Pascua Yaqui Tribe v. CHANGEOVER SERVICES LIMITED c/o Trident Chambers
Claim Number: FA1006001331413
Complainant is Pascua
Yaqui Tribe (“Complainant”), represented by Susan A. Perera, of Winthrop & Weinstine, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <casinosole.com>, registered with Moniker Online Services, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2010.
On June 23, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <casinosole.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 June 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@casinosole.com by e-mail. Also on June 24, 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 July 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <casinosole.com> domain name is confusingly similar to Complainant’s CASINO DEL SOL mark.
2. Respondent does not have any rights or legitimate interests in the <casinosole.com> domain name.
3. Respondent registered and used the <casinosole.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pascua Yaqui Tribe, is a federally-recognized
Native American tribe in the
Respondent, CHANGEOVER SERVICES LIMITED c/o Trident Chambers, registered the <casinosole.com> domain name on April 9, 2006. Respondent’s disputed domain name resolves to a website that displays third-party links to websites and businesses offering competing entertainment 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 has submitted evidence to show that it owns
trademark registrations with the USPTO for its CASINO DEL SOL mark (e.g., Reg. No. 2,800,090 issued Dec. 30,
2003). Therefore, the Panel finds that
Complainant has established rights in its mark under Policy ¶ 4(a)(i) through its trademark registrations with the
USPTO. The Panel further finds that Complainant’s
trademark registrations need not be within the country of Respondent’s
residence to establish enforceable rights under 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 Renaissance Hotel Holdings, Inc. v. Renaissance
Complainant contends that the <casinosole.com>
domain name is confusingly similar to Complainant’s CASINO DEL SOL mark. Complainant argues that the disputed domain
name contains the dominant portion of Complainant’s mark, merely leaving out
the term “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights and legitimate interests in the <casinosole.com> domain name. Complainant is required to produce a prima facie case in support of such assertions. Once Complainant establishes a prima facie case the burden of proof shifts to Respondent to show that it possesses rights and legitimate interests in the <casinosole.com> domain name under Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
The Panel finds that Complainant has produced a prima facie case to support its allegations. The Panel further finds that due to Respondent’s failure to respond to these proceedings the Panel may presume that Respondent does not have rights and legitimate interests in the <casinosole.com> domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will analyze the evidence on record to determine if Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <casinosole.com> domain name and Complainant has not authorized Respondent to register or use any variation of its CASINO DEL SOL mark in a domain name. The WHOIS information does not indicate that Respondent is known by the <casinosole.com> domain name, and Respondent has not come forth with any evidence to refute Complainant’s accusations that Respondent is not authorized to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 of that it is commonly known by the disputed 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).
Complainant alleges that Respondent’s disputed domain name
resolves to a website that displays third-party links to casino and
entertainment venues in competition with Complainant. Complainant argues that Respondent’s use of
the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate
noncommercial or fair use. The Panel
finds that Respondent is using the disputed domain name to redirect Internet
users to the websites and businesses of Complainant’s competitors in the casino
and entertainment industry, and that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of
Choice Holding Co., FA 621292 (Nat.
Arb. Forum Feb. 16, 2006)
(finding that the respondent’s use of domain names confusingly similar to the
complainant’s WAL-MART mark to divert Internet users seeking the complainant’s
goods and services to websites competing with the complainant did 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is diverting Internet users who are seeking Complainant’s casino and entertainment facilities to competing websites and businesses. Complainant alleges that such use of the confusingly similar domain name is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii) because it creates a disruption and loss of business to Complainant. The Panel agrees and finds that Respondent’s diversion of Internet users to the websites and businesses of Complainant’s competitors is evidence that Respondent registered and is using the disputed domain name in bad faith 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Lastly, Complainant contends that Respondent is using the confusingly similar <casinosole.com> domain name to attract Internet users to its directory website that features click-through third-party links to competing businesses, and that Respondent commercially benefits through click-through fees associated with such links. Complainant contends that such use by Respondent is further evidence that Respondent registered and is using the disputed domain name in bad faith. The Panel finds that Respondent is using the disputed domain name to intentionally attract Internet users to its website where it presumably collects click-through fees in association with various competing third-party links displayed on its website, and that such use is evidence of bad faith under Policy ¶ 4(b)(iv). See 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); see also 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).
The Panel finds that 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 <casinosole.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 27, 2010
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