national arbitration forum

 

DECISION

 

FP Holdings, L.P., a Nevada limited partnership v. Tailby Limited

Claim Number: FA1201001422581

 

PARTIES

Complainant is FP Holdings, L.P., a Nevada limited partnership (“Complainant”), represented by Scott M. Hervey of Weintraub Genshlea Chediak Law Corporation, California, USA.  Respondent is Tailby Limited (“Respondent”), represented by Angela Thornton-Jackson of D Young & Co LLP, United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vegaspalms.com>, registered with Safenames Ltd.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Calvin A. Hamilton, Maninder Singh and The Honorable Paul A. Dorf as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2012; the National Arbitration Forum received payment on January 4, 2012.

 

On January 5, 2012, Safenames Ltd. confirmed by e-mail to the National Arbitration Forum that the <vegaspalms.com> domain name is registered with Safenames Ltd. and that Respondent is the current registrant of the name.  Safenames Ltd. has verified that Respondent is bound by the Safenames Ltd. 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 January 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2012 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@vegaspalms.com.  Also on January 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

A timely Response was received and determined to be complete on January 25, 2012.

 

Complainant filed an additional submission on January 30, 2012. The submission was timely filed in accordance with Supplemental Rule #7

On February 2, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton, Maninder Singh and The Honorable Paul A. Dorf as Panelists.

 

On February 14, 2012, the Panel issued a procedural order extending the time for the Panel to submit its decision until February 26, 2012.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

 

Complainant, FP Holdings, L.P., by way of its predecessor in interest, Fiesta Palms LLC, has registered or applied to register the marks listed below with the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”) and the Mexican Institute of Industrial Property (“MIIP”), as applicable. Almost every one of these trademarks specifically incorporates the word “PALMS”, and Complainant’s business is strongly associated with the word “PALMS”. This includes the marks PALMS A MALOOF CASINO RESORT and PALMS A MALOOF CASINO RESORT and Design (United States Trademark Registration Nos. 2,646,679, 2,742,897, 2,772,084 and 2,742,908) for casino services and hotel resort services, generally; THE PALMS CLUB and Design (Federal Trademark Registration Nos. 2,736,238) for resort, hotel and lounge services; PALMS (United States Trademark Registration No. 2,773,483) for resort, hotel, bar and lounge services; PALMS (United States Trademark Registration No. 2,773,484) for casino and entertainment services; PALMS CASINO RESORT (United States Trademark Registration No. 2,775,360) for casino services; CLUB PALMS (United States Trademark Registration No. 2,781,330) for casino entertainment services; PALMS CASINO RESORT (United States Trademark Registration No. 2,819,261) for resort, hotel, bar and lounge services; PALMS LAS VEGAS and LAS VEGAS THE PALMS for on-line casino style gaming (United States trademark Registration Nos.3574104 and 3756228 respectfully). Complainant’s earliest date of first use for a number of the Palms Marks is November 15, 2001. However, Complainant’s priority date is as early as July 27, 2000 which represents the filing date of its first intent to use trademark application. See Declaration of Scott Hervey (hereinafter “Hervey Dec.”) ¶ 2, submitted herewith.

 

Complainant produces a long list of its Palms Marks which the Panel incorporates here by reference to the Complaint.

 

Complainant has provided the Panel with evidence of ownership of numerous United States and foreign trademark registrations incorporating the word PALMS covering casino services and the like. To Complainant’s knowledge, Complainant’s rights in its federally registered trademarks predate Respondent’s registration of the Domain Name, thereby conclusively establishing Complainant’s priority with regard to the use of the word PALMS in connection with gaming activities.

 

The Complainant believes that the Domain Name is confusingly similar to its federally registered trademarks.  The Domain Name was comprised of two elements; the first is Complainant’s trademark, PALMS, and the second is the generic term VEGAS.  The addition of this generic term does not otherwise prevent the Domain Name from being confusingly similar to Complainant’s registered trademarks.  In addition to the Domain Name being similar to Complainant’s various trademarks, the business activity Respondent intends to associate with the Domain Name is the same type of business activity engaged in by the Complainant.  This significantly lends to the conclusion that Internet users would believe there is an association between Complainant’s hotel and casino and Respondent’s online gaming operation if it were to reside on a website at the Domain Name.  This also conclusively established that the Respondent has no legitimate right or interest in the Domain Name, and is merely using the Domain Name in an attempt to mislead internet users for its own financial gain.

