Hard Rock Cafe International (USA), Inc. v. hrr / Hard Rock Resort and Casino S.A. (Costa Rica)
Claim Number: FA1012001361731
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is hrr / Hard Rock Resort and Casino S.A. (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hardrocksanjose.com>, <hardrocktamarindo.com>, <hardrock-resortcasino.com>, <hardrockresortcasinojaco.com>, <hardrockplayacoco.com>, <hard-rockcostarica.com> and <hardrock-jaco.com>, registered with Godaddy.com, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2010; the National Arbitration Forum received payment on December 3, 2010.
On December 7, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hardrocksanjose.com>, <hardrocktamarindo.com>, <hardrock-resortcasino.com>, <hardrockresortcasinojaco.com>, <hardrockplayacoco.com>, <hard-rockcostarica.com> and <hardrock-jaco.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2011 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@hardrocksanjose.com, postmaster@hardrocktamarindo.com, postmaster@hardrock-resortcasino.com, postmaster@hardrockresortcasinojaco.com, postmaster@hardrockplayacoco.com, postmaster@hard-rockcostarica.com, postmaster@hardrock-jaco.com. Also on December 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.
A timely Response was received and determined to be complete on January 4, 2011.
On January 7, 2011, The Forum received Complainant’s Additional Submission. This submission was timely, and in accordance with The Forum’s Supplemental Rule # 7.
On January 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends as follows:
- Each of the disputed domain names incorporates the terms “Hard Rock”, rendering these domain names identical or, at a minimum, confusingly similar to Complainant’s family of HARD ROCK marks.
- Respondent has no rights or legitimate interests in the disputed domain names because Complainant had registered and been using the family of HARD ROCK marks well before Respondent registered the disputed domain names. Respondent knew or should have known Complainant’s famous HARD ROCK marks when he incorporated them into the disputed domain names. The fact that the disputed domain names resolve to websites offering competing entertainment services does not constitute either a bona fide or a legitimate noncommercial or fair use of the domain names.
- Respondent’s use of the disputed domain names amounts to an attraction for commercial gain, evidencing bad faith registration and use. Respondent had no reason to register and use the disputed domain names other than to intentionally attempt to attract Internet users to its websites by creating confusion with Complainant’s family of HARD ROCK marks as to the source, sponsorship, affiliation or endorsement of its website or location. In addition, upon receiving a cease and desist notice from Complainant, Respondent sought monetary payment, which is evidence that Respondent’s use of the domain names was solely for commercial gain and bad faith.
B. Respondent
Respondent requests that the Panel terminate the proceeding due to the existence of a judicial action pending in San José, Costa Rica, based on the same grounds as this proceeding.
C. Additional Submissions
In its Additional Submission Complainant requests the Panel to use its discretion and proceed to a decision on the merits. No reply to Complainant’s Additional Submission was received from Respondent.
Complainant Hard Rock Cafe International (USA), Inc. is a Florida corporation engaged in the business of leisure and entertainment activities related to music, including restaurants, hotels, casinos, merchandising and live music events. There are over 130 HARD ROCK CAFÉ restaurants worldwide. To protect these activities, Complainant uses a number of marks containing the HARD ROCK expression. According to a list provided by Complainant, and confirmed by the Panel in a search conducted on the TESS and TARR databases on January 24, 2011, Complainant owns, inter alia, the following U.S. federal trademark registrations:
- HARD ROCK CASINO, Reg. No. 2,789,028, Reg. Date December 2, 2003, Filed on July 1, 1998. International Class 41. Goods and services: conducting entertainment exhibitions in the nature of live music, music festivals and casino services. First use/first use in commerce: May 9, 2003; International Class 42. Goods and services: restaurant, bar and take-out food services and hotel services. First use/first use in commerce: May 9, 2003.
- HARD ROCK CAFÉ (AND DESIGN), Reg. No. 1,398,940, Reg. Date June 24, 1986, filed October 6, 1982. International Class 42. Goods and services: restaurant and prepared take-out food services. First use/first use in commerce: September 27, 1982.
- HARD ROCK CAFÉ, Reg. No. 1,397,180, Reg. Date June 10, 1986, filed on September 30, 1982. International Class 42. Goods and services: restaurant services. First use/first use in commerce: 1978.
- HARD ROCK CAFÉ (AND DESIGN), Reg. No. 2,006,584, Reg. Date October 8, 1996, filed on March 14, 1994. International Class 41. Goods and services: entertainment services, namely, conducting exhibition services in the nature of festivals and the presentation of live and recorded music exhibitions. First use/first use in commerce: 1984.
