Hard Rock Cafe International (USA), Inc. v. MEDIA INSIGHTS
Claim Number: FA1012001361794
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is MEDIA INSIGHTS (“Respondent”), represented by James S. Robertson of Gaebe, Mullen, Antonelli & Dimatteo, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hardrockpuntacanahotel.com> and <hardrockpuntacanaresort.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2010; the National Arbitration Forum received payment on December 4, 2010.
On December 6, 2010, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <hardrockpuntacanahotel.com> and <hardrockpuntacanaresort.com> domain names are registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 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@hardrockpuntacanahotel.com and postmaster@hardrockpuntacanaresort.com. Also on December 8, 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 7, 2011.
On January 12, 2011, a timely additional submission was received from Complainant and was considered. On January 18, 2011, a timely additional submission was received from Respondent and was considered.
On January 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Florida corporation that has been engaged in the business of leisure and entertainment using its "HARD ROCK" mark in the U.S. since at least as early as 1978. Complainant expands its brand and operations through a myriad of music-related ventures including restaurants, hotels, casinos, merchandising and music events.
Complainant owns the family of U.S. federally and internationally registered trademarks and service marks that include HARD ROCK and dozens of other registered and common law trademarks, trade names, service marks and logos.
Complainant also owns and/or licenses its marks to authorized franchisees, licensors and/or affiliates for a plethora of domain names that include the mark HARD ROCK.
On December 3, 2009, Respondent registered the disputed domain names which resolve to sites offering travel packages to the new Hard Rock Hotel & Casino in Punta Cana, Dominican Republic. Complainant contends that the Respondent's registered domain names are identical or confusingly similar to the registered trademarks in which Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent is the media division of a wholesale tour operator, Vacation Store, who provides tour operations and travel packages for travel to destinations outside of the United States. In 2000 and thereafter, Vacation Stores and/or Respondent began registering various domain names for use in its business.
Respondent acknowledges that the HARD ROCK brand is a well recognized brand; however, Respondent disputes Complainant's allegations that Respondent was not authorized or licensed to use the domain names.
The hotel, Hard Rock Hotel and Casino in Punta Cana, was formerly known as Moon Palace Casino, Golf and Spa Resort. It was owned and operated by Palace Resorts. Palace Resorts became the owner and operator of the Hard Rock Hotel and Casino in Punta Cana. Respondent has had business dealings with Palace Resorts for over 10 years. During that time, Respondent has operated web pages on behalf of Palace Resorts. Palace Resorts has been aware of the operation of the web pages and has approved it.
On November 12, 2010, Palace Resorts provided a username and password to Respondent in order to allow Respondent to update its web pages to reflect changes regarding the Hard Rock Hotel and Casino and to download images to use in the web pages. Contracts with Palace Resorts authorized Respondent to use Complainant's copyrighted materials in the web pages.
Complainant, through Palace Resorts, has consented and acquiesced to Respondent's use of the disputed domain names. Complainant authorized Palace Resorts and Palace Resorts authorized Respondent. The Respondent has legitimate rights and interests in respect of the disputed domain names and they were not registered nor are they being used in bad faith.
C. Additional Submissions
Complainant
Respondent equates the owner of the Hard Rock Hotel & Casino in Punta Cana with Complainant and claims that Complainant authorized the use of the subject domain names and provided logos and marks for Respondent's web pages. The owner of the property, Palace Resorts, is a project licensee of Complainant and was not authorized to sublicense the marks and logos or to permit a third party to register domain names using the HARD ROCK marks. Complainant attaches a 77 page Project License Agreement and makes its claims that such use is not authorized under that contract.
Respondent
Palace Resorts entered into an agreement with Hard Rock to own and operate a Hard Rock Hotel in Punta Cana. Palace Hotel held itself out to the world as being the owner and operator of the Hard Rock Hotel. Palace Resorts knew and authorized the use of the domain names by Respondent. Complainant, through its agent Palace Resorts, gave usernames and passwords to Respondent to access Hard Rock's main frame to use information, including room categories, photographs and description. Complainant, through its agent Palace Resorts, made suggested changes to the web pages that are in dispute. Respondent made the suggested changes. Complainant, through its agent Palace Resorts, sent emails and received emails regarding the upgrading of the domain names in dispute. There is no evidence of bad faith since Respondent was authorized to use the domain names.
The panel finds that the issues raised by the pleadings in this case amount to a contractual dispute between the parties as to whether or not the contracts and dealings of the parties authorized the Respondent to register and use the disputed domain names. As such, the panel finds that this matter falls outside the scope of the UDRP.
In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
"A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy . . . the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint."
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
"[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. . . . The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on."
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. Accordingly, the Panel decides to dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Having concluded that the issues raised in this proceeding fall outside the scope of UDRP, the Panel finds that the Complaint be and the same is hereby DISMISSED..
Daniel B. Banks, Jr., Panelist
Dated: January 28, 2011
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