Hard Rock Cafe International (USA), Inc. v. All Aboard Charters & Tours, LLC
Claim Number: FA1303001488967
Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA. Respondent is All Aboard Charters & Tours, LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hardrockdirect.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 March 7, 2013; the National Arbitration Forum received payment on March 7, 2013.
On March 7, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hardrockdirect.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@hardrockdirect.com. Also on March 13, 2013, 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 March 28, 2013.
Complainant submitted an Additional Submission on April 3, 2012 which was determined to be compliant.
On April 10, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is in the business of leisure and entertainment, and uses its HARD ROCK mark to designate its services. Complainant has used the HARD ROCK mark in the United States since 1978, and has since expanded its brand and operations to include restaurants, hotels, casinos, merchandising, and live music events in locations throughout the world. Complainant owns more than 140 HARD ROCK CAFÉ restaurants throughout the world. Complainant devotes substantial resources to promote its HARD ROCK brand, and owns many trademarks that incorporate the HARD ROCK name, including HARD ROCK CAFÉ, HARD ROCK HOTEL, HARD ROCK CASINO, HARD ROCK LIVE, and other similar marks. Complainant registered its HARD ROCK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,029,866). Complainant owns hundreds of domain names incorporating the HARD ROCK mark, most of which redirect to Complainant’s primary website at <hardrockhotels.com> and <hardrock.com>. Complainant partners with famous musical artists to create events that attract patrons from all over the world, creating global recognition of the HARD ROCK name.
Respondent registered the <hardrockdirect.com> domain name, which is confusingly similar to Complainant’s HARD ROCK mark, and is used to maintain a webpage that advertises bus services to one of Complainant’s HARD ROCK locations. Respondent registered the domain name with the purpose of disrupting Complainant’s business, and fails to demonstrate rights or legitimate interests in the disputed domain name. Respondent had knowledge of Complainant’s rights in the HARD ROCK mark at the time it registered the disputed domain name. Respondent registered the <hardrockdirect.com> domain name in order to make a commercial gain from the resolving website.
B. Respondent
Respondent claims that a few years ago, it made an agreement with a representative of Hard Rock Seminole, who was also the “head of busing” in Tampa, Florida, regarding developing a transportation service between Respondent’s location (which Respondent does not disclose), and Complainant’s HARD ROCK casino location. Respondent chose the <hardrockdirect.com> domain name based on the fact that the route would go directly to the casino, as opposed to making multiple stops. Respondent was instructed to use the HARD ROCK logo found on the Internet when developing its website. Respondent had the resolving website operational for approximately a year, but did not use it, even though it operated its business during that time, and still effectively operates its business. Respondent has roughly 1,000 visitors a year, each of which spend an average of $100 per person at Complainant’s casino.
Respondent asserts a desire to “let [the case] go,” and contends it is not interested in a “fight” over the domain name.
C. Additional Submissions
Complainant claims that on March 7, 2013, it received an e-mail from Respondent, and based on the content of the e-mail, Complainant further asserts that Respondent’s factual allegations are false, Respondent attempted to profit from Complainant by offering to sell the domain name for $5,000, and Respondent admits to being aware of Complainant’s HARD ROCK mark by explaining that its services generate revenue for Complainant. Complainant provides exhibits in the form of e-mail correspondences between Complainant and Respondent that discuss a business arrangement wherein Respondent would transport patrons to Complainant’s facility, and Respondent states that it would “gladly relinquish the domain and no longer pursue the use of any marketing or advertising or use of any corporate logos” without marketing agreements from Complainant, and ends with an offer to sell the <hardrockdirect.com> domain name to Complainant, demonstrating Respondent’s bad faith.
Complainant, Hard Rock Cafe International (USA), Inc., is in the business of leisure and entertainment, and uses its HARD ROCK mark to designate its services. Complainant’s operations include restaurants, hotels, casinos, merchandising, and live music events in locations throughout the world. Complainant registered its HARD ROCK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,029,866).
Respondent, All Aboard Charters & Tours, LLC, registered the <hardrockdirect.com> domain name on August 7, 2011. Respondent uses the disputed domain name to maintain a webpage that advertises bus services to one of Complainant’s HARD ROCK locations.
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.
Complainant has rights in the HARD ROCK mark under Policy ¶ 4(a)(i) through its USPTO trademark registrations (e.g., Reg. No. 2,029,866). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The <hardrockdirect.com> domain name is confusingly similar to Complainant’s HARD ROCK mark Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s HARD ROCK mark in its entirety, with the difference relating to the descriptive term “direct,” indicating the nature of the charter bus service provided. The <hardrockdirect.com> domain name contains the generic top-level domain (“gTLD”) “.com.” The addition of a descriptive term and a gTLD to the mark does not alleviate confusing similarity between the disputed domain name and Complainant’s HARD ROCK mark under Policy ¶ 4(a)(i)). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Respondent’s Consent to Transfer
As Respondent has consented to the transfer of the disputed domain name, it is unnecessary to discuss the second and third policy elements.
The Forum was sent correspondence in the form of an e-mail submitted from Respondent. In this document, Respondent consents to the transfer of the <hardrockdirect.com> domain name to Complainant. As a result, the Panel shall forego the traditional UDRP analysis and order an immediate transfer of the <hardrockdirect.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
The Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <hardrockdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 24, 2013
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