 

Lastly, the Complainant alleges that the Respondent registered and is using the Domain Name in bad faith.  While the Complainant has provided numerous grounds for the panel to establish bad faith, the panel need only look at the fact that the Respondent is using the Domain Name to attract Internet users to its website for its own commercial gain by causing these Internet users to believe that Complainant is somehow affiliated with Respondent’s online gaming website.

 

B. Respondent

 

Respondent’s domain name <vegaspalms.com> domain name has been registered since October 2000 . As such, the domain name <vegaspalms.com> domain name was registered by the Respondent a full 13 months before The Palms Hotel and Casino opened in Las Vegas. The Respondent continues to trade from that website today. The Respondent’s internal records indicate that the web site operated from <vegaspalms.com> domain name was launched on 1 November 2000 and was operational from at least as early as 6 December 2000. As such, all the evidence submitted by the complainant with a view to establishing the fame of The Palms Hotel Resort and Casino appears to completely irrelevant given that it all significantly postdates the Respondent’s adoption of this name for registration in October 2000 and the launch of the website, in November 2000.

 

The Respondent makes reference to the Complainant exhibits of various trade mark applications and registrations made before the United States Patent and Trademark Office, the Canadian Trademark Office and the Mexican Trademark Office.

 

Respondent noted upon a review the 235 pages of Annex A, that the following 2 trademarks claim a filling date of 27 of July 2000 although they also indicate that the date of the first use in commerce was not until 15 November 2001,

US Registration 2646679 PALMS A MALOOF CASINO RESPORT

US Registration 2992731 PALMS A MALOOF CASINO RESPORT

 

Neither of these contain both the elements PALMS and VEGAS and none are confusingly similar to VEGAS PALMS overall. Indeed, it is clear that PALMS A MALOOF CASINO RESORT contains additional distinctive matter which readily distinguishes it from the Respondent’s domain name and trademarks. Indeed, the Complainant’s own evidence demonstrates the fame of the MALOOF family – a crucial distinctive of this trade mark.

 

Respondent submits details of its Canadian, European (CTM) and Australian trade mark registrations for VEGAS PALMS, all of which were filed in July 2002. These filings were therefore made at least three years before the complainant sought to register a trade mark containing both the elements PALMS and VEGAS and indeed five months before the Complainant made their first application for THE PALMS alone, which is after all the name of their hotel. It is noted that registrations for PALMS A MALOOF CASINO RESORT exist dated from 27 July 2000. However, under the normal principles of comparison, such marks would not be confused with VEGAS PALMS as we note above.

 

We would also note that the Respondent’s trade mark registrations in Australia, Canada and Europe are for the word mark VEGAS PALMS and as such, exactly correspond to the domain name that they use. In addition, all cover gambling services which are of course the activities offered from the Respondent’s online website operated at <vegaspalms.com> domain name.

 

By contrast, it will be noted that in fact trademarks held by the Complainant incorporating both elements PALMS and VEGAS are in the format PALMS LAS VEGAS and specifically disclaim any trade mark rights in the element LAS VEGAS. In addition, as noted from the extract cited above, the vast majority of these trademarks do not cover gambling services at all. The majority appear to be for hotel services and clothing goods which are completely unrelated to the activities of the respondent.

 

We would further point out that the Complainant has not sought trade mark registration of the words VEGAS PALMS in any format and the materials that they have submitted in the numerous Exhibits (which seek to assert the fame and reputation of The Palms Hotel and Casino) do not refer to the Complainant’s business by use of the name VEGAS PALMS.

 

The Complainant lists four of its domain names which incorporate both the elements PALMS and VEGAS; these are <thepalmslasvegas.net>, <thepalmslasvegas.org>, <thepalmslasvegas.com> and <thepalmslasvegas.us>. The annexes provided by the complainant at Exhibit CC to their complaint show that all of these domain names where registered after the registration of the Respondent’s <vegaspalms.com> domain name. It should also be noted that in typing each of the Complainants domains into the browser, each are listed ad “inactive” or “not found” as demonstrated by anew E of this response.

