Hard Rock Cafe International (
Claim Number: FA1006001331695
PARTIES
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 <bromshardrockcafe.com>,
registered with eNom.com.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 24, 2010.
On June 24, 2010, eNom.com confirmed by e-mail to the National
Arbitration Forum that the <bromshardrockcafe.com>
domain name is registered with eNom.com and that the Respondent is the current
registrant of the name. eNom.com has
verified that Respondent is bound by the eNom.com 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 July 2, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of July 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@bromshardrockcafe.com
by e-mail. Also on July 2, 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.
A timely Response was received and determined to be complete on July
20, 2010.
On August 2, 2010 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Hard Rock Café International (USA), Inc. (“HRC”) is a
Complainant opened its first Brazilian restaurant in
Essential to the success of its brand is the family of U.S. federally
and internationally registered trademarks and service marks that include HARD
ROCK, HARD ROCK CAFE, HARD ROCK HOTEL, HARD ROCK CASINO, ROCK SHOP, ROCK SPA,
LOVE ALL SERVE ALL, ALL IS ONE and dozens of other registered and common law
trademarks, trade names, service marks and logos. (collectively “Family of
Marks”). Complainant and/or its authorized licensees have continuously used the
HARD ROCK HOTEL, HARD ROCK HOTELS & Design and HARD ROCK HOTEL AND CASINO
marks since at least as early as march 10, 1995. As a result, significant resources
are devoted to increasing the brand awareness of the Family of Marks. For
instance, between 2002 and 2008, the total world-wide non
Complainant also owns and/or licenses its Marks to authorized franchisees,
licensors and/or affiliates for a plethora of domain names, including, but not
limited to, www.hardrockcasino.com, www.hardrock-casino.com, and
www.hardrockcasino.net. A majority of these domain names, such as www.hardrockcasino.com,
www.hardrock.com and www.hardrockcasino.net direct the internet user
to Complainant’s primary website located at www.hardrockhotels.com and www.hardrock.com
featuring Complainant’s Family marks that allow the user to access
Complainant’s goods and services, such as hotels, casinos, cafe’s concerts,
merchandise and news. In addition, many of the remaining domain names direct
the user to Complainant’s www.hardrock.com website, where internet users
can click on the “hotels/casinos” link and be forwarded to Complainant’s websites
featuring the selected hotel/casino. Hardrock.com received over 18 million
visitors in 2007 and the website’s traffic continues to grow. Furthermore, over
600,000 people subscribe to regular Hard Rock e-mail “blasts” and receive
informational and promotional information regarding events and promotions help
in support of Hard Rock restaurants, hotels, live-music venues, casinos and
merchandise offerings. Complainant has experienced over 56 million visitors to
its webpage located at www.hardrock.com.
In addition to being the focus of significant advertising expenditures,
Complainant’s HARD ROCK CAFE restaurants, hotels and casinos are the subject of
numerous articles in newspapers and magazines throughout the world. In
addition, they are often the venue for high profile media and entertainment
events, often associated with charity and/or the music industry. These articles
and events increase the public awareness and familiarity with Complainant’s
Family of Marks.
Complainant also fosters brand awareness through broadcast, media,
radio publicity and television. For example, in September 1988, an hour long
television program called “Coca-Cola Presents Live: The Hard Rock” aired on
network television. The special was produced by legendary producer Lorne Michaels
and featured actor Dan Ackroyd. Also, as part of the 20th
anniversary of Earth Day in 1990, Hard Rock Cafe produced a documentary
entitled SAVE THE PLANET that also aired on network television and featured
numerous celebrities seeking to draw attention to the global pollution and
over-populations crises. In 1998, thirty-one radio stations participated in
Hard Rock’s New Years program generating over 5,400 advertising spots for a
one-day event. Hard Rock Live!, a television show that ran from 1997-2001
featured prominent popular music artists (including Ringo Starr, the Moody
Blues, Barenaked Ladies, Jewel, Jamiroquai, among other) in a weekly one-hour
format. This program was broadcast in the
Awareness of Complainant’s Family of Marks is also achieved by hosting
a wide variety of events held at the HARD ROCK CAFE restaurants and elsewhere.
For example, Martina Navratiolva hosted a 1992
Complainant’s Family of Marks is the heart of Complainant’s business.
The Family of Marks represent popular music and culture, American cuisine and
quality. Complainant has gone to great efforts to control how its trademarks
and service marks are used. For example, it carefully limits the number of
promotional partners it associates with, and demands a certain standard of
quality from such partner.