- HARD ROCK HOTEL, Reg. No. 1,909,483, Reg. Date August 1, 1995, filed on June 20, 1991. International Class 42. Goods and services: hotel services. First use/first use in commerce: March 10, 1995.
- HARD ROCK HOTEL (AND DESIGN), Reg. No. 3,272,459, Reg. Date July 31, 2007, filed on September 13, 2006. International Class 41. Goods and services: casinos. First use/first use in commerce: April 30, 1995. International Class 43. Goods and services: hotel, bar and restaurant services. First use/first use in commerce: April 30, 1995.
- HARD ROCK HOTEL & CASINO, Reg. No. 3,601,548, Reg. Date April 7, 2009, FILED ON June 25, 2008, International Class 41. Goods and services: casino and gaming services; entertainment services, namely, the presentation of live music performances and recorded music. First use/first use in commerce: March 11, 2004; International Class 43. Goods and services: restaurant, bar and prepared food take-out restaurant services; hotel services; resort lodging services; cocktail lounge services. First use/first use in commerce: March 11, 2004.
On November 14, 2006, Respondent registered the <hardrockjaco.com> and <jacohardrock.com> domain names. On November 24, 2008, Respondent registered the <hardrocksanjose.com>, <hardrock-resortcasino.com>, <hardrocktamarindo.com>, <hardrockresortcasinojaco.com>, <hardrockpayacoco.com>, <hardrock-jaco.com> and <hard-rockcostarica.com> domain names.
On April 15, 2010 and Complainant sent cease and desist notices to Respondent, demanding the immediate cease of use of the disputed domain names. On May 5, 2010 second notices were sent.
On May 5, 2010, in reply to Complainant’s second notices related to the <hardrocktamarindo.com>, <hardrockresortcasinojaco.com>, <hard-rockcostarica.com>, <hardrock-jaco.com> and <hardrockplayacoco.com> domain names, Mr. Jeff Salamone sent emails to Complainant, stating, “If you are interested in purchasing my .coms or are interested in any negotiations please forward all interest to our lawyer. whos [SIC] email is CC. above”.
According to a search conducted by the Panel on January 25, 2011 using his browser, all of the disputed domain names resolve to parking pages provided by the registrar GoDaddy.com. Each page contains about ten “sponsored linkings”, several of them offering lodging, resort and hotel services in Costa Rica and other locations, as well as car rental and/or other services not related to Complainant or to Complainant’s businesses.
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."
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.
Procedural Issue: Judicial action pending in Costa Rica.
In its Response, Respondent requests the Panel to terminate this proceeding pursuant to Rule 18 (a). Respondent relies on the existence of a judicial proceeding pending before the courts in Costa Rica between Hard Rock Resort and Casino, S. A. a corporation constituted under the laws of Costa Rica and Complainant. According to Respondent, “this litigation is in relation to the use of the commercial name “Hard Rock Resort and Casino” in Costa Rica”. Respondent alleges that the judicial proceeding is “for the same grounds that [SIC] this administrative proceeding.”
In support of its request for termination, Respondent submits the following three documents in Spanish:
a) A document containing a portion of a decision of the First Civil Court of San José, Costa Rica, dated March 23, 2010 at 09:40 hours, ordering that notice of a complaint of unfair competition brought by Hard Rock Limited against Hard Rock Resort Casino S.A., be served on defendant Hard Rock Resort Casino S.A.
b) A document containing a notification of a decision of the same court, dated October 26, 2010 at 16:00 hours, denying plaintiff Hard Rock Limited request for clarification of the scope of the injunction ordering defendant Hard Rock Resort and Casino S.A. to refrain from using the words HARD ROCK as well as the logos of the plaintiff issued by the court. However, the court explains that said injunction includes any mention in its advertising by any means, including the domains of the web, as well as in any other place where the plaintiff is using such words.
c) A decision of the same court dated November 10, 2010 at 13:39 hours, granting an appeal brought by defendant Hard Rock Resort Casino S.A. against the decision dated October 12, 2010 at 11:10 hours. The decision of November 10, 2010 states that the appeal against the decision containing the clarification made on October 26, 2010 at 16:00 is denied.
In its Additional Submission, Complainant opposes to Respondent’s request that the Panel terminate this UDRP proceeding. Complainant contends that when it is unclear whether the civil action in Costa Rica involves or affects the domain names that are the subject of this UDRP proceeding, the Panel is free to reach the merits of this domain name dispute.
