Hard Rock Cafe International (USA), Inc. v. Internet Marketing Company
Claim Number: FA1202001428118
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is Internet Marketing Company (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is<hardrockcasinotulsas.com>, registered with GoDaddy.com, LLC.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2012; the National Arbitration Forum received payment on February 3, 2012.
On February 6, 2012, GoDaddy.com, LLCconfirmed by e-mail to the National Arbitration Forum that the<hardrockcasinotulsas.com>domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLChas verified that Respondent is bound by the GoDaddy.com, 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 February 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@hardrockcasinotulsas.com. Also on February 6, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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<hardrockcasinotulsas.com>domain name is confusingly similar to Complainant’s HARD ROCK CASINO mark.
2. Respondent does not have any rights or legitimate interests in the<hardrockcasinotulsas.com>domain name.
3. Respondent registered and used the<hardrockcasinotulsas.com>domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe International (USA), Inc., is a leisure and entertainment business which operates restaurants, hotels, casinos, and events internationally. Complainant owns numerous trademark registrations for its HARD ROCK CASINO mark, among others, with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 2,789,028 registered December 2, 2003).
Respondent, Internet Marketing Company, registered the <hardrockcasinotulsas.com>domain name on January 14, 2012. The domain name resolves to a website that offers casino gaming that competes 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. SeeVertical 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 alsoTalk 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 owns multiple trademark registrations for its HARD ROCK CASINO mark with the USPTO (e.g., Reg. No. 2,789,028 registered December 2, 2003). The Panel finds that Complainant has secured rights in its HARD ROCK CASINO mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see alsoMetro. 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). The Panel additionally finds that Complainant is not expected to register its mark in the country where Respondent resides or operates for the purposes of Policy ¶ 4(a)(i). 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 alsoWal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant argues that the <hardrockcasinotulsas.com>domain name is confusingly similar to its HARD ROCK CASINO mark. Complainant contends that using the HARD ROCK CASINO mark in its entirety, and addingthe geographic term “tulsa,” adding the letter “s,” removing the spaces between the words in the mark, and adding the generic top-level domain (“gTLD”) “.com” does not significantly change the domain name from the mark. The Panel holds that adding a geographic term, adding the single letter “s,” removing the spaces from within the mark, and adding a gTLD does not sufficiently alter the domain name from the mark under Policy ¶ 4(a)(i). SeeGannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“. . . it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel consequently determines that the disputed domain name is confusingly similar to Complainant’s HARD ROCK CASINO mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent possesses no rights or legitimate interests in the <hardrockcasinotulsas.com>domain name. Under Policy ¶ 4(a)(ii), Complainant is required to state a prima facie case supporting these allegations. Once Complainant meets this requirement, Respondent has the burden of proof to indicate why it does have rights or interests in the disputed domain name. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also 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 successfully demonstrated a prima facie case. Because Respondent did not reply to the proceedings, the Panel may presume that Respondent admits to lacking rights or legitimate interests in the disputed domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). The Panel may, however, consider the evidence on record to make a finding under Policy ¶ 4(c) as to whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <hardrockcasinotulsas.com>domain name. The WHOIS information lists the registrant as “Internet Marketing Company,” which gives no indication that Respondent is commonly known by the domain name. The Panel holds that, without any evidence supporting the fact that Respondent is commonly known by the <hardrockcasinotulsas.com>domain name, it has no rights or interests in the name under Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides the complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).
Complainant argues that Respondent’s use of the disputed domain name is not associated with a bona fide offering of goods or services and that Respondent does not make a legitimate noncommercial or fair use of the domain name. The <hardrockcasinotulsas.com> domain name corresponds to a website that advances its own competing casino gaming. Complainant argues that such use exploits the fame and goodwill characteristic of the HARD ROCK CASINO mark. The Panel concludes that, by using Complainant’s mark in the disputed domain name to compete with Complainant’s business, Respondent is not using the domain name in a manner constituting a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or faire use under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant argues that Respondent attempts to profit from the disputed domain name by selling it to Complainant in excess of the costs to register the name. Complainant alleges that Respondent attempted to negotiate a sale price for the domain name, beginning at $500 and ending at $330, without furnishing proof of having paid those amounts to register the domain name. The Panel finds that Respondent’s disproportionate offer to sell the domain name registration to Complainant is evidence that Respondent lacks rights and interests in the domain name under Policy ¶ 4(a)(ii). 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); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <hardrockcasinotulsas.com> domain name in bad faith, shown by its offer to sell the domain name to Complainant for $500 and, later, for $330. Complainant contends that the $500 and $330 price for the domain name exceeds the out-of-pocket costs Respondent spent to register the domain name. The Panel concludes that, without proof that the domain name registration costing Respondent $500, the offer to sell the domain name for that sum constitutes bad faith registration and use under Policy ¶ 4(b)(i). SeeWorld Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”).
The Panel notes that Complainant does not allege bad faith registration and use under Policy ¶ 4(b)(iv), but, as demonstrated by the screen shots provided, Respondent’s corresponding website offers a gaming website that consumers could confuse with Complainant’s business. The Panel holds that using a domain name to advance confusion as to the association between Complainant and the domain name in order to profit from the uncertainty demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Dell Inc. v. Innervision Web Solutions,FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Complainant argues that considering the fame and public awareness of Complainant's HARD ROCK CASINO mark, it is implausible that Respondent could have registered the <hardrockcasinotulsas.com> domain name without actual and constructive notice of Complainant's rights in the mark. The Panel holds that arguments of bad faith with a basis in constructive notice are immaterial because previous panels have rejected a finding of bad faith through constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does find, however, that Respondent had actual knowledge of Complainant's rights in the HARD ROCK CASINO mark when it registered the disputed domain name and finds that actual knowledge is sufficient to demonstrate bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the<hardrockcasinotulsas.com>domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 20, 2012
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