national arbitration forum

DECISION

 

Hard Rock Cafe International (USA), Inc. v. Francisco Jose Serrano Suarez

Claim Number: FA1303001488988

PARTIES

Complainant is Hard Rock Cafe International (USA), Inc. (“Complainant”), represented by P. Jay Hines of Cantor Colburn LLP, Virginia, USA.  Respondent is Francisco Jose Serrano Suarez (“Respondent”), Kingdom of Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hardrocksevilla.com>, registered with 1 & 1 INTERNET AG.

 

PANEL

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.

 

 Robert T. Pfeuffer, Senior District Judge, as Panelist.

 

PROCEDURAL HISTORY

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 18, 2013, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <hardrocksevilla.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name.  1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG 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 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@hardrocksevilla.com.  Also on March 19, 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 April 7, 2013.

 

 On April 11, 2013, an  additional Submission from Complainant was received.

 

On April 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed  Robert T. Pfeuffer 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity

Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests

Policy ¶ 4(a)(iii): Respondent’s Bad Faith

 

 

 

B. Respondent

Policy ¶ 4(a)(i): Domain Name Not Confusingly Similar

Policy ¶ 4(a)(ii): Respondent’s Lack of Rights & Legitimate Interests

 

Policy ¶ 4(a)(iii): Respondent Lacks Bad Faith

 

 

C. Additional Submissions

 Complainant filed an additional submission On April 11, 2013. The Respondent did not file any additional matters.

 

In it’s additional submission, Complainant has reiterated much of the argument  contained in the Original Complaint and refutes the Respondent’s assertions entirely. The Additional Submission was found by the Panel to be very helpful and persuasive.

 

FINDINGS

 The Panel finds that:

(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.

 

Respondent’s Dissent to Proceedings

The Panel notes that Respondent does not believe it is bound by the Panel’s decision, nor does Respondent believe it is bound by the NAF’s jurisdiction.  The Panel finds all such arguments wholly irrelevant as Respondent agreed to arbitrate disputes involving this domain name when it entered into its agreement with the disputed domain name’s registrar.

 

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:

 

(3)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(4)  Respondent has no rights or legitimate interests in respect of the domain name; and

(5)  the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant claims that it has rights in the HARD ROCK mark by way of USPTO trademark registrations of the mark.  See, e.g., HARD ROCK (Reg. No. 2,478,328 registered on Aug. 14, 2001).  Complainant states that it has engaged in the business of leisure and entertainment using the HARD ROCK family of marks.  The Panel agrees and finds that Complainant has rights in the HARD ROCK mark under Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Complainant argues that Respondent has registered a domain name that includes the entirety of the HARD ROCK mark along with the geographic term “sevilla”—an alternate spelling of the major city (Seville/Sevilla) in Spain where Complainant intends to open an establishment.  The Panel finds that the <hardrocksevilla.com> domain name features the entire HARD ROCK without the spacing, the term “sevilla,” and the generic top-level domain (“gTLD”) “.com.”  The Panel  agrees that none of these alterations distinguish the domain name from the HARD ROCK mark under Policy ¶4(a)(i)See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”).

 

Rights or Legitimate Interests

The Panel is aware that 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

 

Complainant argues that Respondent is not commonly known as the <hardrocksevilla.com> domain name, as evidenced by the information in the WHOIS record.  The Panel  notes that the WHOIS information specifies that “Francisco Jose Serrano Suarez” is the registrant of the name.  The Panel finds that when no evidence is provided to suggest otherwise, Respondent is not commonly known as the <hardrocksevilla.com> domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant further argues that Respondent is not providing a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names.  Complainant contends that Respondent is using the <hardrocksevilla.com> domain name to offer competing entertainment services.  The Panel  notes that the domain name resolves to a Spanish language website under titled “Hard Rock Sevilla” along with a message that Complainant translates to read: “Coming! News, concerts, masterclasses, competitions .. all the information of your city rocker In One Portal!”  See Complainant’s Tab 14.  The Panel finds that Respondent’s decision to use this the HARD ROCK mark in a domain name that resolves to a website promoting other concerts and events 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Registration and Use in Bad Faith

Complainant argues that Respondent is hosting this <hardrocksevilla.com> domain name to disrupt Complainant’s business in bad faith.  Complainant contends that Respondent lures Internet users to this domain name, where it provides advertisements for competing venues for entertainment.  The Panel  notes that the domain name resolves to a website that purports to offer information about music news, concerts, and other competitions in the area.  See Complainant’s Tab 14.  The Panel agrees that such a use is disruptive to Complainant’s business, therefore it concludes that Respondent has engaged in bad faith disruption under Policy ¶4(b)(iii).  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Complainant further argues that Respondent intends to confuse Internet users into believing that the contents of the <hardrocksevilla.com> domain name are affiliated with Complainant and the HARD ROCK mark.  Complainant suggests that Respondent presumably does so in its quest to acquire commercial gains.  The Panel agrees that using the HARD ROCK mark in this domain name for purposes of promoting music events creates a likelihood that Internet users will confuse the domain name with Complainant’s HARD ROCK business, and the Panel  finds that such confusion equates to Policy ¶ 4(b)(iv) bad faith use and registration.  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

Complainant also contends that Respondent’s bad faith is evident from the fact that it registered this confusingly similar <hardrocksevilla.com> domain name the same day that a news story was released in which Complainant’s CEO stated that “Spain is in the expansion plans. . . expected to add to. . . establishments in Sevilla.”  The Panel finds that Respondent’s decision to register this domain name on the exact day that Complainant rolled out a business plan to expand its operations in the city of Sevilla, Spain, is evidence of Policy ¶ 4(a)(iii) opportunistic bad faith use and registration.  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do.  The panel finds a negative inference from this.”).

 

Complainant finally argues that Respondent had actual or constructive knowledge of Complainant’s rights in the HARD ROCK mark.  Complainant claims that it establishes this knowledge by noting that its plan to build a HARD ROCK establishment in the Sevilla area had just become public information when Respondent took it upon itself to register the <hardrocksevilla.com> domain name.  The Panel holds that Respondent registered the disputed domain name 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).

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hardrocksevilla.com> domain  be TRANSFERRED TO COMPLAINANT.

 

 

 

 ROBERT T. PFEUFFER, Panelist

Dated: April 19, 2013

 

 

 

 

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