Thus, it appears that on March 2010 Hard Rock Limited, a company related to Complainant, initiated a civil action of unfair competition against defendant Hard Rock Resort Casino S.A in the Republic of Costa Rica.
The Panel notes that according to the Response submitted by Mr. Jeffrey Salamone as legal representative of Hard Rock Resort Casino S.A., the full name of Respondent “hrr” is Hard Rock Resort Casino S.A
It also appears that the Costa Rican court issued an injunction ordering defendant Hard Rock Resort Casino S.A. not to use in any form the words HARD ROCK. In a later decision, the court explained that the prohibition of using in any manner the words HARD ROCK certainly included its use as domains of the web[1]. While the appeal against the injunction has been granted, the appeal against the decision clarifying the injunction has been denied.
Rule 18(a) states as follows: “(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The Panel notes that the civil action of unfair competition initiated by Complainant in Costa Rica has not the same subject as this instant administrative proceeding. Typically actions against unfair competition and trademark infringement have a much wider reach than the limited scope of UDRP, which provides an expeditious proceeding applicable in cases of cybersquatting.
The Panel believes that since the San José court ordered defendant Hard Rock Resort and Casino S.A. not to use the expression HARD ROCK in any manner, later explaining that the prohibition of use of the HARD ROCK terms included its use as “domains of the web”, there appears to be no risk that the present decision on the merits contradicts either the first judicial order prohibiting Hard Rock Resort and Casino S.A. to use the HARD ROCK terms in any manner, or the subsequent decision explaining the extent of such prohibition.
Therefore, in use of its discretion, the Panel will proceed with a decision on the merits. The Parties should have in mind that the present decision does not prevent either Respondent or Complainant from submitting the dispute to a court of competent jurisdiction for independent resolution after this proceeding is concluded, pursuant to Policy ¶ 4(k).
The <hardrock-resortcasino.com> and <hardrockresortcasinojaco.com> domain names incorporate the term “resort” to Complainant’s HARD ROCK CASINO mark. See section on “Findings” above. Given the nature of Complainant’s business, this is an addition that only reinforces the confusion with Complainant, its marks and services.
Respondent does not contest Complainant’s contention and evidence that the disputed domain names are confusingly similar to Complainant’s HARD ROCK marks
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to trademarks and service marks in which Complainant has rights.
In the instant case, Complainant proved that Respondent registered the disputed domain names well after Complainant had registered and been using its HARD ROCK marks. Complainant also contends that Respondent knew or should have known Complainant’s famous HARD ROCK marks when he incorporated them into the disputed domain names. This contention is supported by Complainant’s substantial investment in marketing and advertising expenditures, resulting in brand awareness, according to Mr. Wolszczak’s Declaration of November 22, 2010. Finally, Complainant contends that the fact that the disputed domain names resolve to websites offering competing entertainment services does not constitute either a bona fide or a legitimate noncommercial or fair use of the domain names. Together, these contentions and supporting evidence, uncontested by Respondent, amount to a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
For his part, Respondent completely fails to establish any right or legitimate interest in any of the disputed domain names. In particular, Respondent fails to explain why it registered any of the disputed domain names, or why it is using them to attract Internet users to third party websites offering services competing with Complainant. Also, Respondent does not explain if and to what extent the judicial proceeding with appeal pending in Costa Rica would provide some arguments in favor of Respondent as to rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the second requirement of the Policy is met.
Given the renown of Complainant’s HARD ROCK marks covering restaurant, casino and hotel services, as well as the advertising expenditure related to Complainant’s marks (about US $20 million in 2009 in non-US countries alone, according to Mr. Wolszczak’s declaration), it is extremely unlikely that Respondent may not have known of Complainant, its goods and services at the time of the registration of the disputed domain names. This fact, and the circumstance that the disputed domain names resolve to commercial websites with links redirecting to competitors of Complainant, strongly indicate bad faith. It is clear that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location, which is evidence of bad faith registration and use of the domain name, pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”)
The Panel finds that the third requirement of the UDRP Policy is also met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hardrocksanjose.com>, <hardrocktamarindo.com>, <hardrock-resortcasino.com>, <hardrockresortcasinojaco.com>, <hardrockplayacoco.com>, <hard-rockcostarica.com> and <hardrock-jaco.com> domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: January 28 2011
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