 

As such, we submit that the Complainant has not proved in any way their assertion that the <vegaspalms.com> domain name domain name is confusingly similar to any trade mark, service mark or common law rights which the complainant enjoys. The Complainant holds no trade mark registration for the word VEGAS PALMS or any device element incorporating the words VEGAS PALMS in that format. Any trade mark registrations held by the Complainant incorporating both the words PALMS and VEGAS as part of a composite trade mark each specifically disclaim any rights in that name. Moreover, all such registrations as held by the complainant significantly postdate both the Respondent’s own use and registration of the domain name <vegaspalms.com> domain name and indeed the Respondent’s trade mark registrations in Australia, Canada and Europe. The Complainant has not demonstrated in the voluminous materials that they have filed any evidence to show that they are known as Vegas Palms or that they have sought to establish a business under a domain name incorporating those elements. Of the domain names they list, the four which contain the elements PALMS and VEGAS are all shown to be inactive.

 

It is further pointed out that the Respondent has shown in the materials filed to this response that they have established a legitimate business under the domain name <vegaspalms.com> domain name which has been operational since November 2000 in connection with the offering of online gambling services. Only two of the trade mark rights incorporating the elements PALMS and VEGAS referred to by the Complainant actually cover gambling services, although both marks also contain a disclaimer on the element VEGAS as show above.

 

As such, the complainant has not proved their assertion that <vegaspalms.com> domain name would be associated with them in connection with gambling, or that consumers would assume a connection with the client’s online gambling website and The Palms Hotel located in Las Vegas.

 

The .com domain name is well recognized as a global domain name. It is not just utilized for the United States market. The Respondent has clearly demonstrated their rights and legitimate interest in the <vegaspalms.com> domain name through their domain name registration and the launch of their website in November 2000 – a full 12 months before the complainant’s hotel was even built in November 2001.

 

As such, it is submitted that the Respondent displayed no bad faith in adopting the domain name <vegaspalms.com> domain name in October 2000 and launching an online gambling platform from that website the following month hey have adequately demonstrated their rights and legitimate interest in the domain, significantly predating any claimed rights by the Complainant. The domain name has been in continuous use over the last ten years and it is supported by global trade mark registrations exactly corresponding to the domain, as demonstrated herein.

 

In summary therefore, with regard to the substance of this complaint, we submit that the Respondent has adequate rights and legitimate interests in the domain name <vegaspalms.com> domain name to maintain the registration, that they did not adopt the domain in bad faith (and there is no evidence that they did so) and that the Complainant has shown no identical or confusingly similar trade mark rights predating the Respondent’s own claim to the domain name.

 

Dealing finally with the Complainant’s claim that the Respondent provided false contact information. We would submit that this is entirely incorrect. The Respondent does list its address as 1 Map Street Belize City; this is the address for International Corporate Services, an offshore company service provider as noted by the Complainant. Indeed, it is also the registered address of Tailby Limited. Domain name administration for Tailby Limited is dealt with by a company located in Malta. It is clearly not false contact information simply to list the registered address of the domain name holder, Tailby Limited, but to provide contact details for the administrative company who would deal with any domain issues. Indeed, it seems clear that the Complainant had no difficulty in serving the complaint. As such, we would ask for the allegation of providing false contract to be withdrawn.

 

C. Additional Submissions

 

Complainant timely filed an additional submission which essentially reiterates the arguments made in its Complaint.

 

FINDINGS AND DISCUSSION

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it owns rights in its PALMS A MALOOF CASINO RESORT mark.  Complainant alleges that it uses its mark in connection with its casino and resort in Las Vegas, Nevada.  Complainant provides the Panel with evidence of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its PALMS A MALOOF CASINO RESORT mark (e.g., Reg. No. 2,678,712 filed July 27, 2000; registered January 21, 2003).

 

Past panels have found that a trademark registration with the USPTO was sufficient to establish rights in a mark under Policy ¶ 4(a)(i).  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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). 

 

Prior panels have further determined that the effective date of a complainant’s rights in a mark registered with the USPTO is the filing date.  See 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”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

 

Previous panels have also found that a complainant is not required to register a disputed domain name within the country that the respondent resides or operates.  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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

The Panel agrees with this precedent and holds that Complainant owns rights in its PALMS A MALOOF CASINO RESORT mark for the purposes of Policy ¶ 4(a)(i), dating back to January 21, 2000.

 

Complainant makes arguments under Policy ¶ 4(a)(i) as to the confusing similarity of Respondent’s <vegaspalms.com> domain name compared to Complainant’s PALMS mark.  However, the Panel finds that the PALMS A MALOOF CASINO RESORT mark is more appropriate for the confusingly similar analysis because of its registration date compared to the registration of the disputed domain name.

 

Previous panels concluded that the removal of terms from a mark did not remove the disputed domain name from the realm of confusing similarity.  See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).

 

Past panels also held that the addition of a geographic term did not adequately distinguish a disputed domain name from a complainant’s mark.  See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part).

 

Finally, prior panels have found that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel minds that Respondent’s  <vegaspalms.com> domain name does not include the “A MALOOF CASINO RESORT” portion of Complainant’s mark, rather adds the descriptive, geographic term “vegas” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Complainant’s earliest date of first use was November 15, 2001.

 

The mark in question is the PALMS A MALOOF CASINO RESORT mark. The disputed domain name is <vagaspalms.com>. It is apparent that PALMS A MALOOF CASINO RESORT contains distinctive features which readily distinguishes it from the Respondent’s domain name and trademarks. The Panel has earlier determined that the PALMS A MALOOF CASINO RESORT mark is more appropriate for the confusingly similar analysis because of its registration date compared to the registration of the disputed domain name. Additionally, that the Palms Hotel did not open until November, 2001.

 

Consequently, the Panel finds that Respondent’s <vegaspalms.com> domain name is not confusingly similar to Complainant’s PALMS A MALOOF CASINO RESORT pursuant to Policy ¶ 4(a)(i).

 

While Respondent argues that its registration of the <vegaspalms.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

 

 Rights or Legitimate Interests

 

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.  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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant claims that Respondent’s <vegaspalms.com> domain name resolves to an online gambling website.  Complainant argues that Respondent’s online gambling website directly competes with Complainant’s gambling services offered at its resort and casino in Las Vegas, Nevada.  Further, that Respondent’s use of the disputed domain name in connection with online gambling is likely to cause consumer confusion. Complainant continues that this is particularly accentuated by the fact that applications for registration of the marks ‘Palms Las Vegas’ and ‘Las Vegas’ have also been specifically filed by Complainant with the USPTO.

 

Respondent argues that it is known by the <vegaspalms.com> domain name.  Respondent contends that it uses the disputed domain name in relation to its online gambling services and that its customers associate the disputed domain name with Respondent’s online business.  Respondent presents the Panel with trademark registrations that it owns for the VEGAS PALMS mark with the Canadian Intellectual Property Office (Reg. No. TMA620800 registered September 28, 2004), IP Australia (“IPA”) (Reg. No. 919,710 registered July 12, 2002), and the European Union’s Office of Harmonization for the Internal Market (“OHIM”) (Reg. No. 2,778,991 registered May 25, 2004).

 

The Panel perceives from the evidence submitted that the Respondent registered the disputed domain name in October 2000 and same was launched on November 1, 2000. In addition Respondent had a fully operational website from the domain name since December 6, 2000. All this before the Palms Hotel was open for business in November 2001.

 

Respondent claims that it is making a bona fide offering of goods or services with the <vegaspalms.com> domain name.  Respondent argues that its online gambling business became operational in November 2000 and has continued to operate since that time.  Respondent contends that its continued operation of its online gambling business evidences that Respondent is making a legitimate business use of the disputed domain name.

 

It is important to acknowledge that when the Palms Resort was opened on November 15, 2001 (some 13 months subsequent to the Respondent’s registration of the disputed domain name), it was under the name ‘PALMS A MALOOF CASINO RESORT’. It is apparent that PALMS A MALOOF CASINO RESORT contains distinctive features which readily distinguishes it from the Respondent’s domain name and trademarks. It is equally apparent that it was the reputation of Mr. Maloof which was being relied upon and that the term ‘PALMS’ per se had not acquired any goodwill. Goodwill and reputation in the PALMS mark have been attained subsequent to Respondent’s registration. Although Claimant asserts that its trade mark enjoys a priority date (i.e. an intent to use) of July 27, 2000, Complainant does not identify to which of its many trademarks it was referring. However, upon a review of the 235 pages of Annex A, it is appreciated that the following trademarks claim a filling date of July 27, 2000 although they also indicate that the date of the first use in commerce was not until 15 November 2001:

 

   -US Registration 2646679 PALMS A MALOOF CASINO RESPORT

   -US Registration 2992731 PALMS A MALOOF CASINO RESPORT

 

Respondent registered its mark in VEGASPALMS in various countries across Europe, Canada, Australia. VEGASPALMS corresponds to the domain name that Respondent uses.  These applications were filed between July 2002 and May 2004. They have been registered specifically in respect to gambling services. Respondent did not register in the United States. It is perfectly logical that Respondent did not register its mark in the United States because online gambling and processing of financial transactions are illegal in the United States.

 

Complainant registered the following domain names which contain both the terms PALMS and VEGAS as follows:

 

-<thepalmslasvegas.net> (filed in 2006 and registered on November 1, 2007)

-<thepalmslasvegas.org> (filed in 2006 and registered on November 1, 2007)

-<thepalmslasvegas.us> (filed in 2006 and registered on November 1, 2007)

-<thepalmslasvegas.com> (filed in 2006 and registered on February 19, 2007).

 

Each of the filings and/or registrations was made subsequent to that of Respondent’s registration of the disputed domain name which was made on October 2, 2000. Further, Complainant specifically disclaims any trade mark rights in the element LAS VEGAS.

 

It should be noted that most of Complainant’s registrations are for activities such as hotel services which are unrelated to the activities of the Respondent.

 

Prior panels have held that a respondent was commonly known by a disputed domain name because, as in the present case, the respondent presented evidence that its customers associated the disputed domain name with the respondent’s business.  See Avnet, Inc. v. Aviation Network, Inc., D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known by the <avnet.net> domain name because the respondent submitted “evidence that it was known by the name AVNET for at least ten years prior to its domain name registration”); see also Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).

 

Based on its trademark registrations, together with the customers’ association of Respondent with the domain name, the Panel concludes that Respondent is commonly known by the <vegaspalms.com> domain name for the purposes of Policy ¶ 4(c)(ii).

 

Previous panels have determined that a respondent still made a bona fide offering of goods or services even if the respondent operated a competing website.  See INVESTools Inc. v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

In this case, Respondent launched the web site <vegaspalms.com> on November 1, 2000 and same was operational since December 6, 2000. It is clear from the record that the website was functioning and open for business at the end of year 2000; twelve months before The Palms Hotel opened for business in November 2001.

 

Additionally, the panel does not agree that Complainant and Respondent are, at the present time and under the present circumstances, competing in exactly the same markets. They both conduct a gambling business. However, Complainant operates casinos and Respondent offers online gambling. The fact that Complainant, at some point in the future, may decide to offer online services is not sufficient reason to conclude they are offering the same services in the same market. Indeed, Complainant may very well decide in the future not to offer the online gambling services. Nor are mere assertions of an intent to enter the online gambling market, without credible evidence of the ongoing preparatory process to do so, sufficient to conclude that the parties will compete in the future.     

 

Accordingly, the Panel finds that Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i).

 

 In light of the above, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

  

Registration and Use in Bad Faith

 

In light of the Panel’s finding in favor of Respondent with respect to the existence of rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii), there is no need to reach an analysis of the third element.  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). 

 

The Panel nevertheless finds that Complainant failed to meet its burden of proving bad faith registration and use under Policy 4(a)(iii).  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

Because Respondent has rights or legitimate interests in the <vegaspalms.com> domain name pursuant to Policy ¶ 4(a)(ii), it is axiomatic that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).  Accordingly, the Panel finds that Respondent did not register the <vegaspalms.com>domain names in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

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 <vegaspalms.com> domain name REMAIN WITH Respondent.

Calvin A. Hamilton (Chair)

 

 

Maninder Singh, The Honorable                Paul A. Dorf as Panelists, Panelist

 

 

Dated:  February 26, 2012

 

 

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