national arbitration forum

 

DECISION

 

Ho-Chunk Nation v. Private Registration (B3)

Claim Number: FA1011001358380

 

PARTIES

 Complainant is Ho-Chunk Nation (“Complainant”), represented by Joel D. Leviton of Fish & Richardson P.C., Minnesota, USA.  Respondent is Private Registration (B3) (“Respondent”), Grand Cayman.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hochunkcasino.com>, registered with Bargin Register Inc.

 

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2010; the National Arbitration Forum received payment on November 15, 2010.

 

On November 30, 2010, Bargin Register Inc. confirmed by e-mail to the National Arbitration Forum that the <hochunkcasino.com> domain name is registered with Bargin Register Inc. and that Respondent is the current registrant of the name.  Bargin Register Inc. has verified that Respondent is bound by the Bargin Register Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@hochunkcasino.com.  Also on December 3, 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 December 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 the Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hochunkcasino.com> domain name is identical to Complainant’s HO-CHUNK CASINO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hochunkcasino.com> domain name.

 

3.      Respondent registered and used the <hochunkcasino.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Ho-Chunk Nation, has been a sovereign nation since 1963 and has operated a casino offering gambling services since 1991.  Complainant produces evidence that its HO-CHUNK mark has been made famous through its burgeoning gaming business. 

 

Respondent registered <hochunkcasino.com> on February 8, 2002.  The disputed domain name links to a third-party website providing online gaming and casino services that compete with Complainant’s services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant failed to register the HO-CHUNK and HO-CHUNK CASINO marks with a federal trademark agency prior to Respondent’s registration of the <hochunkcasino.com> domain name, but governmental trademark registration is not a required to establish rights in a mark under Policy ¶ 4(a)(i).  Previous panels have determined that a federal registration is not mandatory so long as a complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).

 

Complainant uses the HO-CHUNK and HO-CHUNK CASINO marks in its casino and gambling business.  The Ho-Chunk Casino has operated successfully in the State of Wisconsin since 1991 and the Ho-Chunk Nation has continuously used the HO-CHUNK mark to signify its sovereignty since 1963.  Complainant uses its tribal name in support of its gaming business.  The Panel finds that Complainant has provided sufficient evidence to establish common law rights in the HO-CHUNK and HO-CHUNK CASINO service marks through continuous and extensive commercial use predating Respondent’s registration of the <hochunkcasino.com> domain name under Policy ¶ 4(a)(i).  See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership). 

 

Complainant contends that Respondent’s  <hochunkcasino.com> domain name is identical to its HO-CHUNK CASINO mark.  The disputed domain name includes the entirety of Complainant’s mark while adding the generic top-level domain (“gTLD”) “.com” and removing a hyphen and the space separating the terms of the mark.  The Panel finds that Respondent has failed to differentiate the disputed domain name from Complainant’s HO-CHUNK CASINO mark by adding a gTLD and removing punctuation from the mark.  See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); 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).

 

The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.        

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent.  Previous panels have found that the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name after Complainant has met its prima facie burden.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  When a Respondent fails to provide a response to the initial complaint, the Panel may assume that it does not have legitimate interests or rights in the domain name.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  However, the Panel will still examine the record in its entirety to determine whether Respondent retains any rights of legitimate interests in the disputed domain name according to the factors included in Policy ¶ 4(c).

 

Complainant contends that Respondent is not commonly known by the domain name <hochunkcasino.com>.  Respondent has put forth no evidence that it is known by the disputed domain name.  Nothing in the record, including the WHOIS information, indicates that Respondent is commonly known by the <hochunkcasino.com> domain name.  Thus, the Panel finds that Respondent is not commonly known by the disputed domain name.  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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).

 

Complainant also contends that Respondent is not engaging in any bona fide offering of goods and services or making a legitimate or non-commercial use of the <hochunkcasino.com> domain name.  Respondent’s disputed domain name redirects users to a website offering online gaming and gambling services in direct competition with Complainant.  Respondent apparently draws revenue from the sales of these services.  The Panel determines that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).      

 

The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.  

 

Registration and Use in Bad Faith

 

Respondent’s <hochunkcasino.com> domain name redirects Internet users to a website offering gambling and gaming services that compete directly with Complainant’s business.  Complainant contends that the disputed domain name disrupts its business as the site offers a competing service that is the same as the services offered at Complainant’s own casino.  The Panel finds that the identical domain name used by Respondent does in fact disrupt Complainant’s business by using the Complainant’s exact mark to offer competing services constituting bad faith registration and use under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).

 

Based on the evidence in the record, the Panel finds that Respondent receives revenue from Internet users purchasing and utilizing its online gaming services.  The identical nature of the <hochunkcasino.com> domain name and Complainant’s HO-CHUNK and HO-CHUNK CASINO marks creates a strong likelihood of confusion on the part of Internet users.  Respondent then profits from this confusion when Internet users purchase services and gamble at its site instead of using Complainant’s own services.  The Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.    

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <hochunkcasino.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Louis E. Condon, Panelist

Dated:  December 30, 2010

 

 

 

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