Hard
Rock Cafe International (
Claim Number: FA1001001305257
Complainant is Hard
Rock Cafe International (USA) Inc. (“Complainant”), represented by P. Jay Hines, of Cantor Colburn LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com>, registered with Directnic, Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 28, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names are registered with Directnic, Ltd and that Respondent is the current registrant of the names. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd 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 January 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@hardrockco.net, postmaster@hardrockcolorado.net, postmaster@hardrockhotelcolorado.net, postmaster@hardrockcentralcity.net, postmaster@hardrockcentralcity.com, postmaster@hardrockcasinocentralcity.net, and postmaster@hardrockcasinocentralcity.com. Also on January 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. Respondent’s <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names are confusingly similar to Complainant’s HARD ROCK mark.
2. Respondent does not have any rights or legitimate interests in the <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names.
3. Respondent registered and used the <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe International (USA) Inc., operates restaurants, hotels, casinos, merchandising, and live music events related to music. Complainant offers these music related products and services under its HARD ROCK mark. Complainant holds numerous 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 <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names on September 20, 2009. The disputed domain names resolve to websites featuring commercial search engines and hyperlinks associated with Complainant’s competitors in the different music-related industries Complainant operates in.
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.
Complainant has registered its HARD ROCK mark with the USPTO (e.g., Reg. No. 2,478,328 issued August 14, 2001). The Panel finds that Complainant has established rights in the HARD ROCK mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant alleges that Respondent’s <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>,
<hardrockcentralcity.net>, <hardrockcentralcity.com>,
<hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com>
domain names are confusingly similar to Complainant’s HARD ROCK
mark. Respondent completely incorporates
Complainant’s mark into the disputed domain names after removing the space
separating the terms in the mark. The
disputed domain names also add generic or geographic terms to the mark, such as
“co,” “
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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.”).
Complainant asserts that Respondent is not authorized to use the HARD ROCK mark. Respondent has failed to offer evidence showing Respondent is commonly known by the <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names. The WHOIS information on the record lists the domain name registrant as “M1Investments” and there is no evidence on the record showing Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names to resolve to websites featuring commercial search engines and hyperlinks to Complainant’s competitors in the different music related fields that Complainant operates in. The Panel finds Respondent’s use of the confusingly similar disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent has engaged in a pattern of registering trademark-related domain names in bad faith by registering these seven disputed domain names that incorporate Complainant’s HARD ROCK mark. The Panel finds that Respondent has engaged in such a pattern of bad faith registration and use due to Respondent’s registration of the instant seven disputed domain names pursuant to Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Complainant alleges the <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names resolve to websites featuring commercial search engines and hyperlinks associated with Complainant’s competitors in the music related industries Complainant belongs to. The Panel finds that this use constitutes a disruption of Complainant’s restaurants, hotels, casinos, merchandising, and live music events business, and therefore constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel infers Respondent profits from the disputed domain
names through click-through fees resulting from the competing hyperlinks. Because Respondent’s domain names are
confusingly similar to Complainant’s HARD ROCK mark, Internet users accessing
Respondent’s domain names may become confused as to Complainant’s affiliation
with the resulting websites and disputed domain names. The Panel finds that such use constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hardrockco.net>, <hardrockcolorado.net>, <hardrockhotelcolorado.net>, <hardrockcentralcity.net>, <hardrockcentralcity.com>, <hardrockcasinocentralcity.net>, and <hardrockcasinocentralcity.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 12, 2010
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