Station Casinos, Inc. v. Daniel Kirchhof c/o Unister GmbH
Claim Number: FA1003001311192
Complainant is Station Casinos, Inc. (“Complainant”), represented by Erin
E. Lewis, of Brownstein Hyatt Farber Schreck,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com>, registered with Psi-Usa, Inc. d/b/a Domain Robot.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2010.
On March 4, 2010, Psi-Usa, Inc. d/b/a Domain Robot confirmed by e-mail to the National Arbitration Forum that the <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com> domain names are registered with Psi-Usa, Inc. d/b/a Domain Robot and that Respondent is the current registrant of the names. Psi-Usa, Inc. d/b/a Domain Robot has verified that Respondent is bound by the Psi-Usa, Inc. d/b/a Domain Robot 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 March 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@palace-station-hotel-casino.com, postmaster@sunset-station-hotel-casino.com, postmaster@santa-fe-station-hotel.com, postmaster@boulder-station-hotel.com, postmaster@texas-station-gambling-hall.com, postmaster@fiesta-rancho-hotel.com, postmaster@fiesta-henderson-casino.com and postmaster@red-rock-casino-resort-spa.com. Also on March 10, 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 April 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "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 <palace-station-hotel-casino.com> domain name is confusingly similar to Complainant’s PALACE STATION mark. Respondent’s <sunset-station-hotel-casino.com> domain name is confusingly similar to Complainant’s SUNSET STATION mark. Respondent’s <santa-fe-station-hotel.com> domain name is confusingly similar to Complainant’s SANTE FE STATION mark. Respondent’s <boulder-station-hotel.com> domain name is confusingly similar to Complainant’s BOULDER STATION mark. Respondent’s <texas-station-gambling-hall.com> domain name is confusingly similar to Complainant’s TEXAS STATION mark. Respondent’s <fiesta-rancho-hotel.com> and <fiesta-henderson-casino.com> domain names are confusingly similar to Complainant’s FIESTA mark. Respondent’s <red-rock-casino-resort-spa.com> domain name is confusingly similar to Complainant’s RED ROCK CASINO RESORT & SPA mark.
2. Respondent does not have any rights or legitimate interests in the <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com> domain names.
3. Respondent registered and used the <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Station Casinos, Inc., has registered with the United States Patent and Trademark Office (“USPTO”) its PALACE STATION mark (Reg. No. 1,491,647 issued June 7, 1988); SUNSET STATION mark (Reg. No. 2,793,353 issued December 16, 2003); SANTE FE STATION mark (Reg. No. 2,568,347 issued May 7, 2005); BOULDER STATION mark (Reg. No. 1,634,453 issued February 5, 1991); TEXAS STATION mark (Reg. No. 2,085,735 issued August 5, 1997); FIESTA mark (Reg. No. 2,647,760 issued November 12, 2002); RED ROCK CASINO RESORT & SPA mark (Reg. No. 3,674,651 issued August 25, 2009; filed September 16, 2004). Complainant uses these marks in connection with gaming, hotel, and entertainment services to include online reservations for services related to Complainant’s marks.
Respondent, Daniel Kirchhof c/o Unister GmbH, registered the disputed domain names July 19, 2009. The disputed domain names each resolve to a website with online reservations for services related to Complainant’s mark, then each website diverts Internet users to an online reservation competitor of Complainant.
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 asserts it has rights due to registration with the USPTO of its PALACE STATION mark (Reg. No. 1,491,647 issued June 7, 1988); SUNSET STATION mark (Reg. No. 2,793,353 issued December 16, 2003); SANTE FE STATION mark (Reg. No. 2,568,347 issued May 7, 2005); BOULDER STATION mark (Reg. No. 1,634,453 issued February 5, 1991); TEXAS STATION mark (Reg. No. 2,085,735 issued August 5, 1997); FIESTA mark (Reg. No. 2,647,760 issued November 12, 2002); RED ROCK CASINO RESORT & SPA mark (Reg. No. 3,674,651 issued August 25, 2009; filed September 16, 2004). The Panel finds that Complainant’s registration of its marks with the USPTO is sufficient to establish Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant’s trademark registration application for the RED ROCK CASINO RESORT & SPA mark was subsequently approved by the USPTO on August 25, 2009. Therefore the Panel finds Complainant’s rights in the registered mark date back to Complainant’s trademark registration filing date of September 16, 2004, which predates Respondent’s disputed domain name registration on July 19, 2009. The Panel finds that the relevant date to be considered for Complainant’s rights in the RED ROCK CASINO RESORT & SPA mark under Policy ¶ 4(a)(i) is the filing date of the trademark registration. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant asserts that Respondent’s <palace-station-hotel-casino.com> domain name is confusingly similar to Complainant’s PALACE STATION mark. Respondent’s domain name incorporates the dominant feature of Complainant’s mark, adds hyphens, adds descriptive terms related to Complainant’s business, and adds the generic top-level domain “.com.” The Panel finds that such alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).
