Hard
Rock Cafe International (
Claim Number: FA1005001324468
Complainant is Hard
Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines, of Cantor Colburn LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cherokeeshardrocktulsa.com>, registered with GoDaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2010.
On May 13, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cherokeeshardrocktulsa.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@ cherokeeshardrocktulsa.com. Also on May 14, 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 June 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 "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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cherokeeshardrocktulsa.com> domain name is confusingly similar to Complainant’s HARD ROCK mark.
2. Respondent does not have any rights or legitimate interests in the <cherokeeshardrocktulsa.com> domain name.
3. Respondent registered and used the <cherokeeshardrocktulsa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe International (USA), operates music-related hotels, casinos, restaurants, and other ventures under its HARD ROCK mark. Complainant owns 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 <cherokeeshardrocktulsa.com> domain name on January 16, 2010. The disputed domain name resolves to a website that contains a list of hyperlinks that resolve to third-party hotel services which compete with Complainant’s hotel services.
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 holds multiple trademark registrations with the
USPTO for its HARD ROCK mark (e.g.,
Reg. No. 2,478,328 issued August 14, 2001).
The Panel finds Complainant’s trademark registrations are sufficient to
establish rights in its HARD ROCK mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes,
FA 652743 (Nat. Arb. Forum Apr. 17,
2006) (“Complainant has established rights in the MICROSOFT mark through
registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <cherokeeshardrocktulsa.com>
domain name is confusingly similar to Complainant’s HARD ROCK mark. The disputed domain name contains
Complainant’s mark in its entirety.
Respondent simply removes the space separating the terms of the mark and
adds the generic term “cherokee”, the geographic term “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <cherokeeshardrocktulsa.com> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the 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).
The WHOIS information lists Respondent as “Cherokee Hard Rock Tulsa.” However, Respondent has offered no evidence further suggesting that Respondent is commonly known by the <cherokeeshardrocktulsa.com> domain name. Moreover, Complainant asserts that Respondent is not authorized to use the HARD ROCK mark. Therefore, the Panel finds that Respondent is not commonly known by the <cherokeeshardrocktulsa.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent uses the <cherokeeshardrocktulsa.com> domain name to resolve to a website that features a list of third-party hyperlinks. The third-party hyperlinks resolve to Complainant’s competitors in the hotel industry. The Panel finds this use of a confusingly similar 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 of the <cherokeeshardrocktulsa.com> domain name under Policy ¶ 4(c)(iii). See 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).”); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Previous panels have held that a respondent’s use of a disputed domain name to resolve to a website that features hyperlinks that resolve to a complainant’s competitors disrupts a complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See 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)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Respondent’s <cherokeeshardrocktulsa.com> domain name resolves to a website that features hyperlinks to Complainant’s competitors in the hotel industry. Internet users interested in Complainant’s hotel services may purchase similar services from a competitor due to Respondent’s use of the confusingly similar disputed domain name. Based on the evidence in the record and the decisions of prior panels, the Panel determines that Respondent’s use of the <cherokeeshardrocktulsa.com> domain name disrupts Complainant’s hotel business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant claims, and the Panel infers, that Respondent commercially benefits from the aforementioned hyperlinks. The Panel presumes Respondent profits from the receipt of click-through fees. Internet users may become confused as to Complainant’s association with the disputed domain name and Respondent attempts to profit from the confusion. The Panel finds Respondent’s use of the <cherokeeshardrocktulsa.com> domain name constitutes bad faith registration and use under 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
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 <cherokeeshardrocktulsa.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 17, 2010
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