As a result of the foregoing activities, Complainant’s Family of Marks
is known throughout the world. This reputation extends beyond restaurants,
restaurant services and merchandise. The long association between music,
musical performers, television and other performers and celebrities and the
HARD ROCK CAFE restaurants as well as the promotional activities undertaken on
behalf of both has extended the reputation in the Family of Marks to other
services such as entertainment services, including but not limited to casino
services, hotel services, broadcasting of musical performances via radio and
television, the publication of newspapers and magazines and other organization
of games and competitions.
According to Complainant the Respondent has no known rights or
legitimate interest in the Dispute Domain Names. The Respondent is not related,
affiliated, endorsed or sponsored by Complainant; nor has Complainant granted
Respondent a license to use the Dispute Domain Names or any of Complainant’s
Family of Marks.
On September 23, 2009, Respondent registered the domain name
bromshardrockcafe.com (”Dispute Domain Name”). The Dispute Domain Name resolves
to a home page for Respondent’s restaurant and bar in
Complainant contends that Respondent registered the Dispute Domain Name
using Complainant’s Family of Marks on September 23, 2009, over thirty-one
years after Complainant began using its HARD ROCK CAFE mark, over seven years
after Complainant began using its HARD ROCK mark, over six years after
Complainant began using its HARD ROCK CASINO mark, and over thirteen years
since Complainant began using its HARD ROCK HOTEL mark. Furthermore,
Complainant’s domain names, such as www.hardrockcasino.com,
www.hardrock-casino.com and www.hardrockhotels.com were all
registered and in use well before Respondent’s registration of the Dispute
Domains Name. Despite the fame of Complainant’s Family of Marks, trademark
registrations and continuous use, Respondent registered the dispute Domain Name
containing two of Complainant’s Family of Marks in their entirety. The Dispute Domain
Name incorporates the terms “ Hard Rock” and “Hard Rock Cafe”, rendering the
Dispute Domain Name identical, or at a minimum confusingly similar to
Complainant’s Family of Marks.
According to Complainant a domain name that wholly incorporates a Complainant’s
registered mark is sufficient to establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.
Complainant therefore has provided ample evidence regarding the
identical and confusing similarity of the Dispute Domain Names to Complainant’s
domains and Complainant’s Family of Marks to satisfy ICANN Policy. 4(a)(i)
Complainant further contends that Respondent has no rights or
legitimate interest in the Dispute Domain Name because Complainant had
registered and been using the Family of Marks, including HARD ROCK, HARD ROCK
CAFE, HARD ROCK CASINO, HARD ROCK HOTEL & CASINO, and HARD ROCK HOTEL &
CASINO & Design well before Respondent registered the Dispute Domain Name.
The absence of Respondent’s rights or legitimate interest in the
Dispute Domain Name is further evidenced by its incorporation of two of
complainant’s famous Family of Marks into the domain, which Respondent knew or
should have known are owned, licensed and used by Complainant. Furthermore, the
fame of Complainant’s Family of Marks is evidenced by the millions of dollars
spent on advertising, extensive print and broadcast media coverage, and an
average brand awareness of greater than 81%. Respondent cannot credibly claim
that it was not aware of Complainant’s use and rights in the Family of Marks
and that it did not select the Dispute Domain Name to capitalize on the fame
and goodwill inherent in Complainant’s Family of Marks.
In additional, the Dispute Domain name resolves to a website offering
competing restaurant and bar services. This use of the Dispute Domain Name does
not constitute either a bona fide offering of goods or services or a legitimate
noncommercial or faire use of the domain under Policy 4(c)(i) or (iii).
Complainant finally contends that the Dispute Domain Name war
registered in bad faith because it resolves to a website offering directly
competitive services. Further, Respondent is not known by the Disputed Domain
Name as it conducts business under the name Brom’s Partyhouse Bar Restaurante
Ltda.
As such, Respondent’s use amounts to an attraction for commercial gain,
which evidences bad faith registration and use pursuant to Policy 4(b)(iv).
Respondent has no reason to register and use the Dispute Domain Name other than
to intentionally attempt to attract Internet users to its website by creating
confusion with Complainant’s Family of Marks as to the source, sponsorship,
affiliation or endorsement of its web site or location.
B. Respondent
In his response Respondent stated the following:
“In relation to the dispute as mentioned in the header I
hereby send you my response.
Regarding the letter from Mr. P.J. Hines I have a few
remarks to make.
1. Mr. Hines states that Broms Hard Rock Caf was not willing to cease use of
the mark and domain name on an amicable basis was received on November 18,
2009. The request from the lawyers of Hard Rock Caf was far from amicable. They
were accusing Broms Hard Rock Caf of deliberately fulfilling a crime and gave
15 days to change the name and stop the use of the name Broms Hard Rock Caf
before they would start a crime and a civil process.
There can't be, not in any way, be spoken of an imitation or to abuse the
fame of Hard Rock Caf established by Hard Rock Caf Inc. In no way, as stated
before, there can be spoken of an infringing of the trademark "Hard Rock
Caf" or an abuse or can be spoken of an initial interest confusion.
2. Mr. P.J. Hines also states that "although respondent advised by
telephone on march 18, 2010 that its attorneys in
3. Mr. Hines states also that the name is used and registered in bad faith.
As stated in my letter November 18, 2009 there is in now way bad faith or
anything like that.
Further in this letter you can find a further motivation.
Further it is untrue that respondent is not known by the disputed domain name
as it conducts business under the name Broms Partyhouse Bar Restaurant Ltda.
Broms Partyhouse Bar Restaurant Ltda, as the mother organization of the Broms
Organization has registered all the domain names, like bromshardrockcafe,
bromspartyhouse, bromsgoldenpalace, bromssportsbar etc. Broms Hard Rock Caf is a
separate Ltda which is part of the Broms organization. Based on Brazilian law
every bar/restaurant has an own Ltda to exploit the Cafe. This is also for
Broms Hard Rock Cafe.
Broms Hard Rock Caf should therefore also be qualified as respondent.
Broms Hard Rock Caf is settled at the following address:
Rua dos Tremembes 100 Loja 5
Praia de Iracema
CEP 60.060-250 Fortaleza Cara
Brazil
Tel. +5585-30320159
Cel. +5585-96282846
E-mail contato@bromshardrockcafe.com.br
www.bromshardrockcafe.com.br
The lawyers of Hard Rock Cafe Int already threatened me in the past that I had
to change the name of my Caf. Based on international intellectual property law
there is nothing wrong and the name Broms Hard Rock Caf can be used without a
problem. After my response at their first letter they have send me a second
letter, knowing that based on the law, they cant force to change the name,
because it is fully legal. The second time they just asked me nicely if I would
change the name of my caf in something else. I never received a call from them
in march 2010 in
Broms Hard Rock Caf is not using the logo mark of Hard Rock Caf Int. or
anything else that could lead to mistakes. The logo is completely different, in
no way we look the same or there could be any reason that people could by
mistake think that it is part from Hard Rock Cafe Int.
Till now not one of the guests had even thought this. And the name is always
presented
as Broms Hard Rock Caf and not as Hard Rock Cafe of Hard Rock Cafe Fortaleza or
something like that. There is therefore on no way that there could be spoken of
misleading or abuse or anything like that.
If, based on international intellectual property law I can use the name Broms
Hard Rock Caf, there is even jurisprudence to confirm this, I also should be
able to use the same name as a domain name bromshardrockcafe.com.br
As stated before Broms Hard Rock Caf is in no way intending or trying to
mislead people that it is part of the Hard Rock Caf int. Nor was this the intention.
It surprises me that Hard Rock Caf Int. has stopped their legal actions based
on the intellectual property law because there is nothing wrong and it is
completely legal and now tries to take my domain name away.
Herewith I send you my reply which I also have send
to the lawyers of Hard Rock Cafe Int. at 18 November 2009 This letter can be
used as my response on the claim of Hard Rock Caf Int.
Based on the ICANN rules complainant must
proof that each of the three next elements are present.
(i) Your domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights; and
((ii) You have no rights or legitimate interests in respect of the domain name;
and
(iii) Your domain name has been registered and is being used in bad faith.
It is clear to everybody that Brom's Hard Rock Caf (hereafter BHRD) is
in no way related to the famous Hard Rock Caf. It has it's own logo, which is
completely different from the logo of Hard Rock Caf. It is never used / or
published or presented it as Hard Rock Caf, but always in combination with
Brom's in front as Broms Hard Rock Caf. The name is never used just as Hard
Rock Caf with the name of the city, in this case Fortaleza like the other Hard
Rock Cafs form Hard Rock Caf Inc do so regularly.
With the addition of Broms it is clear to everybody that Broms Hard Rock Caf
has nothing to do with Hard Rock Caf Int. It is clear to everybody that
there is no confusion with complainants registered trademark and therefore not
should be treated as in the next mentioned cases. The cases Reuters Ltd v
Domain for
Furthermore the interior of Brom's Hard Rock Caf
has also no resemblance with that of the Hard Rock Cafs from Hard Rock Caf Inc.
There is no collection of instruments or gadgets of international musici. Also
the type of music is not Rock & Roll (like mentioned in your letter), but
Hard Rock / Heavy Metal. Neither the way or presentation of the name can been
seen as a look a like. Just see the photos at www.bromshardrockcafe.com.br for
conformation.
It is clear that BHRC does not use the Hard Rock
Caf trademarks, service marks, images or designs in any way. Similarly,
textual, photographic and audiovisual works produced and published Hard Rock
Caf is also not used by BHRC. Trademark law is designed to fulfill the public policy objective
of consumer
protection, by preventing the public from being misled as to the
origin or quality of a product or service.
The law allows the owner (Hard Rock Cafe) of a registered trademark to prevent
unauthorized use of the mark in relation to products or services which are
identical or "colorfully" similar to the "registered"
products or services, and in certain cases, prevent use in relation to entirely
dissimilar products or services. The test is always whether a consumer of the
goods or services will be confused as to the identity of the source or
origin!!!!
It may be clear to everybody that Brom's Hard Rock Caf and the international
Hard Rock Caf are not even colorfully similar. BHRC just plays Hard Rock /
Heavy Metal music in a caf and is part of the Brom organization. Not one symbol
/ logo of the Hard Rock Caf is used separately. Broms Hard Rock Caf does
everything to prevent that in the future any confusion could exist. He will
never use the combination of the words "Hard Rock Caf" without
Brom('s) in front of it or just with the name of the city after the combination
(HRC).
Even the domain name www.bromshardrockcafe.com therefore can't be a breach of
the intellectual property. It is clear to everybody that bromshardrockcafe is
in no way related to the international Hard Rock Cafe. In fact it is not more
than using the mark (Hard Rock and Caf) to describe accurately an aspect
of its products, as stated before, playing Hard Rock music in a Caf. Even on a
far use base there can't be a breach of a trademark. These domain names are not
used to compete with the trademark owner (HRC). It is clear that the domain
names just prescribe the type of music (Hard Rock) played in a Caf as being
part of the Brom organization.
It may be clear that with the domain name bromshardrockcafe.com BHRC does not
seek to capitalize on the trademarks goodwill for his own commercial
enterprises. As stated before it is clear to everybody that Brom's Hard Rock
Caf is in no way related to Hard Rock Caf International Inc. On no way these
presumption of a relation is never made also, not on the homepage, not in the
domain name, not even with the logo, or the furnishment of the Caf.
Based on international law there can't be an infringement of a trademark, see
Lamparello v. Falwell.
How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint
(i) before any notice to you of the dispute, your use of, or
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods or services;
or
(ii) you (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no trademark or
service mark rights; or
As you can see on the photos send as annexes and the logo included the domain
name is the same name as the name of the Caf, Broms Hard Rock Caf. Broms Hard Rock Caf is part of the Brom organization,
which exists of more bares/cafs/discos. There is a Brom's Partyhouse
(bar/disco/restaurant), a Brom's Beach Club (club for events which will open
soon), a Brom's Sportsbar (sportsbar/restaurant), a Brom's Hard Rock Caf
(caf where they play hard rock music) and a Brom's Fun 4 You Bar
(afterpartybar). So it is clear to everybody that BHRC is just part of this
organization. This is also clear even with the internet domain names. Therefore
Broms Hard Rock Caf has a legitimate interest in respect of the domain name.
Before any notice of the dispute Broms Hard Rock Caf was already using
the domain name in connection with it's Caf. Besides the domain name Broms Hard
Rock Caf is also registered on the internet on sites like hyves, facebook,
orkut as profiles, communities and others, long before any notice of the
dispute was sent. See for an example:
http://www.orkut.com.br/Main#Community?cmm=9459112 .
Broms Hard Rock Caf is also commonly known by the domain name, which is the
same as the name of the company. See one of the flyers of the Caf annexed which
is distributed a lot.
The following circumstances, in particular but without limitation, if found by
the Panel to be present, shall be evidence of the registration and use of a
domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.
It is clear that the circumstances (i) (iv) are not applicable.
As stated before, Broms Hard Rock Caf is a caf where they play Hard Rock music
which is part of the Broms organization. Hard Rock is a prescription of
the music they play in the Caf. And this type of music plays every night in the
caf. The name of the place is just a prescription of the activities taking
place. This is fully legal. Hard Rock is a type of music. We normally
dont trance, dance, forro or other types of music further than Rock and
Hard Rock music.
