Hard Rock Cafe International (USA), Inc. v. cie international
Claim Number: FA1107001399456
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is cie international (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hardrockbettingonlinecasino.com>, <hardrockcasinoslots.com>, <hardrockgame.com>, <hardrockliveblackjack.com>, <hardrocklivecasino.com>, <hardrocklivepoker.com>, <hardrockpokerasia.com>, <hardrockpokerbets.com>, <hardrockpokerlive.com>, <hardrockpokeronlinecasino.com>, <hardrockpokertournament.com>, <hardrockpokertournaments.com>, <hardrockscratch.com>, <hardrockscratchcards.com>, <hardrockscratchgames.com>, <hardrockseminolelivecasino.com>, <hardrockseminolepoker.com>, <hardrockseminoleslots.com>, <hardrockslot.com>, <hardrocksport.com>, <hardrocksportbetting.com>, <hardrockworldpoker.com>, <seminolehardrockcasinoslots.com>, <seminolehardrockliveblackjack.com>, <seminolehardrocklivepoker.com>, <seminolehardrocklivepoker.net>, <seminolehardrockpoker.com>, <seminolehardrocksportsbook.com>, and <seminolehardrockworldpoker.com>, registered with Network Solutions, LLC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2011; the National Arbitration Forum received payment on July 19, 2011.
On July 20, 2011, Network Solutions, Llc. confirmed by e-mail to the National Arbitration Forum that the <hardrockbettingonlinecasino.com>, <hardrockcasinoslots.com>, <hardrockgame.com>, <hardrockliveblackjack.com>, <hardrocklivecasino.com>, <hardrocklivepoker.com>, <hardrockpokerasia.com>, <hardrockpokerbets.com>, <hardrockpokerlive.com>, <hardrockpokeronlinecasino.com>, <hardrockpokertournament.com>, <hardrockpokertournaments.com>, <hardrockscratch.com>, <hardrockscratchcards.com>, <hardrockscratchgames.com>, <hardrockseminolelivecasino.com>, <hardrockseminolepoker.com>, <hardrockseminoleslots.com>, <hardrockslot.com>, <hardrocksport.com>, <hardrocksportbetting.com>, <hardrockworldpoker.com>, <seminolehardrockcasinoslots.com>, <seminolehardrockliveblackjack.com>, <seminolehardrocklivepoker.com>, <seminolehardrocklivepoker.net>, <seminolehardrockpoker.com>, <seminolehardrocksportsbook.com>, and <seminolehardrockworldpoker.com> domain names are registered with Network Solutions, Llc. and that Respondent is the current registrant of the names. Network Solutions, Llc. has verified that Respondent is bound by the Network Solutions, Llc. 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 July 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@hardrockbettingonlinecasino.com, postmaster@hardrockcasinoslots.com, postmaster@hardrockgame.com, postmaster@hardrockliveblackjack.com, postmaster@hardrocklivecasino.com, postmaster@hardrocklivepoker.com, postmaster@hardrockpokerasia.com, postmaster@hardrockpokerbets.com, postmaster@hardrockpokerlive.com, postmaster@hardrockpokeronlinecasino.com, postmaster@hardrockpokertournament.com, postmaster@hardrockpokertournaments.com, postmaster@hardrockscratch.com, postmaster@hardrockscratchcards.com, postmaster@hardrockscratchgames.com, postmaster@hardrockseminolelivecasino.com, postmaster@hardrockseminolepoker.com, postmaster@hardrockseminoleslots.com, postmaster@hardrockslot.com, postmaster@hardrocksport.com, postmaster@hardrocksportbetting.com, postmaster@hardrockworldpoker.com, postmaster@seminolehardrockcasinoslots.com, postmaster@seminolehardrockliveblackjack.com, postmaster@seminolehardrocklivepoker.com, postmaster@seminolehardrocklivepoker.net, postmaster@seminolehardrockpoker.com, postmaster@seminolehardrocksportsbook.com, and postmaster@seminolehardrockworldpoker.com. Also on July 21, 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.
On July 26, 2011 the Forum received a Joint Request to Stay the Administrative Proceeding; on July 27, 2011 an Order to Stay the Administrative Proceeding was issued by the Forum; on August 1, 2011 a Request to Remove the Stay of Administrative Proceeding was received by the Forum; on August 1, 2011, the Forum issued an Order to Lift the Stay of Arbitration; and on August 18, 2011, the Forum issued a letter a advising that Respondent has not filed a Formal Response and the complaint defaulted on August 16, 2011. In addition Hon. Ralph Yachnin has been appointed as the Panel for this case.
