain names are confusingly similar to Complainant’s HARD ROCK mark. The disputed domain names contain Complainant’s entire HARD ROCK mark, subtract the space within the mark, add one of the descriptive terms “bingo” or “bingos,” which describes Complainant’s casino business, and add the generic top-level domain (“gTLD”) “.com.” The Panel finds the subtraction of a space and the addition of a descriptive term fail to adequately distinguish the disputed domain names from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also finds that the addition of a gTLD is irrelevant under a Policy ¶ 4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <hardrockbingo.com> and <hardrockbingos.com> domain names are confusingly similar to Complainant’s HARD ROCK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <hardrockbingo.com> and <hardrockbingos.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <hardrockbingo.com> and <hardrockbingos.com> domain names. However, the Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent offered
no evidence, and no evidence in the record suggests that Respondent is commonly
known by the <hardrockbingo.com>
and <hardrockbingos.com>
domain names. Complainant asserts that Respondent is not
authorized to use the HARD ROCK mark.
The WHOIS information identifies Respondent as “Tasos Papanastasiou and
Interactive Play Net.” Therefore, the
Panel finds that Respondent has not established rights to or legitimate
interests in the <hardrockbingo.com>
and <hardrockbingos.com>
domain names pursuant to Policy ¶
4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name).
Moreover, Respondent is using the <hardrockbingo.com> and <hardrockbingos.com>
domain names to resolve to a website
featuring hyperlinks to Complainant and Complainant’s competitors in the
leisure and entertainment business. The
Panel finds this use of the confusingly similar disputed domain names 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 under Policy ¶ 4(c)(iii). See
Jerry Damson, Inc. v.
The Panel finds that
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s <hardrockbingo.com> and <hardrockbingos.com>
domain names resolve to a website containing hyperlinks to Complainant and
Complainant’s competitors in the leisure and entertainment industry. Internet users interested in Complainant’s entertainment
ventures may instead find themselves diverted to Complainant’s competitors in
the leisure and entertainment business because of Respondent’s use of the
confusingly similar disputed domain names.
The Panel finds that Respondent’s use of the disputed domain names
disrupts Complainant’s leisure and entertainment business, and that such use
supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See
Am. Airlines, Inc. v.
Furthermore, Complainant contends that Respondent receives click-through fees from Respondent’s use of the aforementioned hyperlinks. The evidence before the Panel supports an inference that Respondent attempts to commercially benefit from the Internet user’s confusion as to Complainant’s affiliation and sponsorship of the disputed domain names and resolving websites. The Panel finds that Respondent’s use of the confusingly similar <hardrockbingo.com> and <hardrockbingos.com> domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
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 <hardrockbingo.com> and <hardrockbingos.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 7, 2009.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum