Scores Holding Company, Inc. v. Sapphire
Claim Number: FA1204001441672
Complainant is Scores Holding Company, Inc. (“Complainant”), represented by Neal Greenfield of Scores Holding Company, Inc., New York, USA. Respondent is Sapphire (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scoresatlanticcity.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 30, 2012; the National Arbitration Forum received payment May 1, 2012.
On May 1, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <scoresatlanticcity.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and 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 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@scoresatlanticcity.com. Also on May 4, 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.
Respondent did not file a Response in this proceeding.
On June 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant owns trademark rights through its registrations with the United States Patent and Trademark Office (“USPTO”) for its SCORES mark (e.g., Reg. No. 1,830,135 registered April 12, 1994). See Complainant’s Second Exhibit A. Complainant uses the SCORES mark in its business as a high-end gentleman’s club chain that has operated for approximately twenty years. Complainant currently plans to open its newest gentleman’s club, SCORES Atlantic City, for operation by the end of 2012. Complainant currently owns gentleman’s clubs that are in operation under the name SCORES in locations throughout the United States and the Dominican Republic and has achieved recognition among the public for its establishments and services.
Respondent registered the <scoresatlanticcity.com> domain name October 6, 2010. Respondent’s disputed domain name resolves to a website that features links to hotels, casinos, and other third-party websites. Respondent’s disputed domain name is confusingly similar to Complainant’s SCORES mark. Respondent is not authorized to register or use a domain name or mark that contains Complainant’s SCORES mark and is not commonly known by the disputed domain name. Respondent is a direct competitor of Complainant and owns the registered trademark SAPPHIRE, under which Respondent runs an adult entertainment club in two of the same locations as Complainant. Respondent makes a profit by displaying “click-through” hyperlinks, which is evidence of bad faith registration and use.
B. Respondent failed to submit a Response in this proceeding.
Complainant established that it has rights in the mark contained within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Complainant claims to own trademark registrations for its SCORES mark through registrations with the USPTO (e.g., Reg. No. 1,830,135 registered April 12, 1994). Registration of a mark with a national authority serves to establish rights in a mark pursuant to Policy ¶ 4(a)(i). 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 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). The Panel finds that Complainant established rights in its SCORES mark through its registrations with the USPTO, pursuant to a Policy ¶ 4(a)(i) analysis.
Complainant alleges that the <scoresatlanticcity.com> domain name is confusingly similar to its SCORES mark. Complainant claims that adding the geographic terms “Atlantic City” as well as the generic top-level domain (“gTLD”) “.com” does not alter the confusing similarity with its SCORES mark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) despite the changes made within the domain name. See JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark); 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.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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 of proof shifts to Respondent to show it does have such 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 alleges that Respondent is not commonly known by the <scoresatlanticcity.com> domain name and does not have permission to use the SCORES mark in any way. The Panel finds that, because Respondent does not have permission to use Complainant’s mark, because Respondent and the disputed domain name are not nominally similar, and because Respondent offered no evidence to the contrary, Respondent is not commonly known by the disputed domain name under a Policy ¶ 4(c)(ii) evaluation. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent uses the disputed domain name to host hyperlinks to various third-party businesses and that such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant submits evidence showing Respondent’s web page, which the Panel notes displays hyperlinks to competing businesses, including Respondent’s own business. The Panel finds that, by using the <scoresatlanticcity.com> domain name to host a website that displays competing hyperlinks, Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is 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) because the registrant presumably receives compensation for each misdirected Internet user).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent generates revenue by the use of “click-through” advertisements and attracts Internet traffic through the use of a confusingly similar domain name. Complainant alleges that the website creates the likelihood of confusion between Respondent and Complainant’s business. The panel in TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), found that the resolving website misled consumers to the respondent’s website, which displayed links for competing real estate websites, and determined that users seeking the complainant’s business but end up at the respondent’s web page will be confused as to the complainant’s affiliation with the web page. In Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005), the panel made an inference that the respondent received “click-through” revenue for misleading Internet users to a competing website and that such use of the disputed domain name demonstrated bad faith registration and use. The Panel therefore finds that Respondent registered and uses the <scoresatlanticcity.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant submits evidence that, on September 1, 2010, online and print publications reported that Complainant would be opening a SCORES gentleman’s club inside a casino-hotel complex. Complainant claims that, in preparation for the opening, Complainant sought to register the disputed domain name. However, Complainant claims its registration of the <scoresatlanticcity.com> domain name was thwarted by Respondent, who had registered the disputed domain name just over one month after the announcement of the new club’s opening. See Affidavit of Robert Gans. Complainant claims that the news of its latest developments was a “major milestone” because it would be the first time a gentleman’s club would be approved to operate within a casino-hotel complex in Atlantic City and that Respondent’s registration of the disputed domain name was for the purpose of deceiving customers who sought information on Complainant’s newest club. The Panel finds that Respondent registered the <scoresatlanticcity.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) given the time span between the public announcement of Complainant’s club and Respondent’s registration of the domain name. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <scoresatlanticcity.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 11, 2012.
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