national arbitration forum

 

DECISION

 

Hard Rock Cafe International (USA), Inc. v. Dante Studios Ltd c/o Shadi Almosri

Claim Number: FA1002001310195

 

PARTIES

Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virgina, USA.  Respondent is Dante Studios Ltd c/o Shadi Almosri (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically February 25, 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 submitting an “opt-in” form available on the Forum’s website.

 

On February 25, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hardrockcallingtickets.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. verified that Respondent is bound by the Enom, Inc. 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 March 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2010, by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@hardrockcallingtickets.com.  Also on March 1, 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 March 31, 2010, 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 (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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <hardrockcallingtickets.com>, is confusingly similar to Complainant’s HARD ROCK mark.

 

2.      Respondent has no rights to or legitimate interests in the <hardrockcallingtickets.com> domain name.

 

3.      Respondent registered and used the <hardrockcallingtickets.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Hard Rock Cafe International (USA), Inc., is a well-known corporation focusing on music-related leisure and entertainment.  Complainant’s business operations include restaurants, hotels, casinos, merchandising and live music events.  Complainant owns trademark registrations for the HARD ROCK and related marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,478,328 issued Aug. 14, 2001).

 

Respondent, Dante Studios Ltd c/o Shadi Almosri, registered the <hardrockcallingtickets.com> domain name December 9, 2009.  The disputed domain name resolves to a website displaying ticket information and links to various ticket vendors for upcoming shows, which are services and products that compete with Complainant.

 

DISCUSSION

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.

 

Identical to and/or Confusingly Similar

 

Complainant owns trademark registrations for the HARD ROCK and related marks with the USPTO (e.g., Reg. No. 2,478,328 issued Aug. 14, 2001).  The Panel finds that a trademark registration with the USPTO conclusively proves Complainant’s rights in the mark, despite such circumstances as a Respondent’s actions in a foreign country.  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant argues that Respondent’s <hardrockcallingtickets.com> is confusingly similar to Complainant’s HARD ROCK mark because the disputed domain name incorporates Complainant’s mark in full, modifying the mark only by deleting the space between the words and adding the descriptive terms “calling” and “tickets” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that added descriptive terms do not change Complainant’s mark sufficiently to result in a different mark that is not confusingly similar under the requirements of Policy ¶ 4(a)(i), especially when the additional terms relate to Complainant’s business, as in this case.  See 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 deletion of spaces and the affixation of a gTLD likewise do not prevent confusing similarity because spaces are not permissible in and a gTLD is a required element of domain names. 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.”).

 

Therefore, this Panel finds that Respondent’s <hardrockcallingtickets.com> disputed domain name is confusingly similar to Complainant’s HARD ROCK mark.

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

According to the requirements of Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case against Respondent in these proceedings.  After such a prima facie case has been established, the burden of proof shifts to Respondent to prove its rights and legitimate interests in the disputed domain name.  Complainant presented a prima facie case in these proceedings; however, Respondent failed to respond.  Respondent’s silence allows the Panel to make inferences that Complainant’s allegations are true and that Respondent, accordingly, lacks rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interest in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

However, this Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether the proof before it suggests that Respondent possesses any rights and legitimate interests in the disputed domain name.

 

Complainant alleges that the WHOIS information is evidence that Respondent lacks rights and legitimate interests in the disputed domain name.  The WHOIS information lists the registrant of the disputed domain name as “Dante Studios Ltd.”  Further, Respondent is not licensed or authorized by Complainant to use Complainant’s mark.  The Panel finds that, as there is no nominal link between the Respondent and the disputed domain name, the WHOIS information serves as evidence that Respondent is not commonly known by the disputed domain name.  The Panel also finds that Respondent consequently has no rights and legitimate interests in the disputed domain name.  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 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 that it is commonly known by the disputed domain name).

 

Complainant also contends that Respondent failed to show rights and legitimate interests in the disputed domain name because it does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).  Respondent’s disputed domain name resolves to a website that competes with Complainant by advertising upcoming shows and featuring links to ticket vendors for those shows.  The Panel finds that appropriating Complainant’s mark in the disputed domain name to operate a website advertising services or products that compete with Complainant is not in keeping with the elements of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent uses the disputed domain name to direct Internet users to Respondent’s own website, which appears to be affiliated with Complainant but offers links to vendors of competing goods or services.  Respondent’s use of Complainant’s mark in the disputed domain name disrupts Complainant’s business because Internet users may be confused by the use of Complainant’s mark in the disputed domain name and on Respondent’s website, believing that Respondent’s web page is actually associated with Complainant.  Because of these efforts to disrupt Complainant’s business while advertising competing services or products, the Panel finds that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iii).  See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).

 

Respondent’s use of Complainant’s well-known mark in the disputed domain name is intended to attract Complainant’s potential customers to Respondent’s site for Respondent’s commercial gain.  Although Respondent’s site does not directly sell tickets competing with Complainant’s business, Respondent’s site provides links to other ticket vendors, which presumably compensate Respondent through “click-through” fees when any Internet user clicks on a displayed link.  The Panel finds that Respondent’s use of the disputed domain name to attract and mislead Complainant’s business for Respondent’s own commercial gain constitutes bad faith registration and use according to Policy          ¶ 4(b)(iv).  See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business.  The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site.  … [A likelihood of confusion exists between] <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

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

 

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

 

Hon. Carolyn Marks Johnson, Panelist

Dated: April 12, 2010

 

 

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