Hard Rock Care International (USA), Inc. v. James Corey
Claim Number: FA1012001364565
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is James Corey (“Respondent”), Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2010; the National Arbitration Forum received payment on December 21, 2010.
On December 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, <honoluluhardrockcafe.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 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 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@hawaiihardrockcafe.com, postmaster@hardrockhawaii.com, postmaster@waikikihardrock.com, postmaster@hardrockwaikiki.com, postmaster@hardrockcafehawaii.com, and postmaster@honoluluhardrockcafe.com. Also on December 22, 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 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names are confusingly similar to Complainant’s HARD ROCK mark.
2. Respondent does not have any rights or legitimate interests in the <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names.
3. Respondent registered and used the <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Café International, Inc., is a large scale global provider of hospitality and restaurant services. Complainant has been doing business in the field since 1978. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,397,180 issued June 10, 1986) in its HARD ROCK mark. Complainant uses its mark to support its restaurant and hospitality business.
Respondent, James Corey, registered the disputed domain names on October 13, 2010. Respondent’s domain names resolve to a site offering links to services that directly compete with Complainant’s business.
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 contends that it has established rights in its HARD ROCK mark via registration with a federal trademark authority. Previous panels have found that registering a mark with a federal trademark authority creates rights in the mark for the owner of that registration. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Therefore the Panel finds that Complainant has sufficiently established its rights in the HARD ROCK mark under Policy ¶ 4(a)(i) via registration of the mark with the USPTO (e.g., Reg. No. 1,397,180 issued June 10, 1986).
Complainant also contends that the disputed domain names are confusingly similar to its own HARD ROCK mark. The disputed domain names incorporate the entirety of the mark whilst separately adding the terms, “hawaii,” “café,” “waikiki,” and/or “honolulu,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent did not sufficiently distinguish its disputed domain names by adding generic and geographic terms. Also, the Panel finds the addition of the gTLD fails to differentiate the <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s HARD ROCK mark according to Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its initial burden of proof my making a prima facie case against Respondent. Previous panels have found that the burden shifts to Respondent to prove that it has rights or a legitimate interest in the disputed domain after Complainant has met its prima facie burden. 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.”). When Respondent failed to provide a response to the initial Complaint this Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain names. 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.”). However, the Panel will still examine the record in its entirety to determine whether Respondent does in fact retain rights or legitimate interests in the domain name according the factors enumerated in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names. Respondent provided no evidence to support the finding that it is commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “James Corey,” which Complainant asserts is not similar to the disputed domain names. Based on the evidence in the record the Panel finds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is not engaging in the bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names. Respondent’s disputed domain names resolve to a site offering links to Complainant’s competitors. Presumably, Respondent receives click-through fees for the maintenance of the sites. The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively. 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 confusingly similar domain name was not 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant asserts that Respondent’s offer to sell the domain names to Complainant provides further evidence of Respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). Previous panels have found that an attempt to sell disputed domain names for more than the out-of-pocket expenses to register and operate them provides affirmative evidence of a respondent’s lack of rights of legitimate interests in the domain names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Furthermore, a sale offer in and of itself regardless of price has also been determined by previous panels to be evidence of a respondent’s lack of rights and legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Therefore, the Panel finds that Repspondent’s attempt to sell the disputed domain names to Complainant support the finding that Respondent lacks rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant alleges that Respondent attempted to sell the disputed domain names to Complainant for $2,000, an amount estimated to be far more than the out-of-pocket costs associated with the domain names. Based on evidence in the record, this Panel finds Respondent’s attempts to sell the <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names is affirmative evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent’s <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names resolve to a site offering links to Complainant’s competitors. Complainant asserts that this usage disrupts its business by diverting Internet users to its competitors through Respondent’s website. The Panel finds that Respondent’s use of the disputed domain names for this purpose does in fact disrupt Complainant business according to 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 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)); see also 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).
Complainant also contends that Respondent’s use of the disputed domain names for its own commercial gain is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). Respondent presumably receives pay-per-click fees for owning and maintaining the resolving website offering links to Complainant’s competitors. Thus, the Panel finds Respondent has registered and used the <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names in bad faith according 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).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been 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 <hawaiihardrockcafe.com>, <hardrockhawaii.com>, <waikikihardrock.com>, <hardrockwaikiki.com>, <hardrockcafehawaii.com>, and <honoluluhardrockcafe.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 31, 2011
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