Based on international law there can't be an infringement of a trademark, see
Lamparello v. Falwell. Due to the fact that the use of the name Broms
Hard Rock Caf is legal, there cant be spoken of bad faith in this situation.
Concluding
There is no applicable dispute. Complainant does not fulfill all the three
elements as mentioned before. The registration of the domain name will not
infringe upon or otherwise violate the rights of any third party. Therefore the
domain name cant be transferred as complainant requests.
Alexander Brom MA LLM
Rua dos Tabajaras 402
Praia de Iracema
CEP 60060-510
FINDINGS
The Panel finds that:
1.
the
Domain Name <bromshardrockcafe.com>
is confusingly similar
to Complainant’s marks,
2.
the
Respondent has not established any right or legitimate interest in the Domain
Name <bromshardrockcafe.com> and
3. the Respondent has registered and is using the Domain Name <bromshardrockcafe.com>, in bad
faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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, Hard Rock Cafe
International (USA), Inc., claims to market and operate music-related
restaurants, hotels casinos, merchandising, and live music events. Complainant alleges to operate over 120
restaurants throughout the world, including
Complainant argues that
Respondent’s <bromshardrockcafe.com> domain name is confusingly similar to Complainant’s HARD ROCK CAFE
mark. When determining confusing
similarity in previous cases, past panels have held that the removal of spaces
separating the terms of a complainant’s mark, the addition of a generic term,
and the addition of a generic top-level domain (“gTLD”) all fail to adequately
distinguish a disputed domain from a complainant’s mark. 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.”); see
also Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see
also Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the
generic top-level domain “.com” is insufficient to differentiate a disputed
domain name from a mark). In the current case, the Panel finds that
Respondent has removed the spaces separating the terms of Complainant’s HARD
ROCK CAFE mark, added the generic term “brom,” and added the gTLD “.com.” The Panel therefore concludes, based on the
precedent established by past panels, that Respondent’s <bromshardrockcafe.com> domain name is confusingly similar to
Complainant’s HARD ROCK CAFE mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <bromshardrockcafe.com> domain name is comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Complainant must show that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent
does not assume the burden of proof, but may establish a right or legitimate
interest in a disputed domain name by demonstrating in accordance with
paragraph 4(c) of the Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services prior
to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of
proof for the second criterion: The Respondent has failed to demonstrate any
legitimate right or interest.
According to the majority of Panel decisions
this Panel also takes the position that while Complainant has the burden of
proof on this issue, once the Complainant has made a prima facie showing, the
burden of production shifts to the Respondent to show by providing concrete
evidence that it has rights to or legitimate interests in the domain name at
issue. See Document Technologies, Inc. v.
International Electronic Communications, Inc., D2000-0270 (WIPO June 6,
2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi,
D2000-0252 WIPO July 5, 2000); Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where the Complainant has asserted that the Respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
Respondent”); see also G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the Policy, the
burden effectively shifts to Respondent.”); see
also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO
Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion
by the complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Complainant alleges that Respondent is not commonly known by the <bromshardrockcafe.com> domain name. The WHOIS information identifies the domain name registrant as “Brom-s Partyhouse Bar Restaurante Ltda c/o Alexander Constantin Maria Brom,” which the Panel determines is not similar to the <bromshardrockcafe.com> domain name. Based on the WHOIS information and the evidence in the record, the Panel finds that Respondent is not commonly known by the <bromshardrockcafe.com> domain name 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 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 asserts that Respondent uses the <bromshardrockcafe.com> domain name to resolve to Respondent’s competing website. Complainant claims that Respondent operates a competing restaurant business and the disputed domain name resolves to one of Respondent’s restaurants. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) and Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), the respective panels determined that a respondent does not use a domain name for a bona fide offering of goods or services nor a legitimate noncommercial or fair use if the respondent uses the domain name to divert Internet users to a website that offered services that competed with those offered by a complainant under its marks. Based on the rulings of prior panels, the Panel concludes that Respondent’s use of the <bromshardrockcafe.com> domain name 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 name pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that
Respondent uses the <bromshardrockcafe.com> domain
name to operate a website that directly competes with Complainant’s restaurant
business. Complainant argues that
Respondent operates restaurants in
Complainant claims that Respondent is attempting to commercially profit from Internet users’ confusion as to Complainant’s sponsorship of and affiliation with the disputed domain name, resolving website, and Respondent’s restaurant. Since the Panel finds that Respondent registered the <bromshardrockcafe.com> domain name for that purpose, the Panel is of the view that Respondent’s registration and use of the domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
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 <bromshardrockcafe.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: August 12, 2010
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