Boyd Gaming Corporation and Station Casinos, Inc. v. MIC / Syed Hussain
Claim Number: FA1007001336260
Complainant is Boyd Gaming Corporation and Station Casinos, Inc. (“Complainant”), represented by Erin
E. Lewis, of Brownstein Hyatt Farber Schreck,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <boydstationcasinos.com>, registered with NETFIRMS, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2010.
On July 23, 2010, NETFIRMS, INC. confirmed by e-mail to the National Arbitration Forum that the <boydstationcasinos.com> domain name is registered with NETFIRMS, INC. and that Respondent is the current registrant of the name. NETFIRMS, INC. has verified that Respondent is bound by the NETFIRMS, 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 July 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@boydstationcasinos.com. Also on July 26, 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 August 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 (the "Rules") "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:
Complainant Boyd Gaming
Corporation markets gaming, hotel and entertainment services, and holds
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the BOYD GAMING mark (including Reg. No. 1,929,312, registered on
October 24, 1995). Complainant Station Casinos, Inc. also markets gaming,
hotel, and entertainment services, and holds trademark registrations with the
USPTO for the STATION CASINOS mark (including Reg. No. 1,864,405, registered on November 22, 1994). Hereinafter, these entities will be
collectively referred to as “Complainant.”
Respondent registered the disputed <boydstationcasinos.com> domain name on December 17, 2009.
The domain name resolves to a website featuring pay-per-click links to websites that compete with the business of Complainant.
Respondent’s <boydstationcasinos.com> domain name is confusingly similar to Complainant’s BOYD GAMING and STATION CASINOS marks.
Respondent does not have any rights or legitimate interests in the domain name <boydstationcasinos.com>.
Respondent registered and uses the contested <boydstationcasinos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant Boyd Gaming Corporation and Complainant Station Casinos, Inc. contend that they may jointly file the instant Complaint because each holds rights in a trademark contained within the <boydstationcasinos.com> domain name. Boyd Gaming Corporation holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BOYD GAMING mark. Likewise, Station Casinos, Inc. holds trademark registrations with the USPTO for the STATION CASINOS mark. Prior panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), a panel stated that:
It has been accepted that it is permissible for
two complainants to submit a single complaint if they can demonstrate a link
between the two entities such as a relationship involving a license, a
partnership or an affiliation that would establish the reason for the parties
bringing the complaint as one entity.
Likewise, in Tasty Baking,
Complainant asserts rights in the BOYD GAMING mark and the STATION CASINOS mark through the registrations of
those marks with the USPTO. These claims
of rights, in the marks, which are unopposed in this proceeding, sufficiently demonstrate
Complaniant’s rights in the BOYD GAMING and STATION CASINOS marks pursuant to
Policy ¶ 4(a)(i).
Respondent’s <boydstationcasinos.com> domain name is confusingly similar to the BOYD GAMING and STATION CASINOS marks. In forming the contested domain name, Respondent has omitted the spaces between the words in Complainant’s STATION CASINOS mark and deletes the word “gaming” from Complainant’s BOYD GAMING mark. Respondent then combines Complainant’s altered marks to form the disputed domain name. Finally, Respondent adds the gTLD “.com” to Complainant’s marks to complete the disputed domain name. In Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000), a panel found confusing similarity between a domain name and a mark where a respondent combined a complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name. Other panels have found the omission of spaces between the words in a complainant’s mark or the deletion of a word from a complainant’s mark does not avoid a finding of confusingly similarity. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation
and spaces between words are not significant in determining the similarity of a
domain name and a mark because punctuation and spaces are not reproducible in a
domain name.
Moreover, panels have consistently held that the attachment
of a generic top-level domain (“gTLD”) to a mark in a disputed domain name is
irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that Respondent’s <boydstationcasinos.com> domain name is confusingly similar to Complainant’s BOYD GAMING and STATION CASINOS marks pursuant to Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case establishing that Respondent lacks rights to and legitimate interests in the <boydstationcasinos.com> domain name. The burden then shifts to Respondent to demonstrate that it nonetheless has rights to or legitimate interests in the disputed domain. 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.
Complainant has made out the requisite prima facie case under this head of the Policy, while Respondent
has failed to respond to the Complaint made against it. Prior panels have concluded that a failure to
respond to a complaint filed under the Policy indicates that a respondent does
not possess rights to or legitimate interests in a contested 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 interests in the disputed
domain name.
Although Respondent has failed to submit a Response, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Indeed the WHOIS information for the <boydstationcasinos.com> domain name lists the registrant only as “MIC / Syed Hussain,” which does not resemble the disputed domain name. There being no other evidence in the record on this point, we conclude that Respondent is not commonly known by the <boydstationcasinos.com> domain name so as to have demonstrated rights to or legitimate interests in the contested domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
We also note that Complainant alleges, without objection from Respondent, that Respondent uses the disputed domain name to operate a pay-per-click website featuring links to the websites of third-party casino hotels and online gaming companies that compete with Complainant’s business. Respondent presumably profits from the use of its domain name through the receipt of pay-per-click fees, as alleged. Therefore, we conclude that Respondent’s use of the contested domain name does not qualify as 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a domain name which was confusingly similar to a competing mark was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking that complainant’s goods and services to websites competing with the business of that 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)).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of its domain name to redirect Internet users to its website, where it displays links to third-party websites that compete with Complainant’s products and services, disrupts Complainant’s business. This behavior constitutes evidence of registration and use of 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 contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a domain name, pursuant to Policy ¶ 4(b)(iii), where a respondent used it to operate a search engine with links to the websites of a complainant’s commercial competitors).
The record amply demonstrates that Respondent is attempting to attract Internet users to the website resolving from the disputed domain name, for commercial gain, and in so doing, creating a likelihood of confusion with Complainant’s marks as to the possible source, sponsorship, affiliation, or endorsement of Respondent’s website. This is evidence of registration and use of the contested domain name in bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
[T]he
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).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <boydstationcasinos.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 30, 2010
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