On August 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hardrockbettingonlinecasino.com>, <hardrockcasinoslots.com>, <hardrockgame.com>, <hardrockliveblackjack.com>, <hardrocklivecasino.com>, <hardrocklivepoker.com>, <hardrockpokerasia.com>, <hardrockpokerbets.com>, <hardrockpokerlive.com>, <hardrockpokeronlinecasino.com>, <hardrockpokertournament.com>, <hardrockpokertournaments.com>, <hardrockscratch.com>, <hardrockscratchcards.com>, <hardrockscratchgames.com>, <hardrockseminolelivecasino.com>, <hardrockseminolepoker.com>, <hardrockseminoleslots.com>, <hardrockslot.com>, <hardrocksport.com>, <hardrocksportbetting.com>, <hardrockworldpoker.com>, <seminolehardrockcasinoslots.com>, <seminolehardrockliveblackjack.com>, <seminolehardrocklivepoker.com>, <seminolehardrocklivepoker.net>, <seminolehardrockpoker.com>, <seminolehardrocksportsbook.com>, and <seminolehardrockworldpoker.com> domain names are confusingly similar to Complainant’s HARD ROCK mark.
2. Respondent does not have any rights or legitimate interests in the <hardrockbettingonlinecasino.com>, <hardrockcasinoslots.com>, <hardrockgame.com>, <hardrockliveblackjack.com>, <hardrocklivecasino.com>, <hardrocklivepoker.com>, <hardrockpokerasia.com>, <hardrockpokerbets.com>, <hardrockpokerlive.com>, <hardrockpokeronlinecasino.com>, <hardrockpokertournament.com>, <hardrockpokertournaments.com>, <hardrockscratch.com>, <hardrockscratchcards.com>, <hardrockscratchgames.com>, <hardrockseminolelivecasino.com>, <hardrockseminolepoker.com>, <hardrockseminoleslots.com>, <hardrockslot.com>, <hardrocksport.com>, <hardrocksportbetting.com>, <hardrockworldpoker.com>, <seminolehardrockcasinoslots.com>, <seminolehardrockliveblackjack.com>, <seminolehardrocklivepoker.com>, <seminolehardrocklivepoker.net>, <seminolehardrockpoker.com>, <seminolehardrocksportsbook.com>, and <seminolehardrockworldpoker.com> domain names.
3. Respondent registered and used the <hardrockbettingonlinecasino.com>, <hardrockcasinoslots.com>, <hardrockgame.com>, <hardrockliveblackjack.com>, <hardrocklivecasino.com>, <hardrocklivepoker.com>, <hardrockpokerasia.com>, <hardrockpokerbets.com>, <hardrockpokerlive.com>, <hardrockpokeronlinecasino.com>, <hardrockpokertournament.com>, <hardrockpokertournaments.com>, <hardrockscratch.com>, <hardrockscratchcards.com>, <hardrockscratchgames.com>, <hardrockseminolelivecasino.com>, <hardrockseminolepoker.com>, <hardrockseminoleslots.com>, <hardrockslot.com>, <hardrocksport.com>, <hardrocksportbetting.com>, <hardrockworldpoker.com>, <seminolehardrockcasinoslots.com>, <seminolehardrockliveblackjack.com>, <seminolehardrocklivepoker.com>, <seminolehardrocklivepoker.net>, <seminolehardrockpoker.com>, <seminolehardrocksportsbook.com>, and <seminolehardrockworldpoker.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe International (USA), Inc., undertakes an array of music-related ventures, including: restaurants, hotels, casinos, merchandising, and live music events. Complainant owns the HARD ROCK mark, which it has registered with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 2,478,328 registered August 14, 21).
Respondent, cie international, registered all of the disputed domain names on March 7 and March 9, 2011. Respondent’s domain names all resolve to unconstructed, parked websites.
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 HARD ROCK mark. Past panels have agreed that registration with a trademark authority, such as the USPTO, is sufficient to confer rights in a mark. See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority); 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 finds that Complainant has established rights in the HARD ROCK mark under Policy ¶ 4(a)(i) through its registration with the USPTO (Reg. No. 2,478,328 registered August 14, 2001).
