Holdings Acquisitions Co. L.P. d/b/a Rivers Casino v. Parking Parking
Claim Number: FA1105001387884
Complainant is Holdings Acquisitions Co. L.P. d/b/a Rivers Casino (“Complainant”), represented by William Niro, Illinois, USA. Respondent is Parking Parking (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <riverscasino.com>, registered with Registration Technologies, 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 May 9, 2011; the National Arbitration Forum received payment on May 9, 2011.
On May 11, 2011, Registration Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <riverscasino.com> domain name is registered with Registration Technologies, Inc. and that Respondent is the current registrant of the name. Registration Technologies, Inc. has verified that Respondent is bound by the Registration Technologies, 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 May 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@riverscasino.com. Also on May 11, 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 June 6, 2011, pursuant to Complainant's request to have the ispute 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <riverscasino.com> domain name is identical to Complainant’s RIVERS CASINO mark.
2. Respondent does not have any rights or legitimate interests in the <riverscasino.com> domain name.
3. Respondent registered and used the <riverscasino.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Holdings Acquisitions Co. L.P. d/b/a Rivers Casino, owns two trademark registrations for the RIVERS CASINO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,786,045 filed May 7, 2009; issued May 4, 2010 and Reg. No. 3,804,060 filed November 10, 2008; issued June 15, 2010). Complainant uses these marks in connection with services related to the operation of casinos throughout the United States.
Respondent, Parking Parking, registered the disputed domain name on December 9, 2004. The disputed domain name resolves to an inactive website.
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 submits evidence of two USPTO trademark registrations for the RIVERS CASINO mark (Reg. No. 3,786,045 filed May 7, 2009; issued May 4, 2010 and Reg. No. 3,804,060 filed November 10, 2008; issued June 15, 2010). The Panel finds that a USPTO trademark registration is sufficient evidence of Complainant’s rights in the mark and that those rights date back to the filing date of the trademark application. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds that it is irrelevant whether Complainant registered the mark in the country where Respondent resides or operates, so long as Complainant can establish rights in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has established rights in its RIVERS CASINO mark dating back to the earliest filing date of November 10, 2008.
Complainant alleges that Respondent’s <riverscasino.com> domain name is identical to Complainant’s RIVERS CASINO mark. The disputed domain name merely removes the space from between the terms of the mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that as spaces are impermissible in a domain name and a TLD is a required element, neither of these changes can be said to distinguish the disputed domain name in any way from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Therefore, the Panel finds that according to Policy ¶ 4(a)(i), Respondent’s <riverscasino.com> domain name is identical to Complainant’s RIVERS CASINO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the allegations contained in the Complaint, the Panel finds that Complainant has established a prima facie case. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel also infers that Respondent’s failure to submit a Response is additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel elects to review the entire record before making a determination as to Respondent’s rights or legitimate interests in the disputed domain name, if any.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <riverscasino.com> domain name indicates the registrant is “Parking Parking.” Without the benefit of any sort of response from Respondent, the Panel has no evidence that would support a finding that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name 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 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 submits a screenshot from Respondent’s resolving website that indicates that Respondent’s <riverscasino.com> domain name resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name cannot constitute 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered the <riverscasino.com> domain name on December 9, 2004, nearly four years before Complainant’s rights in the RIVERS CASINO mark arose. Therefore, the Panel finds that Respondent could not have registered the disputed domain name in bad faith as Respondent could not have been aware of Complainant’s existence or the existence of the RIVERS CASINO mark at that time. Therefore, the Panel supports a finding that Respondent did not register the disputed domain name in bad faith under the Policy. See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by the complainant); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark).
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(ii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <riverscasino.com> domain name REMAIN WITH from Respondent.
John J. Upchurch, Panelist
Dated: June 20, 2011
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