Pinnacle Entertainment, Inc. v. Dom Reggit
Claim Number: FA1012001364300
Complainant is Pinnacle Entertainment, Inc. (“Complainant”), represented by Erin E. Lewis of Brownstein Hyatt Farber Schreck, Nevada, USA. Respondent is Dom Reggit (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net>, registered with MYDOMAIN, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2010; the National Arbitration Forum received payment on December 29, 2010.
On December 20, 2010, MYDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names are registered with MYDOMAIN, INC. and that Respondent is the current registrant of the names. MYDOMAIN, INC. has verified that Respondent is bound by the MYDOMAIN, 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 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@boomtownbossiercity.net, postmaster@boomtownbossier.net, postmaster@boomtownreno.net, and postmaster@boomtownbiloxi.net. Also on December 29, 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 January 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names are confusingly similar to Complainant’s BOOMTOWN mark.
2. Respondent does not have any rights or legitimate interests in the <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names.
3. Respondent registered and used the <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pinnacle Entertainment, Inc., develops, owns, and operates casino gaming resorts in the United States. Complainant uses the BOOMTOWN mark in connection with its hotel casino services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BOOMTOWN mark (e.g., Reg. No. 1,866,988 issued December 13, 1994).
Respondent, Dom Reggit, registered the <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names on April 29, 2010. The disputed domain names resolve to websites that provide hyperlinks to third-party websites, including websites of Complainant’s competitors.
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.
Complainant claims rights in the BOOMTOWN mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,866,988 issued December 13, 1994). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the BOOMTOWN mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). The Panel also finds that it is irrelevant whether Respondent has registered its trademark with the trademark authority in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant further claims that Respondent’s <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names are confusingly similar to its BOOMTOWN mark. Complainant argues that Respondent replicates Complainant’s mark in the disputed domain name and then merely attaches the geographically descriptive terms “Bossier City,” “Bossier,” “Reno,” and “Biloxi” to the mark. Additionally, Complainant contends that the affixation of the generic top-level domain (“gTLD”) “.net” is irrelevant for Policy ¶ 4(a)(i) purposes. The Panel agrees. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Therefore, the Panel determines that Respondent’s <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names are confusingly similar to Complainant’s BOOMTOWN mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel finds that Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also American 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.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information indicates that “Dom Reggit” is the registrant of the <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names, which the Panel finds is not similar to any of the disputed domain names. Without evidence to the contrary, the Panel concludes that Respondent is not commonly known by the disputed domain names under 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 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 alleges the disputed domain names resolve to websites that provide hyperlinks to third-party websites, some of which compete with Complainant’s hotel casino services. Complainant submits screen shots of the resolving websites. These images show webpages that contain links with titles like “Casino Party,” “Oklahoma Casino,” “Casino Biloxi,” “Nigh Clubs in Reno,” and “Reno Resort.” The Panel presumes that Respondent profits from its use of the disputed domain names through the receipt of pay-per-click fees. Therefore, the Panel finds that Respondent does not use the <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names to make 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). See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the disputed domain names redirect Internet users seeking its hotel casino services to websites that provide hyperlinks to Complainant’s competitors. The Panel agrees. Therefore, the Panel finds that Respondent’s domain names disrupt Complainant’s business, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Finally, Complainant argues that Respondent has intentionally attempted to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s BOOMTOWN mark as the source, sponsorship, affiliation, or endorsement of Respondent’s sites. As previously discussed, Respondent presumably profits from its use of the disputed domain names through the receipt of pay-per-click fees. In addition, Respondent’s <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names are confusingly similar to Complainant’s BOOMTOWN mark. Based on the evidence in the record, the Panel agrees with Complainant’s argument and finds that the foregoing provides additional evidence of registration and use 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <boomtownbossiercity.net>, <boomtownbossier.net>, <boomtownreno.net>, and <boomtownbiloxi.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 31, 2011
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