Complainant asserts that Respondent’s <sunset-station-hotel-casino.com> domain name is confusingly similar to Complainant’s SUNSET STATION mark. Respondent’s domain name incorporates the dominant feature of Complainant’s mark, adds hyphens, adds descriptive terms related to Complainant’s business, and adds the generic top-level domain “.com.” The Panel finds that such alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Whitney Nat’l Bank supra; see also Sports Auth. Mich. Inc. supra.
Complainant asserts that Respondent’s <santa-fe-station-hotel.com> domain name is confusingly similar to Complainant’s SANTE FE STATION mark. Respondent’s domain name incorporates the dominant feature of Complainant’s mark, adds hyphens, adds a descriptive term related to Complainant’s business, and adds the generic top-level domain “.com.” The Panel finds that such alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Whitney Nat’l Bank supra; see also Sports Auth. Mich. Inc. supra.
Complainant asserts that Respondent’s <boulder-station-hotel.com> domain name is confusingly similar to Complainant’s BOULDER STATION mark. Respondent’s domain name incorporates the dominant feature of Complainant’s mark, adds hyphens, adds a descriptive term related to Complainant’s business, and adds the generic top-level domain “.com.” The Panel finds that such alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Whitney Nat’l Bank supra; see also Sports Auth. Mich. Inc. supra.
Complainant asserts that Respondent’s <texas-station-gambling-hall.com> domain name is confusingly similar to Complainant’s TEXAS STATION mark. Respondent’s domain name incorporates the dominant feature of Complainant’s mark, adds hyphens, adds descriptive terms related to Complainant’s business, and adds the generic top-level domain “.com.” The Panel finds that such alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Whitney Nat’l Bank supra; see also Sports Auth. Mich. Inc. supra.
Complainant asserts that Respondent’s <fiesta-rancho-hotel.com> and <fiesta-henderson-casino.com> domain names are confusingly similar to Complainant’s FIESTA mark. Respondent’s domain names incorporate the dominant feature of Complainant’s mark, add hyphens, add descriptive terms related to Complainant’s business, and adds the generic top-level domain “.com.” The Panel finds that such alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Whitney Nat’l Bank supra; see also Sports Auth. Mich. Inc. supra.
Complainant asserts that Respondent’s <red-rock-casino-resort-spa.com> domain name is confusingly similar to Complainant’s RED ROCK CASINO RESORT & SPA mark. Respondent’s domain name incorporates the dominant feature of Complainant’s mark, adds hyphens, adds descriptive terms related to Complainant’s business, and adds the generic top-level domain “.com.” The Panel finds that such alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Whitney Nat’l Bank supra; see also Sports Auth. Mich. Inc. supra.
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
The burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent once Complainant has made a prima facie case in support of allegations to the contrary, pursuant to Policy ¶ 4(a)(ii). Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy 4(a)(ii).”).
The WHOIS information for the <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com> domain names list “Daniel Kirchhof c/o Unister GmbH” as the registrant, which indicates that Respondent is not commonly known by the disputed domain name. Complainant asserts no license or other authorization has been given to Respondent to use any of the PALACE STATION, SUNSET STATION, SANTE FE STATION, BOULDER STATION, TEXAS STATION, FIESTA, RED ROCK CASINO RESORT & SPA marks. Furthermore, Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Without affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain names each resolve to a website with online reservations for services related to Complainant’s mark. Then, as Internet users interact with the site, each website diverts Internet users to an online reservation competitor of Complainant. The Panel finds that Respondent’s use of the <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com> domain names are not bona fide offerings of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent exhibits a pattern of registering infringing domains, due to the registration and use of nine disputed domain names that are confusingly similar to Complainant’s marks. The Panel finds Respondent’s pattern of registration and use of disputed domain names to constitute bad faith pursuant to Policy ¶ 4(b)(ii). See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)); see also 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.”).
Respondent’s the <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com> domain names each resolve to a website which eventually diverts Internet users to an online reservation competitor of Complainant. The Panel finds Respondent’s registration and use of the disputed domain names to divert Internet users to a website in competition with the Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also 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)).
Complainant asserts that Internet users, searching for Complainant’s services, will be confused by the disputed domain names when each resolves to a web site that includes Complainant’s mark, pictures and descriptions of the services related to Complainant’s mark, and offers similar online reservation services to Complainant’s business. Complainant further asserts that Internet users may become confused as to Complainant’s sponsorship or affiliation with the disputed domain name and resolving website. Respondent attempts to profit from this confusion by attracting Internet users seeking Complainant’s services to Respondent’s website. Therefore, the Panel finds Respondent’s use of the <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com> domain names constituting bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
The Panel finds 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 <palace-station-hotel-casino.com>, <sunset-station-hotel-casino.com>, <santa-fe-station-hotel.com>, <boulder-station-hotel.com>, <texas-station-gambling-hall.com>, <fiesta-rancho-hotel.com>, <fiesta-henderson-casino.com> and <red-rock-casino-resort-spa.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 22, 2010
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