Complainant contends that Respondent’s domain names are confusingly similar to Complainant’s HARD ROCK mark for the purposes of Policy ¶ 4(a)(i). Each of the disputed domain names wholly contain Complainant’s mark, adding generic terms related to gambling and the generic top-level domain (gTLD) “.com.” Upon considering past UDRP precedent, the Panel determines that the additions of a descriptive term obviously related to Complainant’s casino businesses, as well as the “.com” gTLD, are insufficient to distinguish a domain name from Complainant’s mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Seven of the disputed domain names, <seminolehardrockcasinoslots.com>, <seminolehardrockliveblackjack.com>, <seminolehardrocklivepoker.com>, <seminolehardrocklivepoker.net>, <seminolehardrockpoker.com>, <seminolehardrocksportsbook.com>, and <seminolehardrockworldpoker.com>, also contain the prefix “seminole”, followed by Complainant’s mark and various generic descriptors related to gambling. Complainant operates hotel/casinos in Tampa, Florida and Hollywood, FL, both of which are known as “Seminole Hard Rock Hotel & Casino.” The Panel finds that the inclusion of the word “seminole” is also insufficient to distinguish the disputed domain names, as this term also clearly describes complainant’s businesses. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel finds each of Respondent’s disputed domain names to be confusingly similar to Complainant’s HARD ROCK mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Past panels have established the precedent requiring Complainant to first present a prima facie case in order to shift the burden to Respondent. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise). The Panel finds that Complainant has satisfied its burden. Respondent, however, has failed to submit a timely Response, and therefore failed to meet its burden. Some panels have used this as evidence to support a finding of a respondent lacking rights and legitimate interests in a 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.”). The immediate Panel will continue, nonetheless, to examine the record in order to determine if such rights or legitimate interests exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies the registrant for each domain name as “cie international,” which the Panel finds to bear no resemblance to any of the disputed domain names. Additionally, Complainant claims that it did not license or otherwise authorize Respondent’s use of any of the domain names at issue. Absent any contrary evidence in the record, the Panel must conclude that Respondent is not commonly known by any of the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant further alleges that Respondent’s use of the domain names at issue coincides with neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Each of Respondent’s domain names serves the same purpose: resolution to an unconstructed, parked website. Past panels have determined that Respondent’s resolution of a disputed domain name to a website unrelated to Complainant constitutes a lack of rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). In light of these holdings, the Panel finds that Respondent’s use of the domain names at issue does not coincide with either 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Finally, Complainant contends that Respondent’s resolution of the <hardrockbettingonlinecasino.com>, <hardrockcasinoslots.com>, <hardrockgame.com>, <hardrockliveblackjack.com>, <hardrocklivecasino.com>, <hardrocklivepoker.com>, <hardrockpokerasia.com>, <hardrockpokerbets.com>, <hardrockpokerlive.com>, <hardrockpokeronlinecasino.com>, <hardrockpokertournament.com>, <hardrockpokertournaments.com>, <hardrockscratch.com>, <hardrockscratchcards.com>, <hardrockscratchgames.com>, <hardrockseminolelivecasino.com>, <hardrockseminolepoker.com>, <hardrockseminoleslots.com>, <hardrockslot.com>, <hardrocksport.com>, <hardrocksportbetting.com>, <hardrockworldpoker.com>, <seminolehardrockcasinoslots.com>, <seminolehardrockliveblackjack.com>, <seminolehardrocklivepoker.com>, <seminolehardrocklivepoker.net>, <seminolehardrockpoker.com>, <seminolehardrocksportsbook.com>, and <seminolehardrockworldpoker.com> domain names to sites unrelated to Complainant constitutes bad faith use and registration under Policy ¶ 4(a)(iv). Past panels have found bad faith where Respondent has registered a confusingly similar domain name which resolves to a website which is unrelated to Complainant. See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hardrockbettingonlinecasino.com>, <hardrockcasinoslots.com>, <hardrockgame.com>, <hardrockliveblackjack.com>, <hardrocklivecasino.com>, <hardrocklivepoker.com>, <hardrockpokerasia.com>, <hardrockpokerbets.com>, <hardrockpokerlive.com>, <hardrockpokeronlinecasino.com>, <hardrockpokertournament.com>, <hardrockpokertournaments.com>, <hardrockscratch.com>, <hardrockscratchcards.com>, <hardrockscratchgames.com>, <hardrockseminolelivecasino.com>, <hardrockseminolepoker.com>, <hardrockseminoleslots.com>, <hardrockslot.com>, <hardrocksport.com>, <hardrocksportbetting.com>, <hardrockworldpoker.com>, <seminolehardrockcasinoslots.com>, <seminolehardrockliveblackjack.com>, <seminolehardrocklivepoker.com>, <seminolehardrocklivepoker.net>, <seminolehardrockpoker.com>, <seminolehardrocksportsbook.com>, and <seminolehardrockworldpoker.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 18, 2011
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