National Arbitration Forum

DECISION

Hard Rock Cafe International (USA), Inc. v. Total Marketing Services, Inc. c/o Sandra Pinchiff

Claim Number: FA0910001290738

PARTIES

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 Total Marketing Services, Inc. c/o Sandra Pinchiff (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <casinohardrock.com>, registered with Enom, Inc.

PANEL

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.

Richard DiSalle as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2009. On October 27, 2009, Complainant filed an Amended Complaint.

On October 22, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <casinohardrock.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 16, 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@casinohardrock.com by e-mail.

A timely Response was received and determined to be complete on November 16, 2009.

On November 23, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant Hard Rock Café International (USA), Inc. (“HRC”) is a Florida corporation that has been engaged in the business of leisure and entertainment using its “HARD ROCK” mark in the United States since at least as early as 1978, through its predecessors and affiliates. HRC successfully expands its brand and operations through a myriad of music-related ventures including, but not limited to, restaurants, hotels, casinos, merchandising, theme parks and live music events. To date there are over 120 HARD ROCK CAFÉ restaurants worldwide. Hard Rock venues service over 30 million customers.

Essential to the success of its brand is the family of U.S. federally and internationally registered trademarks and service marks that include, HARD ROCK^®, HARD ROCK CAFÉ^®, HARD ROCK HOTEL^®, HARD ROCK CASINO^®, HARD ROCK HOTEL AND CASINO^® and dozens of other registered and common law trademarks, trade names, service marks and logos.(collectively “Family of Marks”). HRC and/or its authorized licensees have continuously used the HARD ROCK HOTEL^®, HARD ROCK HOTEL & Design and HARD ROCK HOTEL AND CASINO^® marks since at least as early as March 10, 1995. As a result, significant resources are devoted to increasing the brand awareness of the Family of Marks.

In addition to being the focus of significant advertising expenditures, HRC’s HARD ROCK CAFÉ restaurants, hotels and casinos are the subject of numerous articles in newspapers and magazines throughout the world.

HRC also fosters brand awareness through broadcast media, radio publicity and television. For example, in September 1988, an hour long television program called “Coca-Cola Presents Live: The Hard Rock” aired on network television. The special was produced by legendary producer Lorne Michaels and featured actor Dan Ackroyd. Also, as part of the 20^th anniversary of Earth Day in 1990, Hard Rock Café produced a documentary entitled SAVE THE PLANET, that also aired on network television and featured numerous celebrities seeking to draw attention to the global pollution and over-population crises.

Respondent registered the domain name, casinohardrock.com (“Disputed Domain Name”) on May 23, 2002. Despite registering the Disputed Domain Name over seven years ago, the Disputed Domain Name is parked and resolves to a landing page containing Sponsored Links of various entities wherein the internet user can book reservations for competing Las Vegas hotel and casinos. Complainant sent Sandra Pinchiff, the Disputed Domain Name’s registrant, two cease and desist notices demanding that Respondent immediately stop using the Disputed Domain Name and transfer the domain name to Complainant. Respondent did not respond to Complainant’s cease and desist notices.

Respondent has no rights or legitimate interest in the Disputed Domain Name, because Complainant had registered and been using the Family of Marks, including Hard Rock Casino^®, Hard Rock Hotel & Casino^®, and Hard Rock Hotel & Casino plus design well before Respondent registered the Disputed Domain Name. In fact, at least one of the four Hard Rock Hotel & Casinos (Hard Rock Hotel & Casino Las Vegas) was open and conducting business. Pursuant to Hard Rock Café Int’l, Inc. v. Vision Star, Int’l, Inc., this evidence alone is sufficient to support the finding that Respondent has no rights or legitimate interest in the Disputed Domain Name.

The absence of Respondent’s rights or legitimate interest in the Disputed Domain Name is further evidenced by its incorporation of Complainant’s famous Family of Marks into such domain which Respondent knew or should have known were owned and used by Complainant.

In addition, the Disputed Domain Name is parked and resolves to a website containing sponsored links to Complainant’s competitors from which Respondent receives a click through fee.

The Disputed Domain Name was registered in bad faith, because it resolves to a passive parked website used by Respondent to realize click through revenues. Furthermore, it is apparent that Respondent knew of Complainant’s Family of Marks before registering the Disputed Domain Name as evidenced by Complainant’s strong brand recognition in the United States and throughout the world, as well as, the presence of the Las Vegas Hard Rock Café and Casino which had been operating in Las Vegas since 1995, long before the Respondent registered the Disputed Domain Name containing links to hotels and casinos in the Las Vegas area. With this knowledge, Respondent registered the Disputed Domain Name containing Complainant’s “Hard Rock” mark in, its entirety. to advertise the same goods and services, namely hotel and casino services, as Complainant to pawn off the good will and brand recognition inherent in Complainant’s family of marks.

B. Respondent

Respondent has not responded to the claim that its mark is identical or confusing similar.

The domain name casinohardrock.com resolves to a parking page created and provided by DirectNIC, a domain name registrar. The page contains links related to Las Vegas as well as information and services provided by DirectNIC such as domain name sales, registrations, hosting, etc. Respondent does not derive any commercial benefit from this parking page. Specifically, Respondent does not receive compensation for click through fees, the domains for sale are not domains owned by Respondent, and Respondent receives no compensation for the sale of services by DirectNIC.

The primary issue here is one of non-commercial use. Respondent derives no commercial benefit from the parking page on the subject domain and Respondent submits that no reasonable viewer of that parking page would be misled into thinking they were buying Complainant’s goods or services or that the page is provided by Complainant and tarnishes any trademark or service of Complainant.

The subject domain was not registered primarily for the purpose of selling it to the Complainant or a competitor. There is no evidence that Respondent has ever attempted to sell the domain to Complainant or a competitor in all the years since the domain was registered in 2002.

Respondent has not engaged in any pattern of registration to prevent Complainant from using any mark it owns in a corresponding domain name. There is no evidence that Respondent has engaged in any such pattern of registration.

The subject domain was not registered primarily to disrupt the business of a competitor. Complainant and Respondent are not competitors and it does not appear from the complaint in this case that Complainant is contending that the subject domain was registered primarily to disrupt the business of a competitor.

Respondent has not used the domain to intentionally attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.

FINDINGS

(1) the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar

to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

As noted, Respondent does not dispute the claim that its mark is identical or confusingly similar, and the Panel so finds.

Rights or Legitimate Interests

The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).

Because Respondent has failed to show any evidence contrary to Complainant’s contentions that Respondent is not commonly known by the <casinohardrock.com> domain name, nor has it ever been the owner or licensee of the HARD ROCK mark and is not known by any variant of the HARD ROCK mark, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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.”); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

The Panel also finds that Respondent has not been using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).

Registration and Use in Bad Faith

The Panel finds that Respondent did disrupt Complainant’s business, and therefore did register and use the <casinohardrock.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).

The Panel finds that Respondent is intentionally using the disputed domain name for commercial gain through creating a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), the Panel finds that this use is also evidence of Respondent’s registration and use in bad faith. 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 Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

DECISION

The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <casinohardrock.com> domain name be TRANSFERRED from Respondent to Complainant.

Richard DiSalle, Panelist
Dated: December 16, 2009

National Arbitration Forum