Hard Rock Cafe International (USA), Inc. v. john morrissey
Claim Number: FA1212001475981
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is john morrissey (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com>, registered with Godaddy.Com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2012; the National Arbitration Forum received payment on December 14, 2012.
On December 14, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has 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 December 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 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@hardrockmass.com, postmaster@hardrockcasinomass.com, postmaster@hardrockcasinomassachusetts.com, postmaster@hardrockmassachusetts.com. Also on December 17, 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 January 21, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant
a) Complainant is a Florida corporation that has been engaged in the business of leisure and entertainment, using its HARD ROCK mark in the United States since at least as early as 1978. Complainant has extended its HARD ROCK brand in connection with a myriad of music-related ventures, including restaurants, hotels, casinos, merchandising, and live music events. Essential to the success of Complainant’s brand is the protection of the HARD ROCK mark for which Complainant is the owner of United States Patent and Trademark Office (“USPTO”) registrations (e.g., Reg. No. 2,478,328). Complainant has also acquired USPTO rights in the HARD ROCK CASINO mark (e.g., Reg. No. 2,499,114). These registrations date back as early as March 10, 1995. Complainant has devoted significant resources to increasing brand awareness, with advertising expenses exceeding $169 million, and Complainant fosters brand awareness through broadcast media, radio publicity, and television. Complainant provides, as part of Jay Wolszczak’s declaration a list of opening dates of Complainant’s various HARD ROCK branded establishments, many of which date back to the 1990’s. See Complainant’s Tab 1.
b) The <hardrockmass.com> and <hardrockmassachusetts.com> domain names are confusingly similar to the HARD ROCK mark.
c) The <hardrockcasinomass.com> and <hardrockcasinomassachusetts.com> domain names are confusingly similar to the HARD ROCK CASINO mark.
d) Respondent has no rights or legitimate interests in the disputed domain names.
a. Respondent is not commonly known by the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names. This is evidenced by the WHOIS records for the disputed domain names.
b. Respondent’s use of the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain names are parked and resolve to landing pages displaying various ads and sponsored links. See Complainant’s Tab 14.
e) Respodnent registered and uses the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names in bad faith.
a. Respondent chose the disputed domain names to capitalize on the fame and goodwill inherent in Complainant’s marks. Respondent’s registration of the domain names was purposeful and meant to allow Respondent to trade off of Complainant’s reputation so as to commercially gain.
b. Respondent cannot credibly claim that it was unaware of Complainant’s rights in the HARD ROCK and HARD ROCK CASINO marks. The fame of the marks is evidenced by the millions of dollars spent on advertising and an average brand awareness of greater than 81 percent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Hard Rock Cafe International (USA), Inc., is a Florida corporation that has been engaged in the business of leisure and entertainment, using its HARD ROCK mark in the United States since at least as early as 1978. Complainant has extended its HARD ROCK brand in connection with music-related ventures, including restaurants, hotels, casinos, merchandising, and live music events. Complainant owns United States Patent and Trademark Office (“USPTO”) registrations using its HARD ROCK mark (e.g., Reg. No. 2,478,328). Complainant has also acquired USPTO rights in the HARD ROCK CASINO mark (e.g., Reg. No. 2,499,114). These registrations date back as early as March 10, 1995.
Respondent, john Morrissey, registered the domain names as follows:
a. The <hardrockmass.com> domain name on November 2, 2011;
b. The <hardrockcasinomass.com> domain name on November 16, 2011;
c. The <hardrockcasinomassachusetts.com> domain name on November 16, 2011; and
d. The <hardrockmassachusetts.com> domain name on November 2, 2011.
The disputed domain names are parked and resolve to landing pages displaying various ads and sponsored links.
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.
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.”).
Complainant has been engaged in the business of leisure and entertainment, using its HARD ROCK mark in the United States since at least as early as 1978. Complainant is the owner of USPTO registrations (e.g., Reg. No. 2,478,328) for the HARD ROCK mark. Complainant has also acquired USPTO rights in the HARD ROCK CASINO mark (e.g., Reg. No. 2,499,114). While Complainant does not provide the Panel with the date of registration of its marks, Complainant notes that these registrations date back as early as March 10, 1995. Complainant also states that it has devoted significant resources to increasing brand awareness, with advertising expenses exceeding $169 million, and Complainant fosters brand awareness through broadcast media, radio publicity, and television. Therefore, the Panel finds that Respondent has rights in the HARD ROCK and HARD ROCK CASINO marks under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant has also established common law rights in the marks as early as 1995, if not sooner.
Complainant asserts that the <hardrockmass.com> and <hardrockmassachusetts.com> domain names are confusingly similar to the HARD ROCK mark. The addition of a geographic term to a mark fails to distinguish the domain name from the mark within it. See Gannett 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.”). The deletion of a space and addition of a generic top-level domain (“gTLD”) are irrelevant to a Policy ¶ 4(a)(i) analysis. See 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)). Therefore, the Panel finds that the <hardrockmass.com> and <hardrockmassachusetts.com> domain names are confusingly similar to the HARD ROCK mark under Policy ¶ 4(a)(i).
The Panel also finds that the <hardrockcasinomass.com> and <hardrockcasinomassachusetts.com> domain names are confusingly similar to the HARD ROCK CASINO mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain nameS 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).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. The Panel WHOIS records for the disputed domain names list “john morrissey” as the domain name registrant. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain names are parked and resolve to landing pages displaying various ads and sponsored links. The Panel finds that Respondent’s use of the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Complainant contends that Respodnent registered and uses the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names in bad faith. Complainant alleges that Respondent chose the disputed domain names to capitalize on the fame and goodwill inherent in Complainant’s marks. The disputed domain names resolve to websites that are parked which display links to various goods and services. Complainant argues that Respondent’s registration of the domain names was purposeful and meant to allow Respondent to trade off of Complainant’s reputation so as to commercially gain. The Panel infers that Respondent generates revenue for parking the websites and allowing them to feature links to third parties. Therefore, the Panel finds that Respondent registered and uses the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names in bad faith under Policy ¶ 4(b)(iv) by attempting to take advantage of Internet users’ confusion. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant argues that Respondent cannot credibly claim it was unaware of Complainant’s rights in the HARD ROCK and HARD ROCK CASINO marks. Complainant contends that the fame of the marks is evidenced by the millions of dollars spent on advertising and an average brand awareness of greater than 81 percent. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the HARD ROCK and HARD ROCK CASINO marks when registering the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names. Therefore, the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hardrockmass.com>, <hardrockcasinomass.com>, <hardrockcasinomassachusetts.com>, and <hardrockmassachusetts.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 25, 2013
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