Hard Rock Cafe International (USA), Inc. v. Joshua ten Brink
Claim Number: FA1104001382843
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is Joshua ten Brink (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hardrockjaco.com> and <jacohardrock.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2011; the National Arbitration Forum received payment on April 11, 2011.
On April 11, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <hardrockjaco.com> and <jacohardrock.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 April 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@hardrockjaco.com and postmaster@jacohardrock.com. Also on April 14, 2011, 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 May 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns exclusive rights to the HARD ROCK mark, which it uses in connection with the promotion of its business involving casinos, hotels, apparel and live music events.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HARD ROCK mark (including Reg. No. 2,478,328, issued August 14, 2001).
Respondent registered the <hardrockjaco.com> and <jacohardrock.com> domain names on November 14, 2006.
The disputed domain names both resolve to websites featuring travel information relating to Costa Rica as well as links to the websites of commercial enterprises which compete with Complainant’s business.
Respondent’s <hardrockjaco.com> and <jacohardrock.com> domain names are confusingly similar to Complainant’s HARD ROCK mark.
Respondent is not authorized to use Complainant’s HARD ROCK trademark.
Respondent does not have any rights to or legitimate interests in the domain names <hardrockjaco.com> or <jacohardrock.com>.
Respondent registered and uses the <hardrockjaco.com> and domain names <jacohardrock.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the HARD ROCK mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also 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).
Respondent’s <hardrockjaco.com> and <jacohardrock.com> domain names are confusingly similar to Complainant’s HARD ROCK mark. The disputed domain names contain Complainant’s entire mark, both adding the geographic term “jaco” (referring to a community in Costa Rica), removing the spaces between the words and adding the generic top-level domain (“gTLD”) “.com.”
The addition of a descriptive geographic term to the mark of another in forming a contested domain name does not sufficiently distinguish the domain from Complainant’s mark. See 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 forming domain names does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Similarly, the removal of spaces from the mark and the addition of a gTLD does not create adequate distinctions between the resulting domain name and Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
Therefore, the Panel finds that Respondent’s domain names are confusingly similar to Complainant’s HARD ROCK trademark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <hardrockjaco.com> and <jacohardrock.com> domain names. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel concluded that:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant has presented a prima facie case under this head of the Policy, and no response to the Complaint was submitted by Respondent. We may interpret this as demonstrating that Respondent has no rights to or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond to the allegations of a complaint filed under the Policy can be construed as an admission that it has no legitimate interest in disputed domain names). See also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to the allegations in a complaint filed under the policy). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first note that Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use its HARD ROCK trademark. Moreover, the pertinent WHOIS information identifies the domain name registrants only as “Joshua ten Brink,” which does not resemble either of the disputed domain names. On this record, we must conclude Respondent is not commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in the contested domain names pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in that contested domain under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the disputed domain names to offer travel information pertaining to Costa Rica and also displays commercial click-through links on both resolving web sites. This does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of either of the domain names under Policy ¶ 4(c)(iii). 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 contested 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent was using the domain name to operate a website containing links to various commercial websites competing with the business of a complainant, which the panel found did not constitute a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is offering third-party links to commercial websites which compete with Complainant’s business, thereby causing a disruption of that business. Such use of the domains is evidence of bad faith registration and use pursuant 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 domain name confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s … institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent uses the disputed domain names to attract those Internet users who are likely searching for Complainant’s official website and reach Respondent’s website in error. Respondent likely profits from this when Internet users utilize the pay-per-click links displayed at the disputed domain names. This constitutes evidence of bad faith registration and use of the domains by Respondent under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using one that was confusingly similar to a complainant’s mark to offer links to third-party websites that featured services similar to those offered by that complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).
For these reasons, the Panel finds that Complainant has met the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <hardrockjaco.com> and <jacohardrock.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 13, 2011
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